Crayola LLCv.University of Cincinnati

Patent Trial and Appeal Board

Jun 6, 2016

11535801 (P.T.A.B. Jun. 6, 2016)

Trials@uspto.gov Paper No. 22
571-272-7822 Entered: June 6, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CRAYOLA LLC,
Petitioner,

v.

UNIVERSITY OF CINCINNATI,
Patent Owner.
____________

Case IPR2015-00393
Patent 7,430,355 B2
____________

Before DAVID C. MCKONE, JEREMY M. PLENZLER, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.

CHAGNON, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
Petitioner has shown, by a preponderance of the evidence, that claims 1, 8,
11, 12, 23, 24, 26, 27, 30, 32, 33, 42, 48, and 49 of U.S. Patent
No. 7,430,355 B2 (Ex. 1001, “the ’355 patent”) are unpatentable.
A. Procedural History
Crayola LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) for inter
partes review of claims 1, 8, 11, 12, 23, 24, 26, 27, 30, 32, 33, 42, 48,
and 49 (“the challenged claims”) of the ’355 patent. Petitioner included a
Declaration of Steven M. Blair, Ph.D. (Ex. 1008) to support its positions.
University of Cincinnati (“Patent Owner”) timely filed a Preliminary
Response (Paper 5, “Prelim. Resp.”).
Pursuant to 35 U.S.C. § 314(a), on June 25, 2015, we instituted an
inter partes review of the challenged claims to determine if claims 42, 48,
and 49 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Chapin;1
if claims 1, 8, 11, 12, 23, 24, 26, 27, 30, 32, and 33 are unpatentable under
35 U.S.C. § 103(a) as obvious in view of Chapin; if claims 1, 8, 11, 12, 23,
24, 26, 27, 30, 32, and 33 are unpatentable under 35 U.S.C. § 103(a) as
obvious in view of Chapin and Snider;2 and if claims 42, 48, and 49 are

1 U.S. Patent No. 4,703,572, issued Nov. 3, 1987 (Ex. 1003).
2 U.S. Application Pub. No. 2002/0120916 A1, published Aug. 29, 2002
(Ex. 1004).
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unpatentable under 35 U.S.C. § 103(a) as obvious in view of Chapin and
Schropp.3 Paper 6 (“Inst. Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 9, “PO Resp.”), along with Declarations of Jason C.
Heikenfeld, Ph.D. (Ex. 2007) and James F. Brennan, III, Ph.D. (Ex. 2008) to
support its positions. Petitioner filed a Reply (Paper 16, “Reply”) to the
Patent Owner Response. An oral hearing was held on March 9, 2016.
A transcript of the hearing is included in the record. Paper 21 (“Tr.”).
B. Related Proceedings
The parties indicate that the ’355 patent has been asserted against
Petitioner in University of Cincinnati v. Crayola LLC, No. 2:13-cv-1215
(S.D. Ohio). Pet. 1; Paper 3, 1.
C. The ’355 Patent
The ’355 patent, titled “Light Emissive Signage Devices Based on
Lightwave Coupling,” relates to signage devices, which include, in one
example embodiment, “a waveguide . . . adapted to receive light of a first
wavelength and . . . photoluminescent features [coupled to the waveguide]
adapted to emit light of a second wavelength in response to receiving light of
the first wavelength.” Ex. 1001, at [54], Abstract.

3 U.S. Patent No. 3,131,496, issued May 5, 1964 (Ex. 1007).
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Figures 16 and 20 of the ’355 patent are reproduced below.

Figure 16 is a cross-sectional view of a “signage device in accordance
with the principles of the invention, showing the basic mechanical structure
of the full color luminescent ink signage device with a single light source,
waveguide, . . . and luminescent inks,” and Figure 20 is a cross-sectional
view of an embodiment “having multiple light sources and multiple
waveguides patterned with luminescent ink.” Ex. 1001, 3:63–67, 4:17–20.
Signage device 180, 199 (Fig. 20) includes waveguide(s) 184(a, b) and a
pattern of photoluminescent features 182(a, b) coupled to waveguide(s)
184(a, b). Id. at 25:57–60, 29:37–40. The luminescent inks used to form
photoluminescent features 182 may “have transparency levels of at least
50% or greater.” Id. at 33:17–20.
Light source(s) 185(a, b) may emit “short wavelength light in a range
of about 350 nm to about 450 nm.” Ex. 1001, 11:3–4; accord id. at 27:39–
40. Light emitted from light source 185 is injected into waveguide 184,
through edge 183 at end 192 of waveguide 184. Id. at 27:39–44. Reflector
assembly 186 “reflect[s] light not originally directed at an edge 183 . . . ,
thus reducing the loss of light.” Id. at 27:51–56. The short wavelength light
propagates through waveguide 184 and is absorbed by photoluminescent
features 182(a, b), causing them to emit “light of a wavelength in the range
of about 420 nm to about 650 nm.” Id. at 26:10–16. The device of
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Figure 20 additionally includes control device 189, which “may control the
sequencing and powering of light sources 185a, 185b to produce the desired
visual image.” Id. at 29:48–52. Control device 189 can power individual
light sources in such a way to “create a captivating visual display of
alternative images and multi-image collages.” Id. at 29:57–62.
D. Illustrative Claims
Of the challenged claims, claims 1 and 42 are independent. Claims 8,
11, 12, 23, 24, 26, 27, 30, 32, and 33 depend, directly or indirectly, from
claim 1; claims 48 and 49 depend, directly or indirectly, from claim 42.
Claims 1 and 42 of the ’355 patent, reproduced below, are illustrative of the
challenged claims:
1. A signage device comprising:
a waveguide adapted to propagate light of a first
wavelength shorter than about 450 nm; and
at least one photoluminescent feature coupled with the
waveguide for receiving the light of the first wavelength, the at
least one photoluminescent feature adapted to emit light of a
second wavelength between about 420 nm and about 650 nm in
response to receiving the light of the first wavelength, wherein
the at least one photoluminescent feature further comprises a
primary color luminescent ink having an optical transparency of
about 50% or greater.
Ex. 1001, 38:62–39:6.
42. A signage device comprising:
a plurality of waveguides each adapted to propagate light
of a first wavelength shorter than about 450 nm, the waveguides
arranged with an overlapping relationship; and
at least one photo luminescent feature coupled with each
of the waveguides for receiving the light of the first wave
length, the at least one photoluminescent feature adapted to
emit light of a second wavelength between about 420 nm and
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about 650 nm in response to receiving the light of the first
wavelength, and the light of the second wavelength emitted
from the at least one photoluminescent feature of at least one of
the waveguides being transmitted to a viewer through at least
another of the waveguides.
Ex. 1001, 41:33–42:8.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015), cert. granted sub
nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).
Under the broadest reasonable construction standard, claim terms generally
are given their ordinary and customary meaning, as would be understood by
one of ordinary skill in the art in the context of the entire disclosure. See In
re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The claims,
however, “‘should always be read in light of the specification and teachings
in the underlying patent,’” and “[e]ven under the broadest reasonable
interpretation, the Board’s construction ‘cannot be divorced from the
specification and the record evidence.’” Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted). Further, any
special definition for a claim term must be set forth in the specification with
reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
The parties’ dispute requires construction of the terms “waveguide”
and “ink having an optical transparency of about 50% or greater.”
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Accordingly, we address each of these terms. No issue in this Decision,
however, requires express construction of any other claim terms. See, e.g.,
Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
(“[C]laim terms need only be construed ‘to the extent necessary to resolve
the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999)).
1. waveguide
Petitioner proposes that “waveguide” should be construed to mean
“one piece or multiple separate pieces of optically transparent material
capable of propagating ultra-violet, violet, or blue light and having a
refractive index higher than the surrounding environment.” Pet. 9. Patent
Owner does not propose an alternative construction, but disagrees with
Petitioner’s proposal, asserting that Petitioner’s proposal to interpret
“waveguide” to include multiple separate pieces of material is incorrect.
PO Resp. 6–9.
The ’355 patent describes a waveguide as “propagating relatively
short wavelength ultraviolet, violet, or blue light.” Ex. 1001, 2:27–28. It is
further described that the light is “confined to the waveguide via internal
reflection.” Id. at 2:55–57. The waveguide of the ’355 patent may be
fabricated of “any optically transparent material capable of propagating
ultra-violet, violet, or blue light and having a refractive index higher than the
refractive index of [the surrounding] environment.” Id. at 5:8–11. The
parties do not dispute that this description in the ’355 patent represents the
ordinary and customary meaning of the term “waveguide.” The parties
dispute, however, centers on whether the term “waveguide” should be
construed, in view of the specification of the ’355 patent, to mean “one piece
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or multiple separate pieces . . .” of waveguide material, or should be limited
to a “single ‘segment[ed]’ waveguide.” Pet. 8–9; PO Resp. 6–9; Reply 1–5.
Petitioner points to Figure 19A of the ’355 patent, arguing that, in
view of the embodiment described with respect thereto, “waveguide” should
be construed to mean “one piece or multiple separate pieces” of waveguide
material. Pet. 8–9. Figure 19A of the ’355 patent is reproduced below.

