Ultravision Technologies, LLC

Patent Trials and Appeals Board

Nov 30, 2021

IPR2020-01050 (P.T.A.B. Nov. 30, 2021)

Trials@uspto.gov Paper 34
571-272-7822 Date: November 30, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GLUX VISUAL EFFECTS TECH (shenzhen) CO.,
LEYARD OPTOELECTRONIC CO.,
SHENZHEN LIANTRONICS CO., LTD., and
UNILUMIN GROUP CO., LTD.,
Petitioner,
v.
ULTRAVISION TECHNOLOGIES, LLC,
Patent Owner.

IPR2020-01050
Patent 9,978,294 B1

Before DENISE M. POTHIER, SCOTT A. DANIELS, and
ROBERT L. KINDER, Administrative Patent Judges.
DANIELS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 3[1]8(a)
Dismissing In Part and Denying In Part
Patent Owner’s Motion to Exclude Evidence
37 C.F.R. § 42.64
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Patent 9,978,294 B1
2
I. INTRODUCTION
A. Background
Glux Visual Effects Tech (Shenzhen) Co., Leyard Optoelectronic Co.,
Shenzhen Liantronics Co., Ltd., and Unilumin Group Co., Ltd. (“Petitioner”)
requested inter partes review of claims 1, 2, 7, 9, 13, 18, 20, 22–24, 26–28,
and 30 of U.S. Patent No. 9,978,294 B1 (Ex. 1001, “the ’294 patent”)
pursuant to 35 U.S.C. §§ 311–319. Paper 4 (“Petition” or “Pet.”).
Ultravision Technologies, LLC (“Patent Owner”) filed a Preliminary
Response. Paper 9. Pursuant to 35 U.S.C. § 314, we granted the request and
instituted inter partes review as to all challenged claims on all grounds
presented in the Petition. Paper 10 (“Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 18, “PO
Resp.”), Petitioner filed a Reply (Paper 22, “Reply”), and Patent Owner filed
a Sur-reply (Paper 24, “Sur-reply”). Patent Owner also filed a Motion to
Exclude Evidence. (Paper 28, “Mot.”). Petitioner filed an Opposition to
Patent Owner’s Motion to Exclude Petitioner’s Evidence. (Paper 29, Opp.
Mot.”). Patent Owner filed a Reply to Petitioner’s Opposition to Motion to
Exclude. (Paper 31, “Reply Opp. Mot.”). A hearing was held on August 24,
2021, and a transcript of the hearing is included in the record. Paper 32
(“Tr.”).1
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as
to the patentability of the claims on which we instituted trial. Petitioner
bears the burden of proving unpatentability of the Challenged Claims, and

1 The hearing for this proceeding, as well as IPR2020-01049, and IPR2020-
01052 were held together. Paper 25 (Order Granting the Parties for Oral
Hearing), 2.
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the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
prevail, Petitioner must prove unpatentability by a preponderance of the
evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
Having reviewed the arguments and the supporting evidence, we determine
that Petitioner (1) has shown, by a preponderance of the evidence, that
claims 1, 2, 7, 9, 13, 18, 20, 22–24, 26–28, and 30 of the ’294 patent are
unpatentable.
B. Related Proceedings
The parties indicate various cases pending before the United States
District for the Eastern District of Texas that are related matters. Pet. 1–2;
Paper 7, 1–3. Petitioner further indicates some of these cases were
consolidated into Ultravision Technologies, LLC v. GoVision, LLC, Case
No. 2:18-cv-00100-JRG-RSP (E.D. Tex.) and concern the ’294 patent. Pet.
2. Petitioner also indicates that it received an amended complaint on May
27, 2020. Id. at 2–3.
C. Real Parties in Interest
Petitioner identifies Shenzhen Absen Optoelectronic Co., Absen, Inc.,
Ledman Optoelectronic Co., Ltd., Glux Visual Effects Tech (Shenzhen) Co.,
Leyard Optoelectronic Co., Shenzhen Liantronics Co., Ltd., and Unilumin
Group Co., Ltd. as “potential real parties-in-interest.” Pet. 1.
D. Instituted Grounds of Unpatentability
We instituted inter partes review of all challenged claims based on all
grounds of unpatentability asserted in the Petition, which are as follows:
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Patent 9,978,294 B1
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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 2, 9, 13, 20 102 Guoshi2
7, 18, 22–24, 26–28 103 Guoshi, Kim,3 Panagotacos4
30 103 Guoshi, Kim, Nicholson5
Inst. Dec. 2; Pet. 4–5. Petitioner supports its challenges with a declaration of
Mr. Richard Flasck. Ex. 1005. Patent Owner supports its positions with a
declaration of Mr. Thomas Credelle. Ex. 2002.
E. The ’869 Patent
The ’294 patent (Ex. 1001), titled “Modular Display Panel,” relates to
“[l]arge displays (e.g., billboards), such as those commonly used for
advertising in cities and along roads, [and] generally have one or more
pictures and/or text that are to be displayed under various light and weather
conditions.” Ex. 1001, 2:16–19. The ’294 patent more specifically
describes
[i]n one embodiment, modular display panel comprises a casing
having a recess. The casing comprises locking points for use in
attachment to an adjacent casing of another modular display
panel. A printed circuit board is disposed in the recess and a
plurality of LEDs attached to the printed circuit board. A driver
circuit is attached to the printed circuit board. A heat sink is
disposed between a back side of the casing and the printed circuit
board. The heat sink thermally contacts the back side of the
casing and the printed circuit board. A framework of louvers is

2 Ex. 1008, CN 103280164 A (published Sept. 4, 2013).
3 Ex. 1010, KP 2002-0069818 (published Sept. 5, 2002).
4 Ex. 1011, WO 02/23956 A2 (published Mar. 21, 2002).
5 Ex. 1012, U.S. Patent No. 6,175,342 B1 (issued Jan. 16, 2001).
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Patent 9,978,294 B1
5
disposed over the printed circuit board. The framework of
louvers is disposed between rows of the LEDs.
Id. at 2:40–51. Figures 1A and 1B, below, as annotated by the Board,
illustrate the front and back of multi-panel display 100.

Annotated Figures 1A and 1B, above, depict an embodiment of multi–panel
display 100 disclosed in the ’294 patent, with modular display panel 104a,
shown as highlighted by the Board. Id. at 3:20–21.
The ’294 patent describes that
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[t]he display 100 includes a display surface 102 that is formed by
multiple lighting panels 104a-104t. In the present embodiment,
the panels 104a-104t use light emitting diodes (LEDs) for
illumination, but it is understood that other light sources may be
used in other embodiments. The panels 104a-104t typically
operate together to form a single image, although multiple
images may be simultaneously presented by the display 100. In
the present example, the panels 104a-104t are individually
attached to a frame 106, which enables each panel to be installed
or removed from the frame 106 without affecting the other
panels.
Id. at 6:66–7:10.
Figures 2A–2C (below) illustrate “one embodiment of an LED panel
200 . . . that may be used as one of the LED panels 104a-104t of FIGS. 1A
and 1B.” Id. at 7:37–39.

Figure 2A, above, “illustrates a front view of the LED panel 200 with LEDs
aligned in a 16x32 configuration.” Id. at 7:59–61. The ’294 patent explains,
[r]eferring specifically to FIG. 2A, in the present example, the
LED panel 200 includes a substrate 202 that forms a front surface
of the panel 200. The substrate 202 in the present embodiment
is rectangular in shape, with a top edge 204, a bottom edge 206,
a right edge 208, and a left edge 210. A substrate surface 212
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Patent 9,978,294 B1
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includes “pixels” 214 that are formed by one or more LEDs 216
on or within the substrate 202. In the present example, each pixel
214 includes four LEDs 216 arranged in a pattern (e.g., a square).
Id. at 7:65–8:6. As also shown in Figure 2A, above, the ’294 patent
describes that “[l]ouvers 218 may be positioned above each row of pixels
214 to block or minimize light from directly striking the LEDs 216 from
certain angles.” Id. at 8:31–33.
Figure 2B of the ’294 patent showing circuitry and power supply for
LED panel 200, is reproduced below.

As shown in Figure 2B, above, the ’294 patent describes
one embodiment of the panel 200 illustrates a housing 220. The
housing 220 contains circuitry 222 and a power supply 224. The
circuitry 222 is coupled to the LEDs 216 and is used to control
the LEDs. The power supply 224 provides power to the LEDs
216 and circuitry 222.
Id. at 8:41–46. The ’294 patent explains further that “[i]n the present
example, the housing 220 is sealed to prevent water from entering the
housing.” Id. at 8:53–54. The ’294 patent also describes that “the housing
220 may be sealed to have an ingress protection (IP) rating such as IP 67,
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which defines a level of protection against both solid particles and liquid.”
Id. at 8:54–57.6
Figure 2C of the ’294 patent showing another embodiment of LED
modular panel 200, is reproduced below.

Figure 2C “illustrates one possible configuration of a power supply
positioned within the panel 200 relative to a back plate of the panel 200.”
Id. at 7:62–64. The ’294 patent describes that in “FIG. 2C, one embodiment
of the panel 200 illustrates how the power supply 224 may be thermally
coupled to the housing 220 via a thermally conductive material 226 (e.g.,
aluminum). This configuration may be particularly relevant in embodiments
where the panel 200 is sealed and cooling is passive.” Id. at 8:64–9:2.
Figure 24A, reproduced below, illustrates “a display panel in accordance
with an embodiment of the present invention.” Id. at 22:45–47.

6 IP ratings are a numeric evaluation of the level of dust and water protection
for a device. The first digit relates to dust protection and the second digit
relates to water. Higher values indicate a greater degree of protection.
Ex. 1016, 1.
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For Figure 24A, above, the ’294 patent explains that “the modular LED
display panel comprises a plurality of LEDs 1610 mounted on one or more
printed circuit boards (PCBs) 1620, which are housed within a hermetically
sealed enclosure or casing.” Id. at 23:6–9. The ’294 patent describes that
“[t]he PCB is mounted within a cavity of an enclosure, which may be a
plastic casing 1650.” Id. at 23:19–20. Also shown in Figure 24A,
[a] power supply unit 1670 may be mounted over the casing 1650
for powering the LEDs 1610. The power supply unit 1670 may
comprise a LED driver in various embodiments. The LED driver
may include a power converter for converting ac to dc, which is
supplied to the LEDs 1610. Alternatively, the LED driver may
comprise a down converter that down converts the voltage
suitable for driving the LEDs 1610. For example, the down
converter may down convert a dc voltage at a first level to a dc
voltage at a second level that is lower than the first level. This is
done so that large dc currents are not carried on the power cables.
The LED driver is configured to provide a constant dc current to
the LEDs 1610.
Id. at 23:53–65. The ’294 patent explains further that “[i]n various
embodiments, the display panel 1350 is sealed to an IP 67 standard. As
discussed herein, other ratings are possible.” Id. at 24:12–14.
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Patent 9,978,294 B1
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F. Claimed Subject Matter
The ’294 patent has 30 claims, of which claims 1, 2, 7, 9, 13, 18, 20,
22–24, 26–28, and 30 are challenged. Claims 1, 13, and 22 are the
independent claims. Claim 1 illustrates the claimed subject matter and is
reproduced below with emphasis added to particular limitations of
importance:
1. A modular display panel comprising:
a first side and a second side opposite to the first side, wherein
the first side of the modular display panel comprises a
display surface of the modular display panel;
attachment points for use in attachment as part of a multi-
panel modular display;
a plastic casing comprising an outer surface of the modular
display panel, the outer surface being part of the second
side of the modular display panel;
a recess disposed in the plastic casing;
a printed circuit board disposed in the recess;
a plurality of LEDs arranged as pixels attached to a front side
of the printed circuit board, wherein the pixels are
arranged in a rectangular array comprising at least fifty
pixels;
a framework of louvers disposed over the front side of the
printed circuit board between rows of the plurality of
LEDs;
a circuit for controlling the plurality of LEDs, the circuit
being attached to the printed circuit board;
a power supply for powering the plurality of LEDs;
wherein the front side of the printed circuit board is sealed to
be waterproof and the plastic casing is sealed to be
waterproof so that the modular display panel is sealed to
be waterproof; and
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11
wherein the modular display panel is configured to be
exposed to an external environment without a protective
waterproof enclosure.
Ex. 1002, 32:6–35 (emphases added).
Independent claim 13 differs from claim 1 where claim 13 does not
recite that the circuit for controlling the plurality of LEDs, “is attached to the
printed circuit board,” as called for in claim 1. Id. at 33:47. Compared to
claim 1, independent claim 22 further requires “the power supply mounted
over the outer surface of the modular display panel,” and that the power
supply is “an alternating current/direct current (AC/DC) converter.” Id. at
34:61–65. Independent claim 22 also recites “wherein the modular display
panel is configured to be cooled passively without fans.” Id. at 35:8–9.
G. Level of Ordinary Skill in the Art
Based on Mr. Flasck’s testimony, Petitioner asserts:
A POSITA in the field of the ’294 patent at the time of the
earliest possible priority date would have had at least an
undergraduate degree in mechanical engineering, electrical
engineering, or physics and, in addition, at least two years
of experience in the design and/or implementation of LED
panels.