According to the ’355 patent, Figure 19A is “a top view of a signage device
depicting the use of multiple light sources that, through electric light control,
can create spatial and temporal sequencing of images on a single
waveguide.” Ex. 1001, 4:9–12 (emphasis added). Referring to Figure 19A,
the ’355 patent describes that “signage device 200 includes multiple light
sources 205a, b configured along one edge 202 of a waveguide 204 which
may be divided into two segments by a barrier or partition 207 which may
be, for example, a light barrier or air gap.” Ex. 1001, 28:60–63 (emphases
added).
Claim 12 of the ’355 patent recites that the signage device of claim 11
(which in turn depends from claim 1) further includes a “plurality of
photoluminescent features, wherein the light sources [coupled with the
waveguide] may be operated to temporally sequence the light of the first
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wavelength for coupling with different photoluminescent features to create
multiple images.” Ex. 1001, 39:43–47. Petitioner argues that to limit
waveguide to a single piece of material would exclude all embodiments
covered by claim 12. Pet. 9; Reply 3–5; Tr. 66:5–11. Patent Owner argues
that the “functionality [of claim 12] could be achieved without separating the
waveguide into segments by using light sources, such as lasers and LEDs
that can be configured to have very little divergence in the direction parallel
with the edge of the waveguide.” PO Resp. 8 (citing Ex. 2008 ¶ 26).
However, as noted by Petitioner, not a single embodiment of this nature is
described in the ’355 patent. Reply 4. Construing “waveguide” to be
limited to a single piece of waveguide material would result in a
construction that, for claim 12, not only leaves out the embodiment of
Figure 19A, but also every other disclosed embodiment of the ’355 patent.
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
1996) (holding that a claim construction that excludes the preferred
embodiment is “rarely, if ever, correct”).
As noted above, the disclosure of the ’355 patent expressly states that
the embodiment of Figure 19A is a single waveguide. See Ex. 1001, 4:9–12.
The claims must be construed in the context of the entire disclosure.
See Translogic, 504 F.3d at 1257. In the context of the disclosure of
the ’355 patent, “a waveguide” must cover the embodiment of Figure 19A,
and, thus, at least includes a waveguide having multiple segments.
Patent Owner argues that “a single ‘segment[ed]’ waveguide” (as in
Fig. 19A) and “multiple separate pieces” of waveguide material (as in
Petitioner’s proposed construction) are not the same. PO Resp. 7 (citing
Ex. 2008 ¶ 23). Patent Owner asserts that the discussion of the embodiment
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of Figure 19A “does not redefine the term ‘waveguide,’ but rather it
describes that for this embodiment, reference material may be inserted into
or removed from a waveguide to change its light confinement properties.”
Id. (citing Ex. 2008 ¶ 23).
As noted by Petitioner (see Reply 2), the ’355 patent does not define
or discuss “reference material,” but instead only describes that the segments
of the waveguide of Figure 19A may be “divided into two segments by a
barrier or partition 207 which may be, for example, a light barrier or air
gap.” Ex. 1001, 28:62–63. A segment is defined as “a separate piece of
something.” Segment Definition, MERRIAM-WEBSTER.COM,
http://www.merriam-webster.com/dictionary/segment (last visited May 10,
2016). Nothing in the description of the ’355 patent further defines what is
meant by “segments,” or changes the common meaning of this word.
At the oral hearing, Patent Owner’s counsel argued, “[i]f you look at
Fig. 19A . . . , clearly those edges [203] extend around the entire perimeter
of the device that is shown in Fig. 19A. It’s one single frame all the way
around the perimeter 203 as identified on all four sides of that figure. And,
so, that is a single waveguide.” Tr. 27:1–6; see id. at 31:7–15, 39:15–16.
We do not find this argument persuasive. The specification does not
describe “with reasonable clarity, deliberateness, and precision” that there
must be a frame or some other structural element such that the segments of
the “single waveguide” of Figure 19A somehow are connected. See
Paulsen, 30 F.3d at 1480. In fact, the specification is silent on this issue,
and states only that the segments are divided by a barrier or partition, and
that this barrier/partition may be a light barrier or air gap. Ex. 1001, 28:62–
63. In other words, as disclosed in the specification of the ’355 patent, the
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two segments may be separated by nothing more than air. See Ex. 1001,
28:57–63 (The waveguide “may be divided into two segments by a barrier or
partition 207 which may be … [an] air gap.”). There is no discussion in the
specification of the ’355 patent of a barrier or partition including any sort of
structure that defines such an air gap.
Other than the alleged frame of Figure 19A, Patent Owner’s counsel
could not identify any discussion in the ’355 patent that requires the
segments of waveguide 204 to be structurally connected in any way:
JUDGE PLENZLER: Right. I’m just trying to
understand if there’s any other reason to infer from the
specification and the discussion of air gap that would
say . . . this [waveguide of Figure 19A] is really one piece
instead of having two pieces with a gap.
MR. AHRENS: Other than the specific discussion of the
frame 203 which circumnavigates both the panels in 19A and
holds it together as one composite frame unit, I think that’s
probably the strongest evidence of it being a single waveguide.
Tr. 40:19–41:3. However, as noted, we do not discern any “specific
discussion” of such a frame in the ’355 patent. We decline to incorporate
any such structural limitation from Figure 19A into the claims. See Playtex
Prods., Inc. v. Proctor & Gamble, Co., 400 F.3d 901, 907–08 (Fed. Cir.
2005) (determining trial court’s reliance on the drawings to limit the claim
term was erroneous); TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am.,
L.L.C., 375 F.3d 1126, 1136 (Fed. Cir. 2004) (“[T]he mere fact that the
patent drawings depict a particular embodiment of the patent does not
operate to limit the claims to that specific configuration.” (quoting Anchor
Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306–07) (Fed.
Cir. 2003)).
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Accordingly, for the reasons discussed, we interpret the term
waveguide, in view of the specification of the ’355 patent, to mean “one
piece or multiple separate pieces of optically transparent material capable of
propagating short wavelength light (e.g., ultra-violet, violet, or blue light),
where the light is confined to the waveguide via internal reflection.”
2. ink having an optical transparency of about 50% or
greater
Petitioner proposes that “ink having an optical transparency of about
50% or greater” should be construed to mean “ink which transmits 50% or
more visible light without significant reflection, scattering, or absorption.”
Pet. 9–10. Patent Owner does not propose an express construction of the
phrase, but argues that we should reject Petitioner’s proposed construction.
PO Resp. 9–10. Specifically, Patent Owner argues that the “without
significant reflection, scattering, or absorption” portion of Petitioner’s
proposed construction “makes for an incoherent, nonsensical and ambiguous
construction,” because it incorrectly incorporates Dr. Blair’s definition of
transparency, when referring to transmission probability. Id.
As correctly noted by Petitioner (see Pet. 10), the ’355 patent does not
define what is meant by “ink having an optical transparency of about 50% or
greater.” We, thus, construe the phrase in accordance with its ordinary and
customary meaning, taking into account the specification of the ’355 patent.
We determine that the ordinary meaning of “ink having an optical
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transparency of about 50% or greater” is “ink which transmits 50% or more
of light in the visible range of frequencies.”4
B. Whether the Cited References Are Analogous Art
Patent Owner argues that the asserted references are not analogous art
to the claimed invention. PO Resp. 10–23. We have considered Patent
Owner’s arguments, but do not find them persuasive.5
“To be considered within the prior art for purposes of [an]
obviousness analysis, a reference must be . . . from the same field of
endeavor or . . . reasonably pertinent to the particular problem the inventor is
trying to solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed.
Cir. 2015) (citing Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir.
2010); Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir.
1993)). Patent Owner argues that the asserted references are neither from
the same field of endeavor nor reasonably pertinent to the particular problem