Pet. 11 (citing Ex. 1005 ¶¶ 39–42).
Patent Owner does not set forth an ordinary artisan’s skill level.
See generally PO Resp. Rather, Mr. Credelle, Patent Owner’s expert, states
that he “do[es] not disagree with Mr. Flasck’s proposed level of ordinary
skill in the art.” Ex. 2002 ¶ 29.
In our Institution Decision, we preliminarily adopted Petitioner’s
explanation and assessment of the ordinary skill level, determining the
position was consistent with the ’294 patent and the asserted prior art. Inst.
Dec. 12–13. As neither party challenges our preliminary finding regarding
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Patent 9,978,294 B1
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the level of ordinary skill in the art, we see no reason to disturb this finding.
Accordingly, we reaffirm that one of ordinary skill in the art at the time of
the invention would have: (i) a bachelor’s degree in mechanical engineering,
electrical engineering, or physics, or undergraduate training in an equivalent
field, and (ii) at least two years of experience in the design and/or
implementation of LED panels. Additional graduate education could
substitute for professional experience, and significant work experience could
substitute for formal education. See id. at 12 (setting forth and adopting
Petitioner’s unopposed position as to the level of ordinary skill in the art)
(citing Ex. 1005 ¶¶ 43–49).
II. CLAIM CONSTRUCTION
In this inter partes review, claims are construed using the same claim
construction standard that would be used to construe the claims in a civil
action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2019). The
claim construction standard includes construing claims in accordance with
the ordinary and customary meaning of such claims as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.
See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
The parties are seemingly at odds over two terms, “modular display
panel” and “waterproof.” Compare PO Resp. 18–29, with Reply 2–10.
Petitioner proposes broadly that we “interpret each claim term according to
its plain meaning.” Pet. 12. Patent Owner argues that “modular display
panel” should be in accordance with the District Court’s construction so as
to not include a cabinet. PO Resp. 18 (citing Ex. 1019, 18). Patent Owner
proposes that the term “waterproof” be construed to mean “preventing water
from entering the interior of the panel when exposed to weather.” Id. at 27
(citing Ex. 2002 ¶ 64).
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A. “Modular Display Panel”
Patent Owner argues specifically that “modular display panel” should
be construed so as to not include a cabinet. PO Resp. 18. Patent Owner
points out that “[t]he District Court construed the term ‘modular display
panel’ to mean ‘interchangeable display panel for a multi-panel modular
display configured for use without a cabinet.’” Id. (citing Ex. 1019, 18).
And, that “[t]he District Court further construed ‘cabinet’ to mean ‘enclosure
separate from the LED panel(s) to protect the LED panel(s) from the
environment, including water.’” Id. at 18 (citing Ex. 1021). Patent Owner
further contends that Petitioner has agreed to this construction in the District
Court proceeding. Id. at 18 n.1 (citing Exs. 2007, 2008).
Petitioner does not dispute this construction. During oral hearing
Petitioner’s Counsel stated “I think that the parties agree that the display
module of the challenged claims do not employ a cabinet.” Tr. 13:33–23.
Based on the parties’ apparent agreement, and considering the record before
us and the District Court’s Claim Construction Memorandum (Ex. 1019), we
see no reason not to apply the District Court’s claim construction. See 37
CFR § 42.100(b) (Providing that any claim construction determination in a
related civil action must be considered by the Board.). Accordingly,
“modular display panel” means “interchangeable display panel for a multi-
panel modular display configured for use without a cabinet.” Ex. 1019, 18.
B. “Waterproof”
In our Institution Decision we determined, and reaffirm here, that
Petitioner complies with the applicable provisions of our rules, specifically
37 C.F.R. § 42.104(b)(3)–(4), by sufficiently identifying the claim
construction it proposes as the basis for requesting review of the challenged
claims. Inst. Dec. 14–15 (citing Western Digital Corp. v. Spex Techs, Inc.,
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Patent 9,978,294 B1
14
IPR2018-00084, Paper 14 at 10–12 (PTAB April 25, 2018) (distinguishing
Toyota Motor Corp. v. Blitzsafe Texas LLC, IPR2016-00422, Paper 12
(PTAB July 6, 2016)). We also determined that both Petitioner’s and Patent
Owner’s asserted claim constructions from the district court proceedings are
generally consistent with the Specification of the ’294 patent—that is, the
meaning of “waterproof” includes “preventing water from entering (the
panel),” and “preventing water from entering the interior of the panel when
exposed to weather.” Inst. Dec. 16 (citing Ex. 1006, 7, 36). In our
Institution Decision, we did not find the conjunctive phrase “when exposed
to weather,” in Patent Owner’s construction, afforded a significantly
different meaning, and we explained that the parties are free to address the
construction during trial. Id. at 17. Having reviewed the parties’ arguments
and the additional evidence now before us, as well as the Specification of the
’294 patent, we resolve the conflict in favor of Petitioner’s construction.
Patent Owner argues there is a difference between the parties’
interpretations, and Patent Owner’s construction is more reasonable because
its “construction would allow water to enter the interior of the panel under
conditions beyond weather, while [Petitioner’s] would not allow water to
enter the panel under any conditions.” PO Resp. 22–23 (citing Ex. 2002
¶ 60). Patent Owner’s declarant, Mr. Credelle, testifies that Petitioner’s
“proposed construction for ‘waterproof’ requires absolute protection against
water, regardless of whether it is exposed to the weather.” Ex. 2002 ¶ 60.
Mr. Credelle explains that different from Petitioner’s construction, “Patent
Owner’s proposed construction [does] not require waterproofing under
conditions such as submersion in water.” Id. ¶ 59.
Petitioner’s declarant, Mr. Flasck, testified in his deposition that the
plain meaning of “waterproof” means “unaffected by water,” and further
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explains that “a POSITA would understand the term to mean unaffected by
normal weather conditions. That is, snow, rain, [and] fog.” Ex. 2010, 31:24–
25, 33:10–13.7 Mr. Flask opined that “I don’t believe that a POSITA would
think that [] a device has to be submersible or immersible completely in
water to be waterproof.” Id. at 34:23–35:2. When questioned about IP
ratings, Mr. Flask testified that a “[sixty] four would be considered
somewhat waterproof or water resistant . . . a 65, 66 and above would –
would qualify in a POSITA’s mind as being waterproof.” Id. at 36:23–37:5.
From Phillips we know that the specification “is always highly
relevant to the claim construction analysis” and “is the single best guide to
the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citation
omitted). The ’294 patent Specification reveals that the electronic display
panels are intended to be used in interior and also exterior weather
dependent environments, and without a cabinet. See Ex. 1001, 5:36–43, 58–
60 (The detailed description explaining that “[t]hese displays are designed to
protect against weather, without a heavy cabinet,” and that, “weather is the
number one culprit for damage to LED displays.”). The ’294 patent further
describes LED panels where “the display is IP 67 rated and therefore
waterproof and corrosion resistant, . . . in other embodiments, equipment can
be designed with an IP 68 rating to operate completely underwater.” Id at
5:48–55. The ’294 patent describes further that, “where weatherproofing is
not as significant, the panels can have an IP 65 or IP 66 rating.” Id. at 5:56–
57.

7 Exhibit 2010 replaces Exhibit 2004 which was a “rough draft transcript”
that was uncertified. Ex. 2004, 1:9. During the hearing, the panel requested
a certified transcript of the deposition record. See Tr. 5:22–6:16. We refer
to the certified transcript, Ex. 2010, in this opinion. See Ex. 2010, 161.
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Simply put, the Specification explains that there is a range of
waterproofing where the higher the IP rating the more waterproof the device
becomes. Id. at 5:48–57. Thus, the term “waterproof,” on its face, can
cover a range of environmental conditions and IP ratings including “normal
weather,” such as snow, rain, and fog as Mr. Flask confirmed during his
deposition. Ex. 2010, 31:24–25, 33:10–13. In his Declaration, Mr. Flask
also testifies that there are a range of waterproof enclosures, “IP 65 indicates
a dust tight enclosure that is waterproof against jets of water[,] and IP 68
indicates a dust tight enclosure that is waterproof against continuous
immersion in water.” Ex. 1005 ¶ 58 (citing Ex. 1016, 3). Considered as a
whole, Mr. Flask’s testimony is consistent with the ’294 patent
Specification—namely that a “waterproof” display can include protection
from normal weather conditions as well as when “operat[ing] completely
underwater.” Ex. 1001, 5:55.
We understand from both declarant’s testimony that “waterproof”
should encompass normal weather events, however, Patent Owner’s claim
construction and the limiting phrase “when exposed to weather,” improperly
reads out of the term “waterproof,” the higher IP ratings and environmental
conditions such as submersion in water. Patent Owner’s Declarant, Mr.
Credelle, provides similar testimony that is in contradistinction from the
’294 patent, testimony that effectively reads out water submersion
embodiments from the meaning of “waterproof.” See Ex. 2002 ¶ 59 (Mr.
Credelle stating that “Patent Owner’s proposed construction [does] not
require waterproofing under conditions such as submersion in water.”).
Further, Patent Owner’s argument misconstrues Petitioner’s claim
construction as “preventing [all] water from entering (the panel).” See PO
Resp. 23 (Patent Owner arguing that Petitioner’s “proposed construction for
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‘waterproof’ requires absolute protection against water, regardless of
whether it is exposed to the weather.”). Neither Petitioner, nor Mr. Flasck,
argue that Petitioner’s proposed construction of “waterproof” requires the
display be submersible, only that a person of ordinary skill in the art would
understand that “waterproof” includes a range of waterproof levels. See,
e.g., Ex. 1005 ¶ 58 (Mr. Flasck testifying that “IP 65 indicates a dust-tight
enclosure that is waterproof against jets of water; and IP 68 indicates a dust-
tight enclosure that is waterproof against continuous immersion in water.”).
It is not disputed that the meaning of “waterproof” includes, “when
exposed to weather” but according to the ’294 patent, “waterproof” can
encompass conditions different from normal weather, e.g., submersion in
water. See Ex. 1001, 5:57–59. See also Phillips, 415 F.3d at 1323 (citations
omitted) (explaining that “although the specification often describes very
specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments”). Indeed, if the applicant of the
’294 patent had intended to constrain the term “waterproof,” it surely
understood how to do this where, for example in related US Patent No.
9,990,869 B1 (“the ’869 patent”), dependent claims 5, 6, and 7 further limit
“waterproof” of the modular display panel to specific IP ratings. See, e.g.,
Ex. 3001, 32:16–17 (Claim 5 reciting “[t]he panel of claim 3, wherein the
panel comprises an ingress protection (IP) rating of IP 65.”).8
Accordingly, we determine that a person of ordinary skill in the art
would understand that “waterproof” and “sealed to be waterproof” mean

8 The ’869 and ’294 patents are related as continuations of Application
No. 15/369,304, filed on Dec. 5, 2016, now Pat. No. 9,916,782. Ex. 1001,
Code (63). We have entered the ’869 patent in this proceeding as
Exhibit 300.
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“preventing water from entering the interior of the panel.” We acknowledge
that our claim construction for “waterproof” differs from the District Court’s
construction. See Ex. 1019, 23 (The District Court determining
“waterproof” to mean “ingress protection (IP) rating of IP 65 or higher”)
(emphasis omitted). Yet, neither Petitioner nor Patent Owner argued that we
should apply the District Court’s Construction in this proceeding. Here, we
have applied Phillips in construing the phrase “waterproof” and thus the
same claim construction standard used in a civil action. In doing so we have
considered, and given the District Court’s claim construction appropriate
weight. Based on the parties proposed constructions and arguments in this
proceeding, as well as the written description of the ’869 patent that does not
limit the term “waterproof” to a specific IP range, we come, respectfully, to
a different construction. See Patent Trial and Appeal Board Consolidated
Trial Practice Guide (CTPG), November 2019, pp. 46–47 (quoting 37 C.F.R.
§ 42.100(b)).
III. DISCUSSION
A. Legal Principles of Anticipation
To anticipate a patent claim under 35 U.S.C. § 102, “a single prior art
reference must expressly or inherently disclose each claim limitation.”
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (citation omitted); In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349–50 (Fed. Cir. 2002).
B. Legal Principles of Obviousness
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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differences between the claimed subject matter 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of 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) when in evidence, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378
(discussing the burden of proof in inter partes review).
C. Anticipation of Claims 1, 2, 9, 13, and 20 over Guoshi (Ground 1)
On the complete record now before us, Petitioner has established by a
preponderance of the evidence that claims 1, 2, 9, 13, and 20 are anticipated
for the reasons explained below.
1. Guoshi (Ex. 1008)
Guoshi is a Chinese patent publication (Ex. 1007), and we rely on the
certified translation of Guoshi (Ex. 1008) provided by Petitioner. Pet. 13.
Like the ’869 patent, Guoshi is directed to LED displays “composed of
multiple LED display modules connected together.” Ex. 1008 ¶ 5. Figure 4
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from Guoshi, depicting an exploded view of LED display module 1, is
reproduced below.

Guoshi’s Figure 4, above, depicts a front exploded view of LED display
module 1 including, inter alia, sealing layer 30, printed circuit board 20,
base 10 having main body 12 and side walls 14, and on the rear of main
body 12 are waterproof covers 50. Id. ¶¶ 27, 33.
A partial cross-sectional view of display module 1, as annotated by
the Board, from Guoshi’s Figure 3 is shown below.
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Guoshi’s annotated and partial cross-sectional view of Figure 3, above,
illustrates printed circuit board 20 and LED’s 21 highlighted in yellow, and
base 10 having sidewalls 14 and brims (louvers) 18 between adjacent rows
of LED’s. Id. ¶ 31.
Guoshi’s Figure 5 is reproduced below.
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Guoshi’s Figure 5, above, depicts a rear exploded view of an LED display
module including, inter alia, power module 22 and cooling elements 24 on
the back side of printed circuit board 20, and a recess or hole 120 formed in
base 10 for receiving power module 22, and intended to be covered by
waterproof covers 50. Id. ¶¶ 27, 30.
Guoshi explains that LED’s 21 are powered and controlled by power
module 22 and a control module where “the control module controls the
brightening and dimming of LED lights in the corresponding areas of the
display module to display content such as text, images, and videos; and the
power module converts the input voltage/current into the voltage/current
required by the display.” Id. ¶ 2.
Guoshi teaches that because these type of displays are often used
outdoors, “[t]hey have certain wind resistant, rain resistant, and waterproof
functions. They are mainly used for outdoor advertisements, train/bus
stations, city plazas, and shopping centers.” Ex. 1008 ¶ 4. To protect the
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displays, Guoshi discloses a silicone sealing layer where “sealing layer (30)
. . . achieves the effect of waterproofing by using the sealing layer (30) to
seal the circuit board (20) inside the housing cavity (13), with a
waterproofing level higher than IP65.” Id. ¶ 27. Guoshi also teaches that by
using waterproof covers 50 and sealing strips 40 on the rear of the LED
display module, the display can be sealed “so that the waterproofing level
reaches above IP64.” Id. ¶ 28.
2. Analysis of Claim 1
Considering the elements of claim 1 we address below the respective
arguments of both parties as to claim 1.
a) Petitioner’s Arguments
A modular display panel comprising:
Petitioner argues that Guoshi discloses all the limitations of claim 1,
starting with “[a] modular display panel” as recited in the preamble. Pet. 17.
Guoshi, Petitioner argues, describes that “[t]his invention belongs to the
technical field of displays, in particular LED display modules and LED
displays.” Id. (citing Ex. 1008 ¶ 1).
a first side and a second side opposite to the first side, wherein
the first side of the modular display panel comprises a display
surface of the modular display panel;
Petitioner argues that “each of Guoshi’s LED display modules has a
front (first) side where several LED units form a display surface, and a rear
(second side).” Id. at 18 (citing Ex. 1005 ¶¶ 91–92; Ex. 1008 ¶ 21–22, Figs.
4–5).
attachment points for use in attachment as part of a multi-panel
modular display;
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According to Petitioner, “Guoshi’s modules all include a screw and
hole configuration that directly attaches them to a case (i.e., a frame).” Id. at
20 (citing Ex. 1005 ¶¶ 95–96; Ex. 1008 ¶ 40, Fig. 8).
a plastic casing comprising an outer surface of the modular display
panel, the outer surface being part of the second side of the modular
display panel;
Petitioner argues that “Guoshi describes an LED display module
having a plastic base (a plastic casing) having sidewalls and two surfaces,
where the outer surface of the base forms a part of the rear (second) side of
the LED module.” Id. at 21 (citing Ex. 1005 ¶¶ 99–100; Ex. 1008 ¶¶ 5, 27).
a recess disposed in the plastic casing;
Petitioner argues that Guoshi discloses “a recess” where it describes
“[t]he main body (12) and the side wall (14) form the housing cavity (13) for
housing the circuit board (20).” Id. at 22 (citing Ex. 1008 ¶ 27; Figs. 4 and
5).
a printed circuit board disposed in the recess;
Petitioner argues that Guoshi “describes a circuit board housed in the
cavity of the base of the LED display module.” Id. at 23 (citing Ex. 1005
¶¶ 106–107).
a plurality of LEDs arranged as pixels attached to a front side of the
printed circuit board, wherein the pixels are arranged in a rectangular
array comprising at least fifty pixels;
For the specific LED and pixel limitations, Petitioner argues that
“Guoshi describes and depicts an array of at least 50 LED units attached to
the front side of its circuit board, . . . used for light emitting display.’” Pet.
24 (citing Ex. 1008 ¶ 27; Ex. 1005 ¶¶ 109–110).
a framework of louvers disposed over the front side of the printed
circuit board between rows of the plurality of LEDs;
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Petitioner points out that Guoshi discloses brims 18, i.e, louvers, for
shading the LEDs positioned over the printed circuit board and between the
rows of LEDs. Pet. 25–26 (citing Ex. 1005 ¶¶ 113–114; Ex. 1008 ¶¶ 34, 37,
Figs. 2–6).
a circuit for controlling the plurality of LEDs, the circuit being
attached to the printed circuit board;
Petitioner argues that Guoshi discloses a circuit for controlling the
LEDs, i.e., “a control module,” and as to the location of the control module,
points out that Guoshi specifically describes, “the control module (not
shown) that is above the second surface (29) and that is used to control the
brightening and dimming of LED light emitting units (21).” Id. at 27
(quoting Ex. 1008 ¶ 27) (emphasis omitted). Petitioner’s declarant, Mr.
Flasck, explains that in context of Guoshi’s translation, based on the word
“above,” a person of ordinary skill in the art “would readily understand that
this is Guoshi’s way of saying the control module is attached directly, both
physically and electrically, to the circuit board (20).” Ex. 1005 ¶ 119.
a power supply for powering the plurality of LEDs;
Petitioner asserts that “Guoshi discloses that the LED display modules
contain ‘a power module used for power supply voltage.’” Pet. 28 (citing
Ex. 1005 ¶¶ 122–123; Ex. 1008 ¶ 7).
wherein the front side of the printed circuit board is sealed to be
waterproof and the plastic casing is sealed to be waterproof so
that the modular display panel is sealed to be waterproof; and
Petitioner argues that “Guoshi describes sealing the entire LED
display module to be waterproof . . . sealing the front of its panel at above
IP65 and the rear of its panel above IP64.” Id. at 29 (citing Ex. 1005
¶¶ 125–126) (emphasis omitted).
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wherein the modular display panel is configured to be exposed
to an external environment without a protective waterproof
enclosure.
Petitioner points out that Guoshi teaches use of a silicone sealing layer
30 as opposed to an enclosure, and in this way is “‘suitable for use in
outdoor environments. The LED display modules (1) have good
waterproofing and fast cooling functions, so it can effectively guarantee the
usage performance of the LED display.’” Pet. 31–32 (citing Ex. 1008 ¶ 40,
Fig. 8). Mr. Flasck testifies that “to achieve waterproofing at a level above
IP64, Guoshi uses sealants and not enclosures.” Ex. 1005 ¶ 132. As such,
Guoshi’s LED module (1) (modular display panel) “is configured to be
exposed to an external environment without a protective waterproof
enclosure.” Id.
b) Patent Owner’s Arguments
Patent Owner addresses both the anticipation and obviousness
challenges, essentially together, with a number of arguments in support of its
position that Petitioner allegedly has not proved invalidity of the challenged
claims by a preponderance of the evidence. PO Resp. 15–55.
First, Patent Owner argues that, under the proper claim construction,
“modular display panel” does not include a “cabinet.” Id. at 18–19 (citing
Ex. 2002 ¶ 56; Ex. 1019, 18; Ex. 1021). Therefore, Patent Owner contends,
Guoshi does not disclose a “modular display panel” because Guoshi
discloses a “cabinet.” Id. at 19–20 (citing Ex. 1008 ¶ 5, 40; Ex. 2002 ¶ 57).
Patent Owner argues specifically that Guoshi’s Figure 8 illustrates case 2,
that case 2 is a “cabinet”, and that “the case (2) of Guoshi is described as
‘encasing the LED display modules,’ which means it provides protection to
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the LED panel(s) from the environment, including water.” Id. at 20 (citing
Ex. 1021; Ex. 2002 ¶ 58).
Second, Patent Owner argues that the Petition fails to provide a
meaning for the term “waterproof” and, therefore, Petitioner has not satisfied
the requirements of 37 C.F.R. § 42.104(b)(3) and set forth “[h]ow the
challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3); see PO
Resp. 21–26. In addition, Patent Owner argues that under any of the
proposed constructions, even the plain and ordinary meaning asserted in the
Petition, that Petitioner “ha[s] not explained how the IP 64 rating of Guoshi
meets any claim construction” for the term “waterproof.” Id. at 26
(emphasis omitted).
Third, Patent Owner argues that Guoshi fails to disclose a “plastic
casing comprising an outer surface of the modular display panel, the outer
surface being part of the second side of the modular display panel, as
recited in the challenged claims.” Id. at 29. Patent Owner contends that
reliance on the single disclosure in Guoshi of a “plastic base” is error
because “Guoshi clearly never referred to his base (10) as plastic, and indeed
discussed in the background section how his invention was to overcome the
issues of a prior art display that had a plastic base.” Id. at 31.
Fourth, Patent Owner argues that Guoshi fails to disclose a control
circuit for the LEDs that is “attached to the circuit board” as called for in
claim 1. Id. at 32. Patent Owner argues specifically that Guoshi’s recitation,
and Mr. Flasck’s reliance on, the term “above” is insufficient to teach that
the control module is “physically attached” to the printed circuit board. Id.
at 33.
Fifth, specifically as to obviousness, which is addressed below with
respect to Petitioner’s second and third challenges, Patent Owner argues that
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the combination of Guoshi and Kim is based on improper hindsight and that
“[a] person of ordinary skill in the art would not have attempted and/or
understood to modify the internal power supply of Guoshi with the external
power supply of Kim.” Id. at 45. Patent Owner argues specifically that “a
POSITA would not have been motivated to modify Guoshi in view of Kim
because Kim explicitly teaches away from mounting a power supply to a
plastic casing like Guoshi’s.” Id. (citing Ex. 1010, p. 3, ¶ 11; Ex. 2002 ¶
96).
For purposes of the anticipation challenge in view of Guoshi, we
address the first four main arguments relevant to anticipation of claims 1, 2,
9, 13, and 20.
c) Whether Guoshi’s Case 2 is a Cabinet
Patent Owner argues that Guoshi’s case 2, is a cabinet, and therefore
Guoshi does not disclose a “modular display panel” as claimed. PO Resp.
18–21. We disagree for the following reasons.
There is no dispute that the meaning of “modular display panel” does
not include a cabinet. See Tr. 12:22–23 (Petitioner’s counsel explaining that
“the parties agree that the display module of the challenged claims do not
employ a cabinet.”), see also PO Resp. 18 (Patent Owner arguing that “the
plain meaning of the claimed ‘modular display panels’ prohibits cabinets”).
Therefore, as discussed above in our claim construction, “modular display
panel” means “interchangeable display panel for a multi-panel modular
display configured for use without a cabinet.” See Section II.A.
There is, however, a dispute as to whether or not Guoshi discloses a
modular display panel in a cabinet.
Patent Owner argues that considering Figure 8 of Guoshi, “Guoshi’s
panel design is clearly a cabinet modular display that is not within the scope
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of the claimed ‘modular display panel.’” PO Resp. 20 (citing Ex. 2002
¶ 57). Patent Owner provides the following annotated Figure 8, reproduced
below, adding the word and highlighting what it refers to as the “cabinet.”
Id. at 20.