4 See Optical Definition, MERRIAM-WEBSTER.COM, http://www.merriam-
webster.com/dictionary/optical (last visited May 8, 2016) (2c: “of, relating
to, or being objects that emit light in the visible range of frequencies”);
Transparency Definition, MERRIAM-WEBSTER.COM, http://www.merriam-
webster.com/dictionary/transparency (last visited May 10, 2016)
(2: “the quality or state of being transparent”); Transparent Definition,
MERRIAM-WEBSTER.COM, http://www.merriam-
webster.com/dictionary/transparent (last visited May 10, 2016)
(1(a)(1): “having the property of transmitting light without appreciable
scattering so that bodies lying beyond are seen clearly”; 1(a)(2): “allowing
the passage of a specified form of radiation (as X-rays or ultraviolet light)”).
5 We note that for purposes of the ground alleging anticipation by Chapin,
the question of whether Chapin is analogous art is irrelevant. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“A reference may be . . .
directed to an entirely different problem from the one addressed by the
inventor, yet the reference will still anticipate if it explicitly or inherently
discloses every limitation recited in the claims.”).
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the inventor was trying to solve. PO Resp. 11–16 (discussing Chapin),
17–20 (discussing Snider), 21–23 (discussing Schropp).
Patent Owner argues that the field of endeavor of the ’355 patent is
“light emissive displays, and more specifically, to light emissive signage
displays based upon lightwave coupling.” PO Resp. 10 (quoting Ex. 1001,
1:13–15; citing Ex. 2007 ¶ 3). Patent Owner further asserts that “[m]ore
specifically, the ’355 Patent is directed to signage displays that included a
greatly improved gamut of possible colors, brightness, greater levels of
transparency, and commercial viability enabled by a combination of optical
efficiency, simple usability, and manufacturability.” Id. at 10–11 (citing
Ex. 2007 ¶ 3).
Patent Owner asserts that Chapin is not within the field of endeavor of
the ’355 patent because “Chapin discloses use of fluorescent pigments and
paints, which for those commercially available at the time of Chapin, did not
provide adequate levels of color, brightness, and optical transparency needed
for operation as taught in the ’355 Patent.” PO Resp. 11 (citing Ex. 2007
¶ 5). Patent Owner asserts that Snider is not within the field of endeavor of
the ’355 patent, because the ’355 patent “was not directed ‘to image and/or
information display systems and’ ‘to an improved display system utilizing
fluorescent material(s) which is particularly useful in a vehicle head-up
display system,’” and because Snider does not use a waveguide. PO Resp.
17 (citing Ex. 1004 ¶ 3; Ex. 2007 ¶ 15). Patent Owner asserts that Schropp
is not within the field of endeavor of the ’355 patent, because the ’355 patent
“was not directed ‘to display boards, and more particularly to luminous
display boards in which information is conveyed by differences in
luminosity and/or color between adjacent portions of a board,’” and because
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Schropp does not include photoluminescent features. PO Resp. 21–22
(citing Ex. 1007, 1:10–13; Ex. 2007 ¶¶ 19–20; Ex. 1001, 41:33–42:8,
42:29–38).
As informed by KSR International Co. v. Teleflex Inc., 550 U.S. 398
(2007), the scope of analogous art must be construed broadly. See Wyers,
616 F.3d at 1238. We are not persuaded that the field of endeavor of
the ’355 patent, and each of Chapin, Snider, and Schropp, should be defined
as narrowly as suggested by Patent Owner. Instead, we are persuaded that
each of the ’355 patent, Chapin, Snider, and Schropp are related to
illuminated displays or signage. See Ex. 1001, 1:13 (“The invention relates
to light emissive displays.” (emphasis added)); Ex. 1003, 1:10–14 (“The
present invention relates to animated signs and displays . . . in which an
animation effect is produced by sequential illumination of the various views
of a scene comprising the complete display scene.” (emphasis added));
Ex. 1004 ¶ 59 (“[T]he invention could be used in non-vehicular applications
[including] displays of advertisements, entertainment (such as light
displays), or decorative patterns.” (emphasis added)); Ex. 1007, 1:10–11
(“This invention relates to . . . luminous display boards.” (emphasis added));
Reply 5–9. More specifically, the ’355 patent and Chapin each relate to
signs based on ultraviolet edge-lit waveguides containing visible fluorescent
features. Reply 6 (citing Ex. 1001, 25:56–26:19, Fig. 16; Ex. 1003, 14:6–49,
Fig. 24). The ’355 patent and Snider each relate to forming
photoluminescent features on a transparent material, such as PMMA or
glass, and both disclose use in signage generally and windshield displays.
Id. at 7 (citing Ex. 1001, 5:20–24, 38:22–38; Ex. 1004 ¶¶ 19–20, 59).
The ’355 patent and Schropp each relate to signage formed of transparent
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carrier plates coupled to multiple light sources to allow the appearance of
animation by sequential illumination of the lights. Id. at 7–8 (citing
Ex. 1001, 5:20–24, 29:19–34; Ex. 1007, 2:60–61, 4:18–20; Ex. 1019,
87:21–88:7).
Because we find that each of Chapin, Snider, and Schropp is within
the same field of endeavor as the claimed invention, we need not consider
Patent Owner’s arguments regarding whether these references are
reasonably pertinent to the particular problem with which the inventors are
involved. For the reasons discussed, we determine that each of Chapin,
Snider, and Schropp is analogous art to the ’355 patent and, thus, available
as prior art for purposes of our obviousness analysis.
C. Principles of Law – Anticipation and Obviousness
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference.
See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
Cir. 2001). Although the elements must be arranged or combined in the
same way as in the claim, “the reference need not satisfy an ipsissimis verbis
test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. See KSR, 550 U.S. at 406. The question of
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obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) objective evidence of nonobviousness. See Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord
Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
established when the prior art, itself, would appear to have suggested the
claimed subject matter to a person of ordinary skill in the art. See In re
Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The level of ordinary skill in
the art may be reflected by the prior art of record. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
We analyze the asserted grounds of unpatentability in accordance with
those principles.
D. Claims 1, 8, 11, 12, 23, 24, 26, 27, 30, 32, and 33 —
Obviousness in View of Chapin, Alone or in Combination
With Snider
Petitioner asserts that independent claim 1, as well as claims 8, 11, 12,
23, 24, 26, 27, 30, 32, and 33 which depend therefrom, would have been
obvious in view of Chapin. Pet. 48–53; see also Pet. 13–23 (Petitioner’s
arguments and evidence that these claims are anticipated by Chapin, upon
which Petitioner relies in its obviousness discussion). Petitioner also asserts
that claims 1, 8, 11, 12, 23, 24, 26, 27, 30, 32, and 33, would have been
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obvious in view of the combination of Chapin and Snider. Id. at 33–38.
Patent Owner argues that the references do not teach or suggest the
limitations of the claims. PO Resp. 25–51. Patent Owner also argues that
one of skill in the art would not have combined Chapin and Snider. Id. at
37–38, 43. We have reviewed the entire record before us, including the
parties’ contentions and supporting evidence presented during this trial. For
the reasons explained below, we determine that Petitioner has demonstrated,
by a preponderance of the evidence, that claims 1, 8, 11, 12, 23, 24, 26, 27,
30, 32, and 33 are unpatentable.
1. Obviousness in View of Chapin
a. Overview of Chapin
Chapin relates to “illuminated signs and displays.” Ex. 1003,
Abstract. Figure 24 of Chapin is reproduced below.