Figure 8 of Guoshi, above, as annotated by Patent Owner to indicate a
cabinet enclosing the modular display. To support its position that Guoshi’s
case 2 is a cabinet, Patent Owner argues that Guoshi describes case 2 as
“encasing the LED display modules.” Id. (citing Ex. 1021; Ex. 2002 ¶ 58).
Petitioner argues to the contrary that, despite Guoshi’s use of the word
“encasing,” “there is no disclosure in Guoshi of the elements required to
enclose LED displays in a cabinet.” Reply 3. Petitioner points out that in
his declaration, Patent Owner’s Declarant, Mr. Credelle, explained “that a
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cabinet has access doors and includes ‘active cooling units (e.g.[,] air
conditioning or fans).’” Id. (citing Ex. 1027, 17:17–18:11; Ex. 2002 ¶ 33).
Petitioner argues that nowhere in Guoshi is it described “that Guoshi’s LED
display module is fully enclosed, has a door, or includes any active cooling
features, like air conditioning units or fans.” Id. at 4 (citing Ex. 1008 ¶¶ 21–
22; Figs. 4–5).
For the reasons that follow, we are persuaded that Guoshi does not
disclose a cabinet encasing the plurality of LED display modules.
Arguably Guoshi describes in its “Technology Background” section
that it was known to protect an LED display and “[a] waterproofing effect
can be achieved simply by sealing it in a case.” Ex. 1008 ¶ 5. However, we
are not persuaded that Guoshi’s background section describing the sealing of
a LED display in a case means that the later description of Guoshi’s case 2 is
a cabinet. Contrary to Patent Owner’s interpretation of Guoshi, the written
description of Guoshi’s novel LED display module focuses on waterproofing
and protecting the LED display module without a case or cabinet. For
example, Guoshi explains in its “Device Details” section that “[t]he purpose
of this device is to provide an LED display module for the purpose of
solving problems with the existing technology such as the smoothness,
waterproofing, and effective heat dissipation of LED display modules.” Id.
¶ 6 (emphasis added). Guoshi describes sealing the LEDs and housing body
on the front of the display module by “pouring sealant that is poured on the
circuit board and that fills the housing cavity.” Id. ¶ 7. Guoshi further
describes that on the back of the display module, “[t]he LED display module
also includes waterproof covers that are situated above the first receiving
holes and sealing strips that are contained inside the receiving grooves and
that are located between the waterproof covers and the main body.” Id. ¶ 9.
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In addition, Guoshi describes that on the back of the display module, “[t]he
LED display module also includes cooling units that run along the second
receiving holes and that are exposed on the base and sealant that is situated
inside the second receiving holes to seal the cooling units.” Id. ¶ 10.
Guoshi’s description of the waterproof display module is substantially
different from what Mr. Credelle clearly explained in his declaration as the
structure of a cabinet. Mr. Credelle describes that a typical cabinet
includes a front side with LEDs, metal sides, and a rear side with
doors. The LEDs and PCB are protected on the front exposed
side with potting material to achieve waterproof capability. The
doors have vents to allow air flow to cool the interior components
and the modular display includes fans. In the photo with the door
opened, the printed circuit boards (PCBs) can be seen within the
cabinet. They are clearly not sealed to be waterproof without the
use of the metal cabinet.
Ex. 2002 ¶ 33 (referencing photos in Mr. Credelle’s Declaration as
Liantronics PH16) (emphasis added). On its face, as discussed above, there
is no description or discussion in Guoshi of a cabinet with doors that actually
encloses the novel display modules. Indeed, Guoshi’s entire description is
focused on waterproofing the printed circuit board and LEDs within housing
cavity 13, with no mention of a cabinet. See Ex. 1008 ¶ 27 (“The LED
display module (1) provided in the implementation example of this device
. . . achieves the effect of waterproofing by using the sealing layer (30) to
seal the circuit board (20) inside the housing cavity (13), with a
waterproofing level higher than IP65.”).
Although Mr. Credelle continued to advocate that the term “encasing”
in Guoshi means a complete enclosure with doors, upon cross-examination
Mr. Credelle stated “I have no knowledge of what the back comprises
because it wasn’t described in Guoshi.” Ex. 1027, 28:15–17. Based on all
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the evidence now before us, and reading Guoshi in context, we determine
that even considering the word “encasing,” Guoshi’s written description
unambiguously teaches waterproofing and cooling of the display module
incorporated in the display module itself, and not as Patent Owner alleges
that the display modules are protected inside a waterproof cabinet structure.
Ex. 1008 ¶¶ 6–12.
Accordingly, we determine that Guoshi does not disclose a cabinet,
but simply case 2, as shown in Figures 1A, and 8, and that Guoshi therefore
discloses “a modular display panel” within the claim construction agreed
upon by the parties. See Section II.A. (The parties agreeing that “modular
display panel” means “interchangeable display panel for a multi-panel
modular display configured for use without a cabinet.”
d) Whether Petitioner has Shown that Guoshi
Discloses the Modular Display Panel is Sealed to be
Waterproof
We determined in our claim construction that “waterproof” and
“sealed to be waterproof” mean “preventing water from entering the interior
of the panel.” Section II.B.
Patent Owner argues that Petitioner “ha[s] not explained how the IP
64 rating of Guoshi meets any claim construction.” PO Resp. 26
(emphasis in original). Patent Owner further argues that Mr. Flasck’s
testimony is unreliable because during his deposition, Mr. Flasck “stated that
there is no intermediate level between IP 64 and IP 65. Mr. Flasck is
incorrect, as there are intermediate levels of IP protection between IP64 and
IP65.” Id. at 27 (citing Ex. 2002 ¶ 66; Ex. 2004, 74:18–75:3). For several
reasons we disagree with the premise of both these arguments.
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In its Petition, Petitioner relied upon the express disclosure of Guoshi,
as well as testimony from Mr. Flasck, that the front of Guoshi’s LED display
module has “‘a waterproofing level higher than IP65’” and, for the back of
Guoshi’s LED display module, the “‘waterproofing level reaches above
IP64.’” Pet. 29–30 (citing Ex. 1008 ¶¶ 27, 30; Ex. 1005 ¶¶ 126–128). As
discussed in our claim construction, the term “waterproof” encompasses a
range of IP values. In this proceeding, the correct claim construction is not
limited to any particular IP value or range of values. And, regardless of
whether there are IP values between IP64 and IP65 as Patent Owner
contends, the Petition described and cited the express disclosure of Guoshi
that teaches waterproofing a modular display. See, e.g., Pet. 30 (“Guoshi
uses waterproof covers and specialized sealing means to ‘it effectively
guarantees the waterproof performance of the LED display module (1) so
that the waterproofing level reaches above IP64.’”) (citing Ex. 1008 ¶ 30,
Fig. 5; Ex. 1005 ¶ 128). Indeed, even under Patent Owner’s proposed
construction for “waterproofing,” that is “preventing water from entering the
interior of the panel when exposed to weather,” (which also does not include
an IP value or range of IP values) we would still find that Petitioner has
sufficiently explained where, and how, Guoshi teaches various levels of
waterproofing for LED display modules.
Finally, even if Mr. Flasck was unaware of the IP64K intermediate
level between IPR 64 and IP65 and DIN 40050 part 9, we do not find that
this argument impugns his testimony. See Ex. 2006 (Hella Marine
referencing DIN40050 (Ex. 1030)). Mr. Flasck’s testimony is consistent that
“Guoshi teaches sealing the front of its panel at above IP65 and the rear of
its panel above IP64.” Ex. 1005 ¶ 126. Considering the complete record
now before us, we find Petitioner’s evidence and arguments persuasive that
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Guoshi teaches an LED display module that is sealed to be waterproof by
“preventing water from entering the interior of the panel.”
e) Whether Guoshi Discloses a “Plastic Casing
Comprising an Outer Surface of the Modular Display
Panel, the Outer Surface Being Part of the Second Side
of the Modular Display Panel”
Patent Owner argues that Guoshi fails to disclose the limitations of a
“plastic casing comprising an outer surface of the modular display panel, the
outer surface being part of the second side of the modular display panel,” as
recited in claim 1. PO Resp. 29–32. Patent Owner argues that Guoshi only
mentions the word “plastic” one time, and that Petitioner’s expert, Mr.
Flasck, agrees there is only one mention of “plastic” in Guoshi. Id. at 30
(citing Ex. 2004 at 53:3–11). Patent Owner argues specifically that,
“Guoshi’s use of the term ‘plastic base’ in the technology background
section but not in the remainder of the publication is strong evidence that
Guoshi knew of a plastic base, but intentionally did not design his own
invention with a plastic base. Id. at 31 (citing Ex. 2002 ¶ 74).
Besides pointing out in its Petition that Guoshi expressly states that a
plastic base was known and conventional in the prior art, Petitioner argues
that the point of novelty in Guoshi was not directed to an improved base.
Pet. 21 (citing Ex. 1005 ¶¶ 99–100); Reply 14. Petitioner contends that the
absence of disclosure relating to different or improved materials for a base in
Guoshi would have indicated to a person of ordinary skill in the art “that the
base 10 disclosed in Guoshi could be a conventional plastic base.” Reply 14
(citing Ex. 1008 ¶ 27).
We find Petitioner’s evidence and arguments on this issue the most
persuasive. First, Guoshi expressly states that “[a]n LED display module
generally includes a plastic base, a circuit board, and LED lights set up on
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the circuit board.” Ex. 1008 ¶ 5. From this evidence it is reasonable to
understand that a person of ordinary skill in the art understood that plastic
bases would have been used to support a circuit board and LED lights as a
display module. See Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368, 1379 (Fed. Cir. 2001) (explaining that “anticipation does not
require actual performance of suggestions in a disclosure,” instead
“anticipation only requires that those suggestions be enabling to one of skill
in the art”). Mr. Flasck also provides unrebutted testimony that “[p]rior to
2013, the use of plastic bases in assembly of LED display panels was well-
known.” Ex. 1005 ¶ 100; see also Ex. 2010, 56:9–58:16 (Mr. Flasck
testifying during his deposition that, based on his experience, the use of a
plastic base was well known in the art.).
Second, Guoshi clearly describes an embodiment having base 10
including sidewalls 14 and main body 12 (rear surface), defining cavity 13
(front surface) for housing the circuit board. Ex. 1008 ¶ 27. Acknowledging
that base 10 itself is not described explicitly in the Specific Implementation
section of Guoshi as, “plastic,” it is not, however, a challenge for a person of
ordinary skill in the art to have understood and recognized that Guoshi
disclosed its base 10 was made of plastic. Notably, Guoshi’s written
description does not reveal any other material for a base, and thus, plastic is
essentially the only material that Guoshi reveals. Id. ¶ 5. Indeed, as
Petitioner points out, Kim similarly describes a plastic base or frame 121 for
supporting circuit board 123. See Ex. 1010, 3 (Kim describing that “the
conventional LED module 120 is constituted of a plastic frame 121, and a
circuit board 123 attached to the front surface of the frame 121”).
Thirdly, we do not find compelling Patent Owner’s expert testimony
from Mr. Credelle disputing that Guoshi’s “plastic base” disclosure does not
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disclose to a person of ordinary skill in the art the nature of Guoshi’s plastic
base 10. PO Resp. 31–32 (citing Ex. 2002 ¶ 75). Mr. Credelle testifies that
“Guoshi does not make clear that the ‘plastic base’ of the prior art display
module is even the same component as the base 10 of the disclosed
invention.” Ex. 2002 ¶ 74. And, for example, Mr. Credelle also testifies
that “I note that Guoshi does not state that the prior art plastic base is an
external casing.” Id. ¶ 75. These statements by Mr. Credelle, as written,
may be nominally true. This testimony, however, fails to recognize that
Guoshi expressly described a base made of plastic and no other material.
Anticipation is determined when the limitation is found “either expressly
described or under principles of inherency, in a single prior art reference, or
that the claimed invention was previously known or embodied in a single
prior art device or practice.” Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 771 (Fed. Cir. 1983), overruled on other grounds by SRI Int’l v.
Matsushita Elec. Corp. of Am., 775 F.2d 1107 (Fed. Cir. 1985). Based on
the complete evidence now before us, we give more weight to Mr. Flasck’s
testimony—namely that a person of ordinary skill in the art understood
Guoshi to disclose “Guoshi’s plastic base (10) having the cavity (13) for
housing the circuit board is a plastic casing.” Ex. 1005 ¶ 101.
In light of our determinations that Guoshi discloses a plastic base and,
as discussed previously, does not disclose a cabinet, we also find persuasive
Mr. Flasck’s testimony that Guoshi’s “FIG. 5 [] shows that the base (10)
(plastic casing) has an outer surface that forms a part of the rear (second)
side of the LED module.” Id. We reproduce Guoshi’s Figure 5 below, as
annotated by Mr. Flasck.
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Figure 5 of Guoshi is shown above, including Mr. Flasck’s
annotations indicating the front and rear sides of the LED Module 1, and the
rear side including outer surface of base 10. Mr. Flasck’s testimony is
consistent with Figure 5 showing that, absent a cabinet, it is reasonable to
understand that outer surface of base 10 would be a part of the rear, second
side of the modular display. Also, Mr. Flasck’s analysis of Guoshi’s Figure
5 is consistent with the additional written description of waterproof covers
50 and sealing strips 40 supported on the outer surface of base 10 to protect
power module 22 inside receiving holes 120 from any external
environmental effects. Ex. 1008 ¶ 30. As a whole, the evidence and
testimony of record persuades us that Guoshi discloses not only a “plastic
base,” but also that the plastic base is not enclosed in a cabinet, and includes
“an outer surface of the modular display panel, the outer surface being part
of the second side of the modular display panel.” Ex. 1001, 32:14–16.
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f) Whether Guoshi Fails to Disclose “a Circuit For
Controlling the Plurality of LEDs, the Circuit Being
Attached to the Printed Circuit Board
Patent Owner makes several arguments regarding the structural
position of the control circuit for Guoshi’s LEDs. PO Resp. 32–44. Patent
Owner contends that neither Guoshi’s written description, nor its drawings,
explain where the control circuit is positioned on, i.e., attached to, the
printed circuit board. Id. at 33. Patent Owner argues also that Guoshi’s
description of “the control module (not shown) that is above the second
surface,” (Ex. 1008 ¶ 27) does not mean that the control circuit/module is
physically attached to the printed circuit board. Id. at 34 (citing Ex. 2002
¶ 81) (emphasis added).
Contrary to Patent Owner’s argument, the written description of
Guoshi fairly explains that the LEDs are attached on one side, and the power
and control modules are attached on the other, i.e. first and second, sides of
the printed circuit board. Ex. 1008 ¶ 27. Guoshi states that “[t]he LED light
emitting units (21) and the power module (22) are separately situated on the
two opposite surfaces of the circuit board (20).” Id. Guoshi describes
further that “[t]he LED light emitting units (21) are situated on the first
surface (28), and the power module (22) and control module are both
situated above this second surface (29) and fit with the main body (12).”
Reading this description as a whole, we find Guoshi’s description
straightforward. Given a plain and ordinary reading of this description we
understand that Guoshi’s LEDs are “attached to a first side of the printed
circuit board,” and on the opposite side that the power and control module
are also “attached to the printed circuit board,” and within “a recess” of the
casing as recited in claim 1. Also, there is no dispute that Guoshi teaches the
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power module 22 and control module are located together. See PO Resp. 34
(Patent Owner stating that “the power module and control module are
situated together in the same location.”). The dispute is mainly about where
these components are located.
We appreciate that Guoshi’s description states that the LEDs and
power and control modules are “situated on,” and in some cases, “above,”
rather than “attached,” but we are not apprised by a persuasive argument or
evidence that these terms mean that such components would not have been
understood by a person of ordinary skill in the art as attached to the circuit
board.
Considering Guoshi’s written description in more detail, Guoshi
describes in the following paragraph that all the elements, LEDs, power
module, and control module, are “above” the respective first and second
sides of the printed circuit board:
[t]he LED light emitting units (21) are situated at intervals above
the circuit board (20) and protrude from the sealing layer (30).
The circuit board (20) includes the first surface (28) that is
relative to the sealing layer (30), the second surface (29) that is
relative to the first surface (28), and the control module (not
shown) that is above the second surface (29) and that is used to
control the brightening and dimming of LED light emitting units
(21). The LED light emitting units (21) are situated on the first
surface (28), and the power module (22) and control module are
both situated above this second surface (29) and fit within the
main body (12).
Ex. 1008 ¶ 27 (emphasis added). Patent Owner argues that Guoshi’s use of
the word “above” does not inform one of ordinary skill in the art that the
power and control module are mounted on, or “attached” to, the printed
circuit board as claimed. PO Resp. 33–34. We do not find Patent Owner’s
interpretation of the specification persuasive because consistent with
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Petitioner’s evidence and Mr. Flasck’s testimony, Guoshi’s Figure 5,
reproduced below, shows power module 22 mounted on printed circuit board
20.