As seen in Figure 24, a signage device includes panels 163, 166, which
include scene-views 164, 167, respectively, formed thereon. Ex. 1003,
14:19–21, 14:44–47. “[U]ltraviolet transmitting panel 163 . . . may be made
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of ultraviolet transmitting acrylic, or ordinary glass.” Id. at 14:9–11.
Scene-view 164 may be “painted on the panel surface using fluorescent
paint.” Id. at 14:26. Scene-views of the invention may also be applied “with
inks containing fluorescent dyes rather than with paints.” Id. at 8:29–34; see
also id. at 2:26–29 (“Various colored . . . fluorescent inks responsive to
long-wave ultraviolet illumination are readily available for this
application.”). These inks are “substantially transparent to the induced
fluorescence.” Id. at 8:34.
Lamp 161 injects ultraviolet light into the edge of ultraviolet
transmitting panel 163. Ex. 1003, 14:7–9. “[I]lluminating the edge of the
panel with ultraviolet light will cause the scene to fluoresce brightly.” Id. at
14:27–28. During operation, scene-view 167 may be “flood illuminat[ed]”
by “a second ultraviolet illuminator 165.” Id. at 14:43–44. Sequencing
operation of lamp 161 and illuminator 165, causes “scene-views 164 and
167 alternatively [to] appear.” Id. at 14:45–46.
The sign illustrated in Figure 28 of Chapin, reproduced below, is a
variation of Figure 24.

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As seen in Figure 28, panel 166 and illuminator 165 of Figure 24 are
replaced with second ultraviolet transmitting panel 163 having second
fluorescent scene-view 167 disposed thereon. Ex. 1003, 14:63–68. Second
panel 163 is edge-lit by second lamp 161. Id. at 14:63–67. Scene-views
164, 167 may be painted “on either or both sides of the panel.” Id. at 14:67–
68. “Lamp control circuit 68 controls the successive illumination of the
respective panels and scenes.” Id. at 14:68–15:2.
Another embodiment of Chapin is disclosed in Figure 29, reproduced
below.

As seen in Figure 29, ultraviolet lamp 57, housed within rotating shutter tube
152 including longitudinal slots 157, is driven by a motor to “sequentially
illuminate the lower edge surfaces 192 of a plurality of
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ultraviolet-transmissive panels 163.” Ex. 1003, 15:4–12. Ultraviolet
radiation propagates upwards through each panel 163, successively causing
scene-views 164, 167, 174 “to fluoresce brightly.” Id. at 15:25–33. The
successive lighting of each transmissive panel 163 may produce animation-
like effects, such as “the visual sensation of an arrow initially pointing
upward, rotating 90 degrees clockwise to a horizontal position, rotating 90
degrees clockwise to a downward pointing position, and 180 degrees
clockwise to its original upright pointing position to complete the cycle.”
Id. at 15:33–41, Fig. 26.
b. Claim 1
We first discuss Petitioner’s contentions as to how Chapin teaches
each element of independent claim 1. We then turn to Patent Owner’s
opposition presented in its Response.
Petitioner’s Contentions
Claim 1 recites a “signage device.” As noted above, Chapin discloses
“illuminated signs and displays.” Ex. 1003, Abstract. Petitioner relies on
ultraviolet transmitting panels 163 of Chapin as disclosing the claimed
waveguide. Pet. 16. The ultraviolet transmitting panels of Chapin are
adapted to propagate light in the ultraviolet spectrum, which has a
wavelength shorter than 450 nm, as recited in claim 1. Pet. 16, 26 (citing
Ex. 1003, 14:7–18; Ex. 1008 ¶ 112); see also Ex. 1003, 15:25–28
(“[U]ltraviolet radiation entering panels 163 is conducted . . . through the
panels by total internal reflection.”).
Petitioner relies on scene-views 164, 167 of Chapin as disclosing the
claimed “at least one photoluminescent feature,” of claim 1. Pet. 16–17, 26–
27. As seen in Figures 24 and 28 of Chapin, discussed above, scene-views
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164, 167 are disposed on a surface of ultraviolet transmitting panels 163.
Ex. 1003, 14:25–28, 14:64–68. Ultraviolet light propagating through
ultraviolet transmitting panels 163 is received by scene-views 164, 167,
causing them to “fluoresce visibly.” Pet. 17 (citing Ex. 1003, 14:21–25,
Abstract); see id. at 24; see also Ex. 1003, 15:25–31 (“Frustrating the total
internal reflection [in panels 163] by painting fluorescent scene-views on the
surfaces of the panels causes the scene-views to fluoresce brightly.”). As
noted by Petitioner, the claimed “420–650 nm wavelength range recited in
claim 1 covers substantially all of the visible light spectrum, and as such, the
light from scene views 164[,] 167 will fall within this range.” Pet. 17 (citing
Ex. 1008 ¶¶ 113–114, 158).
With respect to the “at least one photoluminescent feature further
comprises a primary color luminescent ink having an optical transparency of
about 50% or greater” limitation of claim 1, Petitioner asserts that this
feature would have been obvious to one of ordinary skill in the art. Pet. 48–
49. Regarding the luminescent ink being a primary color, Petitioner points
to the teaching in Chapin that scene-views 164, 167 may include blue, green,
or red ink. Pet. 17, 27 (citing Ex. 1003, 11:13–17). Petitioner provides
declaration testimony that one of ordinary skill in the art would have
understood blue, green, and red to be primary colors. Pet. 17 (citing
Ex. 1008 ¶¶ 115–116).
Regarding the luminescent ink having the claimed optical
transparency, Petitioner points to the teaching in Chapin that the inks used to
create scene-views 164, 167 are “substantially transparent.” Pet. 17–18, 27
(citing Ex. 1003, 8:8–13, 8:33–34). Petitioner asserts that one of ordinary
skill in the art would have understood “substantially transparent” ink to be
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“well more than 50% optically transparent.” Id. at 17–18, 27 (citing
Ex. 1003, 8:9–14, 8:29–36; Ex. 1008 ¶¶ 120–122). Petitioner asserts “the
fluorescent material used to create the scene-views must be transparent to
visible light, in order to prevent one scene view from absorbing fluorescent
light from another scene view and ‘permit that light to be viewable by an
observer in front of the panel,’” as discussed in Chapin. Id. at 18 (citing
Ex. 1003, 8:9–13); see id. at 48–49 (citing Ex. 1003, 8:9–36; Ex. 1008
¶¶ 224–225).
Petitioner further points to the teaching in Chapin that “the thickness
of the fluorescent material can be controlled to achieve a desired
transparency to induced visible light” (id. at 49 (citing Ex, 1003, 8:9–36)),
arguing that “one of ordinary skill in the art would have known to create a
very thin coating of fluorescent material in order to achieve a high optical
transparency (e.g., >50%), and thereby achieve the stated goal of preventing
obscuring images behind the respective scene view.” Id. (citing Ex. 1008
¶¶ 226–228.)
Patent Owner’s Contentions
Patent Owner argues that Chapin does not teach several features of
claim 1. See PO Resp. 25–31. We address each of Patent Owner’s
arguments in turn.
signage device
Patent Owner contends that Chapin does not teach a “signage device,”
as claimed. PO Resp. 25–26. In particular, Patent Owner asserts “it is
apparent that there are significant differences in design consideration and
functionality between the animated signs of Chapin and the high-brightness
reconfigurable displays of the ’355 Patent.” Id. at 26 (citing Ex. 2008 ¶ 58).
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For example, Patent Owner asserts that “[i]n contrast [to the embodiments of
Chapin], the ’355 Patent is directed towards creating high-brightness
reconfigurable displays that function with high efficiency.” Id. at 25 (citing
Ex. 2008 ¶ 58). Patent Owner further notes the embodiments of the ’355
patent “describe methods of uniformly distributing the excitation radiation
within the waveguide, and ways in which the photoluminescent features may
be arranged and/or selectively activated to create displays suitable for a
range of different applications.” Id. at 25–26 (citing Ex. 2008 ¶ 58).
Patent Owner, however, does not point to persuasive evidence that the
claim term “signage device” has any special meaning, and claim 1 does not
include any such configurability, efficiency, or uniformity limitations as
those argued by Patent Owner. See also Reply 10–13 (asserting that the
claims do not recite any of the special requirements argued by Patent
Owner). Chapin discloses “illuminated signs and displays.” Ex. 1003,
Abstract. We have considered Patent Owner’s arguments but find, based on
Petitioner’s evidence, that Chapin discloses a “signage device,” as claimed.
waveguide adapted to propagate light
Patent Owner contends that Chapin does not teach a “waveguide
adapted to propagate light,” as claimed. PO Resp. 26–27. In particular,
Patent Owner asserts that “Dr. Blair has not shown that the ‘ultraviolet
transmitting panel 163’ described in the eleventh embodiment of Chapin is
‘adapted to propagate light’ in the same sense as the waveguides of the ’355
Patent.” Id. at 26 (citing Ex. 2008 ¶ 59).
Patent Owner’s arguments are premised on an assertion that the
waveguides of the embodiments described in the ’355 patent allow the light
to be “uniformly distributed throughout the waveguide” in a manner for
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“efficiently and uniformly illuminating the scene-views.” Id. (citing
Ex. 2008 ¶ 59; Ex. 1001, 11:49–56, 11:66–12:16, 26:20–27:14). Patent
Owner further asserts that “Chapin does not discuss the technical
considerations that are pertinent when engineering light propagation within a
waveguide.” Id. at 27 (citing Ex. 2008 ¶ 59).
Patent Owner, however, does not point to persuasive evidence that the
claim term “adapted to propagate light” has any special meaning, and
claim 1 does not include any such uniform distribution or efficiency
requirements. See also Reply 13–15 (asserting that the claims do not recite
any of the special requirements argued by Patent Owner). As discussed
above, ultraviolet transmitting panels 163 of Chapin, upon which Petitioner
relies as teaching the claimed waveguide, conduct ultraviolet light (i.e., light
of a wavelength shorter than about 450 nm) through the panels by total
internal reflection. Ex. 1003, 15:25–28. Patent Owner’s arguments
notwithstanding, we find, based on Petitioner’s evidence, that Chapin
discloses a “waveguide adapted to propagate light,” as claimed.
the at least one photoluminescent feature further comprises a primary
color luminescent ink having an optical transparency of about 50% or
greater
Patent Owner contends that Chapin does not teach that “the at least
one photoluminescent feature further comprises a[n] . . . ink having an
optical transparency of about 50% or greater,” as claimed. PO Resp. 28–31.
Patent Owner asserts that Chapin, instead of utilizing transparent ink,
describes using “open spaces” in the scene-views, “to allow light from a
scene-view that is further from the observer to be viewable through a scene-
view that is closer to the observer.” Id. at 28 (citing Ex. 1003, 7:65–8:2);
accord id. at 28–29 (citing Ex. 1003, 8:29–43). According to Patent Owner,
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Chapin “confirms that the paints [disclosed therein] are not transparent to
visible light,” because they must be used in a coating thin enough “to ensure
that visible fluorescence induced in the pigment in the outer layers of the
coating is not excessively attenuated by absorption of pigments contained in
the inner layers.” Id. at 28 (citing Ex. 1003, 8:15–19).
There is express disclosure in Chapin, however, that the scene-views
may be applied with inks containing fluorescent dyes, and that such inks
may be “substantially transparent.” See Ex. 1003, 8:29–31 (“If the
scene-views are applied to the ultraviolet absorbing panel with inks
containing fluorescent dyes rather than with paints containing fluorescent
pigments.”), 8:33–34 (“inks containing fluorescent dyes are substantially
transparent to the induced fluorescence”). Patent Owner argues that this
discussion is not a disclosure of using an optically transparent ink, but