Guoshi’s Figure 5 above illustrates printed circuit board 20 having power
module 22 mounted on the printed circuit board. Also, Guoshi’s written
description explicitly states that “[t]he circuit board (20) includes the first
surface (28) that is relative to the sealer layer (30), the second surface (29)
that is relative to the first surface (28), and the control module (not shown)
that is above the second surface (29) and that is used to control the
brightening and dimming of LED light emitting units (21).” Ex. 1008 ¶ 27.
We are persuaded that a plain reading of this description, and the phrase “the
circuit board includes,” along with the rest of the written description
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sufficiently describes the control module and the power module as “attached
to the circuit board.”
Patent Owner argues further that Guoshi’s Figure 7, reproduced
below, confirms its argument that the power module 22 and control module
are located outside of main body 12, and not on the printed circuit board.

Guoshi’s Figure 7, above, illustrates the back of main body 12 including first
and second receiving holes 120, 124 through which elements of the power
module, i.e., pins, and cooling units 24 extend. Ex. 1008 ¶ 31.
Patent Owner’s argument as to Figure 7 is not persuasive because
considering Figures 5 and 7 together, the receiving pins of power module 22,
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as well as portions of cooling units 24, extend from circuit board 20 through
respective openings in the main body 12. Id. at Figs. 5–7. The pins of
power module 22 extending through the main body 12 is not inconsistent
with the power module 22 and control module being mounted on the printed
circuit board. For example, Guoshi explains with respect to cooling units
24, that “[t]he cooling units (24) are situated on the second surface (29) of
the circuit board (20) and are exposed on the base (10) along the second
receiving holes (124) to achieve the cooling effect.” Id. Similarly, for the
power and control module, we are persuaded by Mr. Flasck, who was asked
about the pins of the power module 22 during his deposition:
Q. And have you ever known any simple pin configuration
to perform any ACDC conversion or other power conversion?
[]
A. Well, as I state in Paragraph 171, in my opinion a
POSITA would recognize that the power module—power
modules 22 would not be just pins and would include additional
power supply circuitry in the base and out of the base of the pins
which are shown in Figure 7 which simply provide an electrical
connection between the power supply circuitry and the circuitry
on the PCB board.
Ex. 2010, 72:24–73:12. When questioned about the specific location of the
power and control modules during his deposition, Mr. Flasck testified,
consistently, that
the power supply and the control circuit are both situated above
and [Guoshi] means on or attached to, the second surface 29. We
can see 22 in Figure 5, which is the power [module] and that’s
connected to the backside of the printed circuit board and
[Guoshi]’s saying that although it’s not shown, likewise the
control circuit is attached to the backside of the printed circuit
board. So it’s not shown in Figure five but it’s described in fairly
clear terms in paragraph 27.
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Id. at 67:17–68:3.
The totality of the evidence best supports Petitioner’s position that
Guoshi discloses “a circuit for controlling the plurality of LEDs, the circuit
being attached to the printed circuit board” as called for in claim 1. As
confirmed by Figures 4 and 5, Guoshi explains that “[t]he main body (12)
and the side wall (14) form the housing cavity (13) for housing the circuit
board (20).” Ex. 1008 ¶ 27. Thus, the circuit board 20 with its attached
components including the power module 22 and control module would have
been understood by a person of ordinary skill in the art to be disposed on the
printed circuit board and within housing cavity 13 of main body 12. And we
are persuaded, this could be so, even if pins of power module 22 extend
from the printed circuit board and through main body 12. See Ex. 2010,
73:23–74:5. (Mr. Flasck testifying in his deposition that “the pins that are
shown in Figure 7, which simply provide an electrical connection between
the power supply circuitry and the circuitry on the PCB such as the LED
controller and the LEDs. So the pins themselves are connectors.”).
Patent Owner further argues that “the power module and control
module are both situated on the opposite side of the main body 12 from the
PCB (outside of the casing) and fit within the receiving hole under the
waterproof cover 50.” PO Resp. 38 (citing Ex. 2002 ¶ 86). Tellingly, Patent
Owner fails to cite anything in Guoshi’s description that we find persuasive
for such an arrangement. Id. Mr. Credelle testifies to the same arrangement,
but also fails to explain or provide support from Guoshi’s written description
for such an assertion. Ex. 2002 ¶ 86.
Considering the complete record of evidence and arguments of both
parties with regards to the location of Guoshi’s power and control modules,
we are persuaded that Guoshi fairly discloses an LED control circuit
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attached to the printed circuit board and within the housing cavity 13 of
main body 12, and thus meets the limitations of claim 1 for “a circuit for
controlling the plurality of LEDs, the circuit being attached to the printed
circuit board.” Ex. 1001, 32:26–27.
g) Conclusion as to Anticipation of Claim 1
Having considered all the evidence of record presented by both
parties, we find persuasive Petitioner’s arguments and evidence, including
the testimony of Mr. Flasck, and determine that Petitioner has shown by a
preponderance of the evidence that claim 1 is anticipated by Guoshi.
h) Dependent Claims 2 and 9
Claims 2 and 9 each depend directly from independent claim 1.
Claim 2 requires “a sealing compound disposed over the front side of the
printed circuit board, wherein the front side of the printed circuit board is
sealed to be waterproof.” Petitioner argues that “Guoshi describes pouring a
sealant having silicone, a well-known potting material, over the front side of
the circuit board to seal the front side of the circuit board, causing the LED
module to be waterproof at an IP level above IP 65.” Pet. 32 (citing
Ex. 1005 ¶¶ 134–135; Ex. 1008 ¶ 28).
Claim 9 recites “wherein a surface of each of the plurality of LEDs is
exposed to the external environment.” Petitioner argues that “Guoshi
confirms that the LEDs ‘protrude from the sealing layer (30).’” Pet. 33
(quoting Ex. 1008 ¶ 27). Petitioner asserts that “Guoshi’s FIG. 2 depicts
LED units (21) protruding from the sealing layer (30), where surface of each
LED unit (21) is exposed to the external environment.” Id. (citing Ex. 1005
¶¶ 139–140).
Patent Owner does not specifically address nor refute Petitioner’s
arguments and evidence as to dependent claims 2 and 9, relying instead on
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its arguments and evidence as to independent claim 1. We find Petitioner’s
arguments and evidence as to these dependent claims persuasive and
therefore, in light of our determination as to claim 1, also find that Petitioner
has shown by a preponderance of evidence that these dependent claims are
anticipated by Guoshi.
i) Independent Claim 13 and Dependent Claim 20
Independent claim 13 is similar to independent claim 1, including
most of the same limitations, and further recites “the printed circuit board
comprising a front side and an opposite back side, wherein the recess
surrounds the opposite back side of the printed circuit board.” Petitioner
argues that “[t]he main body (12) surrounds the back side of Guoshi’s circuit
board and the sidewalls (14) wrap around the circumference of the circuit
board—just as this claim element contemplates.” Pet. 34–35 (citing
Ex. 1005 ¶¶ 149–150). Also, Guoshi states explicitly that “[t]he main body
and the side wall form the housing cavity for housing the circuit board.” Ex.
1008 ¶ 7.
Claim 20 depends directly from independent claim 13, and like claim
9, recites “wherein a surface of each of the plurality of LEDs is exposed to
the external environment.” Petitioner argues that “Guoshi confirms that the
LEDs ‘protrude from the sealing layer (30).’” Pet. 33 (quoting Ex. 1008
¶ 27). According to Petitioner, “Guoshi’s FIG. 2 depicts LED units (21)
protruding from the sealing layer (30), where surface of each LED unit (21)
is exposed to the external environment.” Id. (citing Ex. 1005 ¶¶ 139–140).
Patent Owner does not specifically address nor refute Petitioner’s
arguments and evidence as to claims 13 and 20, relying instead on its
arguments and evidence as to the limitations corresponding to independent
claim 1. We find Petitioner’s arguments and evidence as to these claims
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persuasive and therefore, in light of our determination as to claim 1, also
find that Petitioner has shown by a preponderance of evidence that claims 13
and 20 are anticipated by Guoshi.
D. Obviousness of Claims 7, 18, 22–24, and 26–28 over Guoshi,
Kim and Panagotacos (Ground 1)
For the reasons set forth below, we determine that Petitioner has
shown by a preponderance of the evidence that claims 7, 18, 22–24, and 26–
28 would have been obvious in view of Guoshi, Kim, and Panagotacos.
1. Kim (Ex. 1010)
Kim is a Korean patent application publication (Ex. 1009), and we
rely in this Decision on the certified translation of Kim (Ex. 1010) provided
by Petitioner. Pet. 14.
Kim discloses “an ultra-thin type light emitting diode (LED) module
and an ultra-thin display board using the same, wherein the rear portion of
the LED module is sealed with a heat sink made of metal material, each
LED module is equipped with a small power supply.” Ex. 1010, Abstract.
As annotated by the Board, Figure 4c of Kim is reproduced below.
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Annotated Figure 4c, above, is a side view showing the configuration of an
embodiment of Kim’s ultra-thin LED module with heat sink 514 highlighted
by the Board. Ex. 1010, 4.
Kim’s ultra-thin LED module shown in the embodiment of Figures
4a–4c includes the same and similar elements as Guoshi, for instance, a
circuit board 510 and a plurality of uniformly distributed LEDs 511 arranged
within a grid plate 513 mounted on the front surface of the circuit board 510.
Id. Grid plate 513 defines “a plurality of compartments 517 arranged in a
uniform distribution such that the LEDs 511 form a plurality of LED pixels
512.” Id. at 4. On the back side of the LED module, Kim teaches an
aluminum heat sink 514 (shown highlighted in yellow above) where “[a]
power supply 520 for supplying a DC current is equipped on an outer wall of
the heat sink 514.” Id. at 4:40–44. According to Kim, “since a small-
capacity power supply 520 is provided at the rear of each LED module 500,
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the inner space of the case 601 can be reduced in width, thereby reducing the
thickness of the LED electronic signboard.” Id. at 5.
2. Panagotacos (Ex. 1011)
Panagotacos teaches a power supply for LED’s and explains that
“[a]lthough the LEDs may be powered with batteries, employing
commercial or residential alternating current (AC) line voltage is often more
practical, and thus power supplies that convert AC line voltage into a DC
voltage are desirable for powering LEDs.” Ex. 1011, 2. Panagotacos Figure
1, below, depicts one embodiment of a power supply.