instead that Chapin “merely notes that the feature thickness would not be an
issue if one used ‘inks containing fluorescent dyes.’” PO Resp. 30 (citing
Ex. 1008, 8:29–34). Patent Owner continues,
When determining a suitable fluorescent ink, one of skill in the
art would understand that several parameters and attributes
would need to be considered. . . . Chapin does not teach the
relevance of, nor disclose a means for determining or
optimizing certain considerations relevant to the invention of
the ’355 Patent, such as the brightness or efficiency of the
luminescent features.
Id. (citing Ex. 2008 ¶ 65). According to Patent Owner, “Chapin does not
present an engineered solution to the technical issues identified in the ’355
Patent, and a person of ordinary skill in the art would not gain enough
insight from Chapin to use the fluorescent dyes and pigments of Chapin to
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achieve the claimed invention of the ’355 Patent.” Id. at 31 (citing Ex. 2008
¶ 67).
Patent Owner’s arguments in this regard rely on limitations not
present in the claims. Claim 1 does not include any requirement of
brightness or efficiency of the luminescent features (see PO Resp. 30–31
(citing Ex. 2008 ¶¶ 65–67)), but recites only that “the at least one
photoluminescent feature . . . comprises a[n] . . . ink having an optical
transparency of about 50% or greater.” Chapin includes an express
disclosure that inks containing fluorescent dyes may be used (Ex. 1003,
8:29–31) and that “inks containing fluorescent dyes are substantially
transparent to the induced fluorescence” (id. at 8:33–34). See also Ex. 1008
¶ 120 (Dr. Blair testifying that “one of ordinary skill in the art would
conservatively interpret ‘substantially transparent to the induced
fluorescence’ as having a transparency of at least 50% across the visible
spectrum.”).
Patent Owner argues also that Chapin does not teach “making the inks
themselves transparent so a panel behind the inks can be seen through the
inks,” but instead teaches that “the only purpose for modifying the inks [to
be transparent] is to let the fluorescence escape to the viewer.” PO Resp. 14
(citing Ex. 1003, 8:29–34). In this regard, Patent Owner emphasizes
language in Chapin that the “inks containing fluorescent dyes are
substantially transparent to the induced fluorescence.” We do not find this
argument persuasive. As Petitioner notes in its Reply, the “intent” of the ink
disclosed in Chapin is irrelevant if the disclosed signs have the same
properties as those claimed. See Reply 16. The “induced fluorescence,” as
admitted by Dr. Brennan, Patent Owner’s expert, is in the visible spectrum.
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See Ex. 1020 (deposition of Dr. Brennan), 112:4–113:8 (“Q. Would that
fluorescent light [induced in the material] be visible? A. Yes.”). Thus,
because the ink of Chapin is “substantially transparent to the induced
fluorescence” (Ex. 1003, 8:34), and the induced fluorescence is in the visible
spectrum, we find that Chapin teaches using an ink which transmits 50% or
more of light in the visible range of frequencies, which meets the claim
language, as construed above (see supra Section II.A.2).
Conclusion
Given the evidence on this record, we determine Petitioner has shown,
by a preponderance of the evidence, that Chapin renders obvious claim 1.
c. Claim 11
Claim 11, which depends from claim 1, recites “a plurality of light
sources . . . coupled with the waveguide.” Patent Owner argues that,
contrary to Petitioner’s assertion that the mere duplication of a component to
perform the same function would have been obvious (Pet. 50; Ex. 1008
¶¶ 232–235), “having more than one light source coupled to the waveguide
adds additional functionality not possible with just a single light source, such
as selectively illuminating different regions of the waveguide,” and, thus,
this limitation is not obvious ‘as a matter of law.’” PO Resp. 31 (citing
Ex. 2008 ¶ 68). Patent Owner further argues that Figure 28 of Chapin, upon
which Petitioner further relies as disclosing this claim feature, “clearly
shows that each panel 163 is only coupled to a single light source.” Id. at
33.
Based on our construction of waveguide, discussed above (see supra
Section II.A.1), however, we are persuaded by Petitioner’s assertion that
Figure 28 of Chapin, which shows lamps 161 corresponding one each to
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panels 163 (collectively, the claimed waveguide), teaches “a plurality of
light sources . . . coupled with the waveguide,” as recited in claim 11.
Accordingly, we are persuaded that Petitioner has shown, by a
preponderance of the evidence, that Chapin renders obvious claim 11.
d. Claim 12
Claim 12, which depends from claim 11, recites “a plurality of
photoluminescent features, wherein the [plurality of] light sources may be
operated to temporally sequence the light of the first wavelength for
coupling with different photoluminescent features to create multiple
images.” Patent Owner argues that Chapin does not teach or suggest this
feature, because “[c]laim 12 requires that multiple light sources coupled to
the same waveguide be temporally sequenced, and this is not possible in the
embodiments of Chapin because they only have a single light source coupled
to panel 163” and that the different photoluminescent features “must all be
on the same waveguide.” PO Resp. 35 (citing Ex. 2008 ¶ 77).
Based on our construction of waveguide discussed above (see supra
Section II.A.1), however, we find that Figure 28 of Chapin, which shows
lamps 161 corresponding one each to panels 163 (collectively, the claimed
waveguide) and includes “controller 68 which can ‘alternately energize[]’
two or more lamps to combine multiple images to create an animation”
(Pet. 20 (citing Ex. 1003, 7:35–64; Ex. 1008 ¶¶ 134–136)), teaches “a
plurality of photoluminescent features, wherein the [plurality of] light
sources may be operated to temporally sequence the light of the first
wavelength for coupling with different photoluminescent features to create
multiple images,” as recited in claim 12. Accordingly, we are persuaded that
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Petitioner has shown, by a preponderance of the evidence, that Chapin
renders obvious claim 12.
e. Claim 23
Claim 23, which depends from claim 1, recites “a plurality of
photoluminescent features applied to the waveguide in a predominantly
overlapping pattern.” Patent Owner argues that Chapin does not teach or
suggest this feature because “the features of Chapin are not transparent and
so cannot be used in an overlapping pattern.” PO Resp. 35 (citing Ex. 2008
¶ 77). Patent Owner also argues that overlapping features is not a simple
design choice. Id. at 35–36 (citing Ex. 2008 ¶ 77). As discussed above with
respect to claim 1, we find that Chapin teaches that the luminescent features
are transparent, as claimed. See supra Section II.D.1.b. Further, we are
persuaded by Petitioner’s assertion and find that Figures 28 and 29 of
Chapin, and the corresponding discussion in the specification thereof, teach
overlapping scene-views to produce animation effects. Pet. 20–21, 51; see
Ex. 1003, 14:63–15:41, Figs. 26, 28, 29. Accordingly, we are persuaded that
Petitioner has shown, by a preponderance of the evidence, that Chapin
renders obvious claim 23.
f. Claim 27
Claim 27, which depends from claim 1, recites that “the
photoluminescent features have different sizes.” Patent Owner argues that it
would not have been obvious to change the size of the photoluminescent
features of Chapin, because in Chapin “no consideration is given to the
uniformity of the radiation within the waveguide,” and the “presence of a
non-uniform excitation . . . introduces technical issues that must be
considered when designing the size of the features, and so changing the size
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of the features is not merely a simple design choice.” PO Resp. 36 (citing
Ex. 2008 ¶ 79). The claim, however, includes no requirement for uniform
excitation, and we are persuaded by Petitioner’s evidence and find that
Chapin teaches or suggests using scene views of different sizes. See Pet. 22
(citing Ex. 1003, 11:53–57, Fig. 11 (showing scene views of different
sizes)); id. at 52–53 (citing Ex. 2008 ¶¶ 244–246 (Dr. Blair testifying that it
would have been a simple design choice to use scene views of different
sizes)). Accordingly, we are persuaded that Petitioner has shown, by a
preponderance of the evidence, that Chapin renders obvious claim 27.
g. Claims 8, 24, 26, 30, 32, and 33
Patent Owner does not substantively discuss dependent claims 8, 24,
26, 30, 32, and 33, apart from its discussion of independent claim 1, which
we have addressed above. For each of claims 8, 24, 26, 30, 32, and 33,
Petitioner provides arguments as to how each claim limitation is taught or
suggested by Chapin, and relies upon Dr. Blair’s testimony. See Pet. 18, 21–
23, 49–53 (citing Ex. 1003, 5:50–51, 6:1–11, 11:13–17, 14:7–9, 14:68–15:2,
15:35–41, Figs. 26, 29; Ex. 1008 ¶¶ 125–127, 139–142, 145–150, 230–231,
237–243, 247–248; Ex. 1001, 5:20–24). We have considered Petitioner’s
evidence and are persuaded that Petitioner has shown, by a preponderance of
the evidence, that Chapin renders obvious claims 8, 24, 26, 30, 32, and 33.
2. Obviousness in View of Chapin and Snider
a. Overview of Snider
Snider relates to a head-up display system, particularly useful in
vehicles, that includes a fluorescent material carried on a support. Ex. 1004
¶ 3, Abstract. Snider also describes that the display system may be used in
other fields, such as commercial signs or advertising displays. Id. ¶ 16.
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Electromagnetic radiation is directed toward the fluorescent material to
cause it to emit light. Id. ¶ 9. The fluorescent material “emits
electromagnetic radiation, e.g., in the visible region of 390 nm to 800 nm,
upon exposure to external radiation,” which may be ultraviolet light (e.g.,
“in a range of 325 nm to 425 nm”). Id. ¶ 23. The fluorescent material can
“fluoresce at different visible colors,” such as blue and yellow. Id. ¶ 47.
Figure 5 of Snider is reproduced below.