Figure 1 of Panagotacos, above, is a diagrammatic representation of a power
supply for converting AC to DC power, showing AC line voltage input 12 to
power supply 10 including surge protector 16, voltage attenuator 18, rectifier
20, low pass filter 22, charge dissipater 24, and “current regulator 26, which
provides a regulated DC current to the LEDs 14.” Id. at 1. In addition,
Panagotacos teaches that “[p]referably, the power supply 10 is enclosed in a
metal cage to isolate switching noise and electro-magnetic interference
(EMI). A metal cage, known in the art as a Faraday cage, shields electronics
external to the power supply 10 from signals generated by the power
supply.” Id. at 9.
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3. Claims 7, 18, 22–24, and 26–28
Considering the elements of claims 7, 18, 22–24, and 26–28 we
address, initially, the respective arguments of both parties.
a) Petitioner’s Arguments
Petitioner points out that claims 7, 18, (which depend from
independent claims 1 and 13 respectively) and 22 require specific power
supply circuitry, specifically an AC/DC convertor. Pet. 37–38.
Independent claim 22 also requires the power supply to be “mounted over
the outer surface of the modular display panel.” Id. Claim 23 depends
directly from claim 22 and further requires “a network of support structures .
. . wherein the printed circuit board is attached to the plastic casing by the
network of support structures.” Dependent claim 24 recites that the modular
display panel is intended to be submerged in water to a depth greater than
one meter.” And, dependent claims 26–28 require an AC/DC converter
(claim 26) that down converts DC voltage (claim 27) and that a surface of
the LEDs are exposed to the environment (claim 28).
Petitioner relies on Kim, combined with Guoshi, for teaching “an
improved power configuration for multi-panel LED displays that includes
completely external power supply circuitry for a Guoshi-type module.” Id.
at 40 (citing Ex. 1005 ¶ 172). And, pointing out that neither Kim nor Guoshi
expressly teaches an AC/DC converter, Petitioner relies on Panagotacos for
“describ[ing] alternating current (AC) line voltage, and not batteries, as a
practical source of power, e.g., due to the large power requirement of display
panels, and discloses a power supply having a rectifier (i.e., an AC-DC
converter).” Id. at 41 (citing Ex. 1005 ¶ 174; Ex. 1011, Abstract, 2:9–11,
3:30–34). Petitioner asserts that Panagotacos also discloses that it was well
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known in the art to use a Faraday cage encasing the power supply. Id. at 42
(citing Ex. 1005 ¶ 176; Ex. 1011, 9:21–23, Fig. 1).
Petitioner argues that it would have been obvious to a person of
ordinary skill in the art to combine Kim and Panagotacos with Guoshi
because Kim and Panagotacos similarly describe LED display modules and
“moving all power supply externally obviates the need for the relatively
large ‘receiving holes (120)’” and also “to reduce LED panel thickness and
weight.” Id. at 42–45 (citing Ex. 1005 ¶¶ 180, 186).
b) Patent Owner’s Arguments
Patent Owner does not specifically respond to Petitioner’s arguments
as to the claims in this second challenge but relies, at least in part, on its
arguments asserting that Petitioner has not met its burden to show that
Guoshi discloses the limitations of the claims discussed with respect to
anticipation. See, e.g., PO Resp. 18 (Patent Owner arguing that “[t]he
Challenged Claims are patentable over the prior art combinations set forth in
Grounds 1 and 2 because Guoshi does not disclose the claimed ‘modular
display panel.’”). Also, as it did for anticipation, Patent Owner argues that
the Petition fails to provide a meaning for the term “waterproof” and,
therefore, Petitioner has not satisfied the requirements of 37 C.F.R.
§ 42.104(b)(3) and set forth “[h]ow the challenged claim is to be construed.”
Id. at 21–25. In addition, Patent Owner argues that under any of the
proposed constructions, even the plain and ordinary meaning asserted in the
Petition, that Petitioner “ha[s] not explained how the IP 64 rating of Guoshi
meets any claim construction” for the term “waterproof.” Id. at 26
(emphasis omitted).
As it does for anticipation, Patent Owner argues that Guoshi fails to
disclose “a plastic casing comprising an outer surface of the modular display
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panel, the outer surface being part of the second side of the modular display
panel.” Id. at 29–32. Patent Owner contends that reliance on the single
disclosure in Guoshi of a “plastic base” is error because “Guoshi refers to
the base of his invention 38 times in the publication and not once does he
state that it is plastic.” Id. at 31.
As discussed above, Patent Owner argues that Guoshi fails to disclose
a control circuit for the LEDs that is “attached to the circuit board” as called
for in claim 1. Id. at 32. Patent Owner argues specifically that Guoshi’s use,
and Mr. Flasck’s reliance on, the term “above” is insufficient to teach that
the control module is “physically attached” to the printed circuit board. Id.
at 33.
With respect specifically to the obviousness challenges, Patent Owner
argues that the combination of Guoshi and Kim is based on improper
hindsight and that “[a] person of ordinary skill in the art would not have
attempted and/or understood to modify the internal power supply of Guoshi
with the external power supply of Kim.” Id. at 45. Patent Owner argues that
“a POSITA would not have been motivated to modify Guoshi in view of
Kim because Kim explicitly teaches away from mounting a power supply to
a plastic casing like Guoshi’s.” Id. (citing Ex. 1010, p. 3, ¶ 11; Ex. 2002
¶ 96).
c) Patent Owner’s Combined Anticipation and
Obviousness arguments
For the same reasons as discussed with respect to anticipation, we find
that Petitioner has met its burden to show that Guoshi’s display panel does
not include a cabinet, and that Guoshi discloses a printed circuit board and
plastic casing that is sealed to be waterproof, as these limitations are recited
in the base independent claims 1, 13, and 22 for dependent claims 7, 18, 23–
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24, and 26–28. Section III.C.2.(d)–(e). We also determine that Petitioner
has shown by a preponderance of the evidence that Guoshi discloses “a
plastic casing” as required by independent claims 1, 13, and 22, and a
control circuit 22 “attached to the [opposite back side of] printed circuit
board” as required by independent claims 1, and 22. Section III.C.2.(f)–(g).
As determined above, we are persuaded that Petitioner has established by a
preponderance of the evidence that claims 1, 2, 9, 13, and 20 are anticipated
by Guoshi. Because anticipation is the epitome of obviousness, a disclosure
that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable
under 35 U.S.C. § 103. See In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494
F.2d 1399, 1402 (CCPA 1974).
Patent Owner does not specifically address or refute Petitioner’s
obviousness evidence and arguments as to the additional limitations
provided in claims 7, 18, 22–24, and 26–28, which Petitioner argues are
disclosed by at least one of Guoshi, Kim, and Panagotacos. We are
persuaded by Petitioner’s arguments and evidence that these additional
limitations recited in claims 7, 18, 22–24, and 26–28 are, in fact, disclosed in
either or both of Kim and Panagotacos. Pet. 37–67.
The only question remaining is whether Petitioner has shown that a
person of ordinary skill in the art would have combined these references to
achieve the claimed invention, thus rendering the challenged claims in this
second ground obvious.
d) Whether Petitioner has Shown Sufficient
Motivation to Combine Guoshi, Kim, and Panagotacos
Patent Owner argues that Petitioner’s combination of Guoshi, Kim
and Panagotacos is the product of improper hindsight and that Petitioner has
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not shown that a person of ordinary skill in the art would have combined
these references to arrive at a “power supply” arranged externally on the
LED display module in the manner as recited in claims 1 and 22. PO Resp.
45. Specifically, Patent Owner argues that a person of ordinary skill in the
art “would not have been motivated to modify Guoshi in view of Kim
because Kim explicitly teaches away from mounting a power supply to a
plastic casing like Guoshi’s.”9 Id. According to Patent Owner, Kim
describes the difficulty with mounting a power supply to a plastic material
stating that “since the frame 121 of the LED module 120 is constituted of a
plastic material, it is difficult to mount the power supply to the LED
module.” Id. at 45–46 (quoting Ex. 1010, 3 ¶ 11).
Petitioner contends that a person of ordinary skill in the art would
have combined Kim’s teaching of an external power supply module, rather
than an internal power supply module because “moving all power supply
externally obviates the need for the relatively large ‘receiving holes (120).’”
Pet. 43 (citing Ex. 1008 ¶ 30, Fig. 5; Ex. 1005 ¶ 180). Petitioner argues that
Kim teaches eliminating larger receiving holes in the base to improve dust
and moisture resistance. Id. at 23 (citing Ex. 1010, p. 3 ¶ 9). Petitioner
argues also that Kim teaches moving the power supply entirely outside of
Guoshi’s base 10, thus allowing the base to be made thinner. Id. at 45
(citing Ex. 1010, 4 ¶¶ 5–6 and 8, Figs. 4a–4c and 5; Ex. 1005 ¶ 187).
Petitioner asserts further, that “in addition to the explicit benefits taught by
Kim, a POSITA would have understood that a power supply system placed