Figure 5 is a graph of transmittance (transparency) versus wavelength for a
support with and without the fluorescent material. Ex. 1004 ¶¶ 54–55, 58.
As can be seen in Figure 5, line 114, which represents the transmittance for a
support including the fluorescent material, shows a transmittance that is well
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above 50% across the visible spectrum. See id. at Fig. 5; Ex. 1008 ¶¶ 96,
181.
b. Analysis
In the asserted ground based on the combination of Chapin and
Snider, Petitioner relies on Snider for an express disclosure of an “ink
having an optical transparency of about 50% or greater,” as recited in
claim 1, and asserts that it would have been obvious to use the ink disclosed
in Snider in the signs of Chapin. Pet. 33–35; see Ex. 1004, Fig. 5.
We are persuaded by Petitioner’s assertion and find that Snider
teaches a photoluminescent ink, as recited in claim 1. See Pet. 33–35 (citing
Ex. 1004 ¶¶ 23, 47, 54, 58, Fig. 5; Ex. 1008 ¶¶ 180–181). Snider teaches
fluorescent material that “emits electromagnetic radiation, e.g., in the visible
region of 390 nm to 800 nm, upon exposure to external radiation,” which
may be ultraviolet light (e.g., “in a range of 325 nm to 425 nm”). Ex. 1004
¶ 23. Snider further teaches that the fluorescent material can “fluoresce at
different visible colors,” such as blue and yellow. Id. ¶ 47. Further, as seen
in Figure 5 of Snider, the transmittance of the fluorescent material is well in
excess of 50% across the visible spectrum. Id. at Fig. 5.
Patent Owner asserts that one of skill in the art would not have been
motivated to combine Snider with Chapin. PO Resp. 37–38, 43. Patent
Owner argues that Chapin and Snider are “very different and relate to
different fields of endeavor.” PO Resp. 37 (citing Ex. 2008 ¶ 87; Ex. 2007
¶¶ 4–6); see id. at 37–38 (citing Ex. 1004 ¶¶ 41–45; Ex. 2008 ¶ 87).
We are persuaded, however, by Petitioner’s argument and evidence
that “it would have been obvious to a person of ordinary skill in the art to
combine . . . the disclosed optically transparent fluorescent material [of
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Snider], with the signage devices disclosed by Chapin.” Pet. 34 (citing
Ex. 1008 ¶ 173). As noted by Petitioner, “Snider expressly discloses that its
embodiments can be practiced in many fields, including commercial signs,
entertainment displays, and advertising displays.” Pet. 34 (citing Ex. 1004
¶ 16, claim 22). Chapin also relates to signs and displays. Ex. 1003,
1:10–14. Additionally, Snider and Chapin both disclose visibly transparent
fluorescent displays utilizing ultraviolet light sources. Pet. 34; see Ex. 1003,
8:9–34, 14:19–33; Ex. 1004 ¶¶ 23, 58. Petitioner asserts that, given
Chapin’s teaching of the desirability of using an ink that is “substantially
transparent,” one of skill in the art would have been motivated to use the
transparent fluorescent material taught in Snider in the signs of Chapin.
Pet. 35 (citing Ex. 1008 ¶ 181).
Patent Owner argues that Petitioner’s asserted reason for using the ink
of Snider in Chapin (e.g., “in view of Chapin’s teaching regarding the
desirability of using an ink that is substantially transparent” (Ex. 1008
¶ 181)) is flawed because, according to Patent Owner, “Chapin does not
teach the desirability of using features that are substantially transparent.”
PO Resp. 43 (citing Ex. 2008 ¶ 96). However, as discussed above (see
supra Section II.D.1.b), we find that Chapin teaches using an ink that is
substantially transparent for the photoluminescent features. Thus, we are not
persuaded that it would have been beyond the skill of one in the art to use
the transparent ink described in Snider in the signs of Chapin.
Patent Owner also argues that the combination of Chapin and Snider
does not teach various other features of the claims. See PO Resp. 38–51.
However, as discussed above (see supra Sections II.D.1.b–f), we find that
Chapin teaches each of these additional features Patent Owner argues is
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missing from the combination. Accordingly, we are persuaded that
Petitioner has shown, by a preponderance of the evidence, that the
combination of Chapin and Snider renders obvious claims 1, 8, 11, 12, 23,
24, 26, 27, 30, 32, and 33.
E. Claims 42, 48, and 49 — Anticipation by Chapin or
Obviousness in View of Chapin and Schropp
Petitioner argues that Chapin discloses all limitations of independent
claim 42, as well as dependent claims 48 and 49 which depend therefrom.
Pet. 23–32. Petitioner also asserts that claims 42, 48, and 49, would have
been obvious in view of the combination of Chapin and Schropp. Pet. 53–
60. Patent Owner argues that the cited references do not disclose all
limitations of the claims. PO Resp. 52–58.
We have reviewed the entire record before us, including the parties’
contentions and supporting evidence presented during this trial. For the
reasons explained below, we determine that Petitioner has demonstrated, by
a preponderance of the evidence, that claims 42, 48, and 49 are unpatentable.
1. Anticipation by Chapin
a. Claim 42
Claim 42 recites similar limitations to those in claim 1. Claim 42,
however, does not include the “primary color luminescent ink having an
optical transparency of about 50% or greater” limitation, included in claim 1,
and instead recites a “plurality of waveguides” in a particular configuration.
With respect to the claimed waveguide adapted to propagate light of a
first wavelength shorter than about 450 nm, and at least one
photoluminescent feature, coupled to the waveguide and adapted to emit
light of a second wavelength between about 420 nm and about 650 nm,
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Petitioner relies on the same disclosures of Chapin, as discussed above with
respect to claim 1. Pet. 23–24; see supra Section II.D.1.b. Patent Owner
argues that Chapin does not disclose a signage device or waveguide adapted
to propagate light, as recited in claim 42. See PO Resp. 52–54. We have
addressed these arguments above with respect to claim 1 (see supra
Section II.D.1.b), and for the same reasons do not find Patent Owner’s
arguments persuasive with respect to claim 42. Thus, for the reasons
discussed above, we find that Chapin discloses these features. We now
address the features of claim 42 not present in claim 1.
Petitioner asserts that Chapin discloses “a plurality of” ultraviolet
transmitting panels 163 “arranged with an overlapping relationship” with
respect to the vantage of the viewer, as recited in claim 42. Pet. 24 (citing
Ex. 1003, Figs. 28, 29). With respect to the “light of the second wavelength
emitted from the at least one photoluminescent feature of at least one of the