9 We note that Patent Owner’s argument here appears consistent with
Guoshi’s main body 12, i.e., housing 10, being plastic.
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outside of the base would be easier to repair or replace.” Id. at 46 (citing
Ex. 1005 ¶ 189).
We disagree, on the facts in this case, that Kim’s discussion of a prior
art “plastic frame 121” teaches away from the combination of Guoshi and
Kim. It is true that criticizing or discouraging investigation into mounting a
power supply on a plastic structure could entail a teaching away. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed). But when considering a teaching away
argument “the nature of the teaching is highly relevant.” In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994). On the facts before us in this proceeding,
Kim describes and illustrates in Figures 1–3c a conventional LED display
board comprised of multiple display modules 120. Ex. 1010, 3 ¶¶ 2–5. Kim
further describes a large single multi-panel power supply 113 providing
power to all 12 of the LED display modules 120 shown in Figure 2b–c. See
id. at 3 ¶ 4 (Kim describing “a power supply 113 mounted inside the case
[frame] 112 for supplying current to the LED modules 120”). Kim’s Figures
2a–b are reproduced below.
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Figures 2a–b from Guoshi, above, illustrate a prior art LED display board
including multiple display modules 120 powered by single power supply
113.
Kim’s solution includes installing smaller capacity power supplies on
the back of each display module, rather than one larger capacity power
supply 113. Kim explains that “since a small-capacity power supply 520 is
equipped at the rear of each LED module 500, the width of the internal space
of the case 601 can be reduced, and the thickness of the LED electronic
display board can be reduced.” Id. at 5 ¶ 1. Thus, although Kim may teach
away from using a larger capacity single power supply in conjunction with a
plastic material, Kim expressly solves this problem, at least in part, by
teaching the use of a small capacity power supply for each display module.
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Id. Mr. Flasck provides testimony that using smaller capacity power
supplies “alleviates any concern regarding attaching a power supply
according to the Guoshi, Kim, and ordinary skill combination to a plastic
base.” Ex. 1005 ¶ 211. Mr. Flasck testifies further that by using such
compact power supplies, large, heavy heat sinks are not necessary and that
“Panagotacos describes that power supply circuitry can be enclosed in a
Faraday cage that has metallic surfaces that are similar in structure to Kim’s
heat sink 514 and can dissipate heat, as well.” Id. ¶ 216 (citing Ex. 1011,
9:21–23). Considering the teachings of Kim as a whole, we find that the
improvements and teachings of Kim, along with Mr. Flasck’s testimony,
outweigh any teaching away in Kim’s background discussion relating to a
single larger capacity power supply and a plastic frame.
In support of combining Guoshi, Kim, and Panagotacos, Petitioner
argues that a person of ordinary skill in the art would have considered
placing Guoshi’s power supply externally as taught by Kim because
“moving all power supply externally obviates the need for the relatively
large ‘receiving holes (120).’” Pet. 43 (citing Ex. 1008, ¶ 30, Fig. 5;
Ex. 1005 ¶ 180). Kim explains that any opening in “the rear portion of the
LED module” can allow in “dust and moisture introduced from the outside.”
Ex. 1010, 3 ¶ 9. Mr. Flasck testifies also that a person of ordinary skill in
the art “would have been motivated to use Kim’s external power supply
configuration to reduce LED panel thickness and weight.” Ex. 1005 ¶ 186;
see also id. ¶ 188 (Mr. Flasck explaining that by “moving all power supply
circuitry off the PCB, Guoshi’s base could be made thinner because no space
would be needed to accommodate power supply circuitry within the base.”).
Further, Mr. Flasck testifies that with an external power supply “the entire
power supply unit can be easily swapped in and out without having to worry
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about circuitry soldered to the circuit board or having to reseal the receiving
holes.” Id. ¶ 189.
Petitioner admits that Guoshi and Kim do not disclose the details of
the power supply circuitry, for example, “an alternating current/direct
current (AC/DC) converter,” as recited in claim 7. Pet. 47 (citing Ex. 1005
¶ 194). Petitioner asserts that such LED power converters were well known
in the art, and that “the circuitry components that a POSITA would have
desired and known to include in a power supply is described by
Panagotacos.” Id. Mr. Flasck provides essentially unrebutted support for
this position, testifying that “[i]n nearly all commercial and residential
applications, modular LED panels receive power from electrical ports
outputting AC line voltage,” and that a person of ordinary skill in the art
“would have been motivated to include an AC/DC converter as Panagotacos
describes because it accommodates different input voltages regardless of the
types, numbers, and series or parallel arrangements of LEDs.” Ex. 1005
¶¶ 196, 198 (citing Ex. 1011, Abstract, 4:2–5).
Patent Owner makes several other argument relating to motivation to
combine including the assertion that “waterproofing the power module on
the outside of the casing is beyond the level of skill of a person of ordinary
skill in the art.” PO Resp. 49. Mr. Credelle testifies that an “external power
supply would also require connections to a power source and connections to
the display module’s internal circuitry. Neither Guoshi nor Kim discloses
how these connections could be made waterproof.” Ex. 2002 ¶ 100. Mr.
Credelle attests that waterproofing an external power supply was unknown
to those of ordinary skill in the art “as evidenced by the fact the industry
mainly used cabinet-enclosed displays, and displays with external power
supplies commonly failed due to water ingress.” Id.
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Petitioner counters, arguing that it was well known in the art that a
cable can be “passed through small holes that can be easily sealed using
sealing strips or silicone.” Reply 23 (emphasis omitted). Petitioner provides
evidence from two prior art references showing that waterproofing electrical
component through-holes, at least to the IP 65 and 67 rating, was well
known at the time of the filing of the application that became the ’294
patent. Id. (citing Exs. 1026, 1029). Also, Petitioner provides evidence that
a person of ordinary skill in the art would have known that externally
mounted power supplies in waterproof casings were available that used free
air convection cooling. Id. at 24 (citing Ex. 1031, 3, 6). According to
Petitioner’s evidence, based in part on a search of the Internet Archive, the
Meanwell Direct company advertised, well-prior to the filing of the ’294
application, waterproof power supplies for LED lighting, stating that “[t]he
IP ratings of some of these [LED] power supplies lend themselves for use in
other applications where ingress of dust or moisture is a concern with
protection levels making them splashproof & waterproof.” Ex. 1031, 1.
This evidence supports Mr. Flasck’s testimony that, “waterproofing the
display when it is installed outdoors, such as at a sports stadium or in the
Times Square, was also well-known prior to 2013.” Ex. 1005 ¶ 48.
We credit Mr. Flasck’s testimony because it is supported by evidence
that waterproof LED power supplies and through-holes for accepting power
cable into housings, existed and were offered for sale prior to the ’294 patent
that had waterproofing capability at various IP levels. Exs. 1026, 1029,
1031. Indeed, Mr. Credelle’s testimony appears to concede, at some level,
that waterproofing an external power supply was in fact known to those of
ordinary skill in the art, when he explains that “displays with external power
supplies commonly failed due to water ingress.” Ex. 2002 ¶ 100.
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Patent Owner argues further that “Guoshi cannot be modified to use
the configuration in Kim because the power supply would overheat.” Id. at
49 (citing Ex. 2002 ¶ 102). Mr. Credelle testifies that “[m]odifying Guoshi
to move the power supply to the outer surface of the casing removes the
cooling effects the power supply receives from the cooling units.” Ex. 2002
¶ 103. Although the effects of Guoshi’s cooling elements 24 may no longer
be able to cool the power supply within the base, Patent Owner’s argument
does not account for the teachings of Kim and Panagotacos which describe,
more specifically in Panagotacos, an LED power supply that does not need a
large or expansive heat sink. Pet. 50 (citing Ex. 1005 ¶ 202; Ex. 1011, 9:1–
4). Panagotacos states that for its circuit design
the amount of power dissipated thermally by the power supply
10 is less than conventional LED power supplies, providing
numerous advantages over prior art designs. Since a small
amount of energy is transformed into thermal energy and
radiated away from the power supply, most of the energy coupled
into the power supply 10 is efficiently transferred to the LEDs 14
as electrical power.
Ex. 1011, 7:29–33. Besides noting Panagotacos’ teaching of smaller,
thermally efficient power supplies in the Petition, (Pet. 50), Petitioner argues
that a person of ordinary skill in the art “would have been motivated to
mount the power supply on the outer surface of the base to allow for the
power supply to be exposed to the atmosphere and be cooled by the natural
air flow.” Reply 24 (citing Ex. 1031, 3); see also Ex. 1031, 3 (Meanwell
Direct webpage describing various power supply models with “[c]ooling by
free air convection”). And, as Mr. Flasck testifies in his declaration,
“Panagotacos describes that power supply circuitry can be enclosed in a
Faraday cage that has metallic surfaces that are similar in structure to Kim’s
heat sink 514 and can dissipate heat, as well.” Ex. 1005 ¶ 216. We find Mr.
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Flasck’s testimony and Petitioner’s arguments and evidence persuasive that
a person of ordinary skill in the art would have known to provide
appropriately sized power supplies outside the LED case as taught by Kim,
that could be air-cooled and also provided with a Faraday cage, as taught by
Panagotacos, to eliminate electromagnetic effects and facilitate cooling of
the power supply. Id.
Patent Owner also takes issue with Petitioner’s assertion that locating
the power supply on the rear of the LED case facilitates removal and
replacement of the power supply. PO Resp. 52. Patent Owner argues that
accessing or repairing Guoshi’s power supply was easily done because
“removal of the waterproof covers only requires unscrewing six screws,
which gives access to [the] power supply that can be easily swapped out or
repaired.” Id. This argument, however, ignores the fact that Guoshi
discloses power supply 22 mounted on the back side of the circuit board as
we determined previously. See Section III.B.4.f. Although connection pins
of Guoshi’s power supply 22 protrude through receiving hole 120, as shown
in Guoshi’s Figure 7, neither Patent Owner nor Mr. Credelle has explained
persuasively how the entire power supply 22 could be accessed or removed
from the circuit board via receiving hole 120. See Ex. 2002 ¶ 106 (Mr.
Credelle mainly testifying that “the power module of Guoshi is easily
accessed for repairs”). Even if receiving hole 120 was large enough to
access and remove power supply 22 from the Guoshi’s circuit board, this
does not negate that a person of ordinary skill in the art would find a power
supply mounted on the outer exposed side of housing 112 easy to access and
replace.
Finally, Patent Owner argues that Petitioner has not explained how the
power supply would be mounted to the exposed outer side of Guoshi’s
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plastic case. PO Resp. 54. Again relying on Kim and the purported
difficulty of mounting a power supply to a plastic case, Mr. Credelle testifies
that “[a] person of ordinary skill in the art would understand that mounting
the power supply to Guoshi’s plastic base would be problematic and
inadequate.” Ex. 2002 ¶ 110. Petitioner responds arguing that “[t]he use of
screws or nuts to affix an external power supply to a plastic base was widely
known prior to 2013. Kim explicitly discloses an externally mounted power
supply, undermining any allegation that the combination is based solely on
the claimed invention.” Reply 25. Mr. Flasck testifies that by moving the
power supply from the circuit board to a location external to the case, and
“the power supply optionally enclosed within a Faraday cage (as discussed
below) would simply be attached to the back of Guoshi’s base.” Ex. 1005
¶ 219. Neither Mr. Flasck nor Mr. Credelle provide particularly detailed or
persuasive support for their testimony.
What we see in the evidence of record, initially, is Kim’s teaching that
a single large power supply presents attachment problems with a plastic
material. Ex. 1010, 3 ¶ 11. Yet, Kim further describes that as an
improvement, “a small-capacity power supply can be installed for each LED
module, so that the thickness of the case of the LED sector can be reduced.”
Ex. 1010, 3 11. Kim also describes that “[a] power supply 520 for supplying
a DC current is equipped on an outer wall of the heat sink 514; the power
supply 520 may be integrally formed with the heat sink 514 or may be
detachable.” Id. at 4. We acknowledge that Kim does not explain,
specifically, how the small capacity power supply is attached or detachable.
Mr. Flasck testifies that for a person of ordinary skill in the art the