waveguides being transmitted to a viewer through at least another of the
waveguides” limitation of claim 42, Petitioner points to disclosure in Chapin
that “scene views 164, 167, and 174 in FIG. 29 fluoresce to produce
animation-like effects, such as ‘the visual sensation of an arrow initially
pointing upward.’” Pet. 24 (citing Ex. 1003, 15:33–41). Petitioner cites to
declaration testimony indicating that “[t]hose animation-like effects require
that the viewer observe the light from scene views through the adjacent
panels 163.” Pet. 24 (citing Ex. 1008 ¶ 160). Patent Owner does not
substantively discuss these claim limitations. Based on our review of the
record, we are persuaded by Petitioner’s argument and evidence and find
that Chapin discloses these claim features.
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Given the evidence on this record, we determine Petitioner has shown,
by a preponderance of the evidence, that Chapin anticipates claim 42.
b. Claim 48
Claim 48 recites “a plurality of light sources . . . , each of the light
sources optically coupled with a respective one of the waveguides.”
Petitioner relies on Figure 28 of Chapin, as disclosing this claim feature.
Pet. 25 (citing Ex. 1003, Fig. 28; Ex. 1008 ¶¶ 163–164). Patent Owner
argues that Petitioner’s position regarding claim 48 is inconsistent with its
position regarding claims 11 and 12—namely, that Petitioner relies on the
two panels 163 shown in Figure 28 of Chapin as teaching both a single
waveguide and as disclosing two separate waveguides. PO Resp. 54–55.
We disagree. As discussed above (see supra Section II.A.1), we
interpret the term waveguide, in view of the specification of the ’355 patent,
to mean “one piece or multiple separate pieces of optically transparent
material capable of propagating short wavelength light (e.g., ultra-violet,
violet, or blue light), where the light is confined to the waveguide via
internal reflection.” Thus, we are persuaded by Petitioner’s assertion and
find that Figure 28 of Chapin teaches both a single waveguide (including
both panels 163 shown in the figure as segments thereof) and multiple
waveguides (where each of panels 163 is an individual and separate
waveguide).
Accordingly, we are persuaded that Petitioner has shown, by a
preponderance of the evidence, that Chapin anticipates claim 48.
c. Claim 49
Patent Owner does not substantively discuss dependent claim 49,
apart from its discussion of claims 42 and 48, which we have addressed
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above. Petitioner provides arguments as to how each limitation of claim 49
is disclosed in Chapin, and relies upon Dr. Blair’s testimony. Pet. 25, 32
(citing Ex. 1003, 7:35–64, 14:60–62, 14:68–15:2, Fig. 28; Ex. 1008 ¶¶ 165–
166); see Pet. 19–20, 23 (citing Ex. 1003, 7:35–64, 14:68–15:2, Fig. 28;
Ex. 1008 ¶¶ 134–136, 149–150). We have considered Petitioner’s evidence
and are persuaded that Petitioner has shown, by a preponderance of the
evidence, that Chapin anticipates claim 49.
2. Obviousness in View of Chapin and Schropp
a. Overview of Schropp
Schropp relates to “luminous display boards in which information is
conveyed by differences in luminosity and/or color between adjacent
portions of a board.” Ex. 1007, 1:10–13. A plurality of carrier plates 1 are
“capable of diverting light emanating from the respective source of edge
lighting through a major face of the respective plate toward the right.” Id. at
4:8–14, Fig. 2. “To a viewer looking at the display board from that
direction[,] the several secondary light sources constituted by the sign layers
appear to be located in a single plane so that many optical illusions can be
produced.” Id. at 4:14–18. For example, “[c]onsecutive lighting of sign
layers . . . may produce the appearance of color changes, of movement, and
the like.” Id. at 4:18–20.
b. Analysis
In the asserted ground based on the combination of Chapin and
Schropp, Petitioner relies on Schropp for explicit disclosure that the light
from a feature on one waveguide is transmitted to a viewer through at least
another of the waveguides, as recited in claim 42, and asserts that it would
have been obvious to include this feature of Schropp in the sign of Chapin
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for the “ability to ‘produce the appearance of color changes [and]
movement,’ as taught by Schropp.” Pet. 56–57 (citing Ex. 1007, 4:11–20,
Fig. 2; Ex. 1008 ¶¶ 267–268). We are persuaded by Petitioner’s argument
and evidence that it would have been obvious to incorporate this feature of
Schropp into the signs of Chapin.
Patent Owner argues that Schropp does not disclose several features
of the claims, and particularly that Schropp does not relate to ultraviolet light
nor fluorescent features. PO Resp. 55–58 (citing Ex. 2008 ¶¶ 118, 120–
122). Petitioner, however, relies on Schropp only for its disclosure that
“light from each carrier plate 1 is ‘capable of diverting light . . . through a
major face of the respective plate toward the right’ so that ‘[t]o a viewer
looking at the display board from that direction[,] the several secondary light
sources constituted by the sign layers appear to be located in a single
plane.’” Pet. 56–57 (citing Ex. 1007, 4:11–18, Fig. 2). Regarding the other
features of claims 42, 48, and 49, as discussed above (see supra Sections
II.E.1.a–c), we find that Chapin teaches each of these features Patent Owner
argues is missing from Schropp.
Accordingly, we are persuaded that Petitioner has shown, by a
preponderance of the evidence, that the combination of Chapin and Schropp
renders obvious claims 42, 48, and 49.
III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 42, 48,
and 49 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Chapin;
that claims 1, 8, 11, 12, 23, 24, 26, 27, 30, 32, and 33 are unpatentable under
35 U.S.C. § 103(a) as obvious in view of Chapin; that claims 1, 8, 11, 12,
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23, 24, 26, 27, 30, 32, and 33 are unpatentable under 35 U.S.C. § 103(a) as
obvious in view of Chapin and Snider; and that claims 42, 48, and 49 are
unpatentable under 35 U.S.C. § 103(a) as obvious in view of Chapin and
Schropp.
IV. ORDER
Accordingly, it is
ORDERED that claims 1, 8, 11, 12, 23, 24, 26, 27, 30, 32, 33, 42, 48,
and 49 of U.S. Patent No. 7,430,355 B2 are held unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
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:
Jonathan H. Spadt
Andrew J. Koopman
Christopher H. Blaszkowski
RATNERPRESTIA
jhspadt@ratnerprestia.com
akoopman@ratnerprestia.com
cblaszkowski@ratnerprestia.com

PATENT OWNER:
John Paul Davis
Charles Brown
Gregory Ahrens
WOOD, HERRON & EVANS, LLP
jdavis@whepatent.com
cbrown@whe-law.com
gahrens@whe-law.com