combination of Guoshi, Kim, and Panagotacos, “would have been nothing
more than a simple substitution of one known element (a power supply with
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partially integrated circuitry within a panel base) for another (a power
supply outside the base) to obtain predictable results.” Ex. 1005 ¶ 191
(emphasis in original). Mr. Flasck testifies persuasively that “this
combination would have been the use of a known technique (using a specific
LED power supply with stable current output) to improve a similar device (a
generic power supply disclosed in Kim), where the LED panel would
function in the same way as before.” Id. ¶ 205 (emphasis in original).
We determined that a person of ordinary skill in the art includes a
person with at least an undergraduate degree in mechanical engineering,
electrical engineering, or physics and, in addition, at least two years of
experience in the design and/or implementation of LED panels. See Section
I.G. Based on this level of skill and experience, the teachings in the prior art
and Mr. Flasck’s testimony, we are persuaded that physical attachment of a
power supply to a plastic substrate such as the back of an LED panel case
could have likely been accomplished with known methods and components,
for example screws similar to those discussed in Guoshi for securing the
water proof covering to the case and would have been within the level of
ordinary skill in the art in this case. See, e.g., Ex. 1008, 3 (Guoshi
explaining that “tightening screws are used to firmly install the waterproof
covers (50) and sealing strips (40) on the base (10).”). Considering the
evidence discussed above, and given that “a person of ordinary skill in the
art has good reason to pursue the known options within his or her technical
grasp” we are persuaded that attaching a power supply to the outside of a
plastic case would have been well within the level of ordinary skill in the art.
See KSR, 550 U.S. at 421.
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e) Conclusion as to Obviousness of Claims 7, 18, 22–
24 and 26–28
Having considered all the evidence of record presented by both
parties, we find persuasive Petitioner’s arguments and evidence, including
the testimony of Mr. Flasck, and determine that Petitioner has shown by a
preponderance of the evidence that claims 7, 18, 22–24 and 26–28 would
have been obvious to a person of ordinary skill in the art based on the
combination of Guoshi, Kim and Panagotacos.
E. Obviousness of Claim 30 over Guoshi, Kim, and Nicholson
(Ground 3)
For the reasons set forth below, we determine that Petitioner has
shown by a preponderance of the evidence that claim 30 would have been
obvious in view of Guoshi, Kim, and Nicholson.
1. Nicholson (Ex. 1012)
Nicholson is titled “Enhanced Modular Message Board” and describes
“a modular electronic sign having a plurality of display units assembled on a
mounting track and connected to a sign controller.” Ex. 1012, Abstract.
Sign controller 18 is shown, below, in Figure 2 of Nicholson.
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Figure 2 of Nicholson, above, illustrates sign controller 18 and information
output 236 connected to first and second display units 227, 228. Nicholson
explains that sign controller 18 “compris[es] a memory 232, an information
input 234 and a plurality of information outputs 236 such as serial
communication ports, and a processor 240.” Id. at 5:20–22. In one
embodiment, sign controller 18 communicates in series with each display
unit providing each display unit a certain portion of the information to be
displayed on the sign. Id. at 5:27–32.
2. Claim 30
Claim 30 depends directly from independent claim 22 and recites the
additional limitations of “a receiver card configured to receive external data
and provide the external data to the circuit for controlling the plurality of
LEDs, the receiver card comprising a unique network address.” The ’294
patent explains that “a large multi-panel display modular system 1300 may
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include multiple data receiver boxes 1400 for displaying portions of the
multi-panel modular display system 1300.” Ex. 1001, 28:57–60. The ’294
patent describes that each receiver box 1400 “include[s] a designated IP
address and therefore receives the output of the controller 1800 that is
specifically sent to it.” Id. at 29:1–2.
Petitioner argues that although Guoshi does not describe how the
individual display modules receive and display respective image portions on
different modules in a multi-module display, “Nicolson discloses a multi-
unit display, where each unit[] includes components for receiving and
displaying its respective portion of an image, and techniques for operating
such a display.” Pet. 67 (citing Ex. 1005 ¶ 293). According to Petitioner,
Nicholson teaches “display unit circuitry that includes memory to store
portion of the information to be displayed on the particular display unit, an
addressing portion, a signal receiver portion, and a message output portion.”
Id. at 68 (citing Ex. 1012, 9:49–59, Fig. 6).
Petitioner also argues that a person of ordinary skill in the art “would
have understood that because Nicholson’s technique employs the ‘multi-
drop scheme’ which was a well-known, standardized scheme by 2013, the
components needed to assemble and maintain Nicholson’s circuitry would
have been readily available and been relatively inexpensive.” Id. at 70
(citing Ex. 1005 ¶¶ 300–302). As evidence for such reasoning, Petitioner
asserts that “Guoshi, Kim, and Nicholson all describe multi-module outdoor
LED displays, and also because the improvements to the modules that
Nicholson describes could be implemented readily by adding or replacing a
few, simple, standardized electronic components.” Id. (citing Ex. 1005
¶ 303).
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Patent Owner does not expressly address Petitioner’s challenge to
claim 30 and Nicholson. We are persuaded by Petitioner’s arguments and
evidence that these additional limitations of a “receiver card” and a “unique
network address” recited in claim 30 are taught by the combination of
Guoshi, Kim, and Nicholson. Pet. 67–69. We are also persuaded that
Petitioner has presented articulated reasoning and evidentiary underpinnings
explaining persuasively why a person of ordinary skill in the art would have
been motivated to combine Nicholson’s sign controller 18 and “multi-drop
scheme” including display module addresses, with Guoshi and Kim to meet
the limitations of claim 30. Id. at 69–70.
Having considered all the evidence of record presented by both
parties, we find persuasive Petitioner’s arguments and evidence, including
the testimony of Mr. Flasck, and determine that Petitioner has shown by a
preponderance of the evidence that claim 30 would have been obvious to a
person of ordinary skill in the art based on the combination of Guoshi, Kim,
and Nicholson.
F. Patent Owner’s Motion to Dismiss Exhibits 1025, 1026, 1029,
1030, 1031, and 1032
Patent Owner entered a Motion to Dismiss Petitioner’s Exhibits 1025,
1026, 1029, 1030, 1031, and 1032. Mot. 1. This Decision substantively
references only Exhibits 1026, 1029, and 1031 as Exhibits 1026 and 1029
are translations of the documents filed as Exhibits 1025 and 1032 and our
Decision does not rely on Exhibit 1030. Therefore, Patent Owner’s Motion
to Dismiss Exhibits 1025, 1030, and 1032 is moot. We address Exhibits
1026, 1029, and 1031 below.
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1. Exhibits 1026 and 1029
Exhibit 1026 is a machine translation of Chinese Patent Application
Publication No. CN 102727646 A (Exhibit 1025). Exhibit 1029 is a
machine translation of German Patent Application Publication No. DE 20
2010 005 210 U1 (Exhibit 1032). Patent Owner argues that these machine
translations, relied upon by Petitioner as evidence of known electronic
component sealing and waterproofing techniques, are irrelevant and
prejudicial under Federal Rules of Evidence 402 and 403 because they are
“defective translations” and “incomprehensible,” and not from the field of
LED displays. Mot. 3–4. Patent Owner also argues that these exhibits are
unsupported by expert testimony. Id. at 4.
In its Reply, Petitioner relies on Exhibits 1026 and 1029 and the
respective patent application disclosures as evidence that a person of
ordinary skill in the art understood that passing a power cable from an
externally mounted power supply through a small hole in a housing “can be
easily sealed using sealing strips or silicone. Such configurations were well-
known and commonly practiced in the electronic industry.” Reply 15 (citing
Ex. 1026; Ex 1029). Petitioner also points to Exhibits 1040 and 1042 that
are translator declarations attesting to the accuracy of the translations and
argues that while parts of the translations may be “grammatically incorrect,
[this] does not render the entire document ‘incomprehensible.’” Opp.
Mot. 4. Petitioner offers this evidence in response to Patent Owner’s
argument that mounting an external power supply “would only complicate
the design by requiring new connections and attachments in the base, which
would provide additional entry points for water.” PO Resp. 52 (citing
Ex. 2002 at ¶ 97). This evidence is relevant also, Petitioner argues, because
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Patent Owner asserts that both Mr. Flasck and “Petitioners fail to explain
how the power supply would be made waterproof.” Id.
We do not find these reference translations to be so incomprehensible
as to be irrelevant or prejudicial. To be sure, the grammar and syntax of the
machine translations makes for awkward reading. But the translations
describe sufficient structure and functional characteristics of the electric
cable “sealing device and distribution box” in Exhibit 1026, as well as the
photovoltaic module “electrical junction box” described in Exhibit 1029, so
as to be generally understandable. See, e.g., Ex 1026, Abstract (The
Abstract describing “[a]n electric cable incoming line sealing device
includes a structural main body, a sealing piece sleeved on the electric cable
incoming line in a hooping manner, and a mounting piece used for mounting
the structural main body on a distribution box”).
The references in Exhibits 1026 and 1029 are also relevant in
response to Patent Owner’s charge that a person of ordinary skill in the art
would not have been motivated to mount a power supply on the back of the
display module case, because it would require additional holes and because
“Petitioners fail to explain how the power supply would be made
waterproof.” PO Resp. 52 (citing Ex. 2002 at ¶ 97). Both exhibits pre-date
the priority date of the challenged patent and are directed to electronic
devices which require some level of water ingress protection and discuss in
some detail that electric junction boxes and component through holes were
known to be adequately sealed to certain levels of ingress protection, such as
IP65. See Ex. 1026, 5 (explaining that “the distribution box of sealing
configuration of the present invention is installed can reach more than the
IP65.”); see also Ex. 1029, 2 (reference stating that “[t]he housing is adhered
watertight to the back of the photovoltaic module. The electrical connection
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box complies with the degree of protection IP 65, protection class II, up to
800 (1000) V DC, test voltage 3.5 KV DC, which corresponds to a general
requirement for such junction boxes”). To the extent the references of
Exhibits 1026 and 1029 need expert support, Petitioner’s declarant, Mr.
Flasck, originally provided testimony with the Petition as to the level of skill
in the art, testifying that “waterproofing the display when it is installed
outdoors, such as at a sports stadium or in the Times Square, was also well-
known prior to 2013.” Ex. 1005 ¶ 48. And, responsive to Patent Owner’s
arguments to the contrary, Exhibits 1026 and 1029 simply provide specific
examples and evidence of how this was known to be done, albeit for
different, but similar outdoor and weather-exposed electronic devices and
components. We are not persuaded that these exhibits supporting Petitioner
and Mr. Flasck’s assertions as to the level and knowledge of ordinary skill in
the art are unsupported, prejudicial or unfair, particularly where Patent
Owner has challenged the knowledge, background and the level of ordinary
skill in the art as to waterproofing electrical components. Finally, Exhibits
1026 and 1029 are not submitted or applied as prior art per se, but are
submitted for the limited purpose of showing the background knowledge of
a person of ordinary skill in the art at the time of the invention. See Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013)(The Federal Circuit
determining that “the Board failed to account for critical background
information that could easily explain why an ordinarily skilled artisan would
have been motivated to combine or modify the cited references to arrive at
the claimed inventions”); Ariosa Diagnostics v. Verinata Health, Inc., 805
F.3d 1359, 1365 (Fed. Cir. 2015)(The Federal Circuit explaining that “[a]rt
can legitimately serve to document the knowledge that skilled artisans would
bring to bear in reading the prior art identified as producing obviousness”).
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Therefore, we DENY Patent Owner’s Motion to Exclude Exhibits
1026 and 1029.
2. Exhibit 1031
Patent Owner argues that Exhibit 1031, a document relied upon by
Petitioner as evidence that waterproof LED power supplies were well-known
and commercially available, is irrelevant and prejudicial under FRE 401–
403. Mot. 6. Exhibit 1031 is allegedly a website capture from a company
called, “MeanWell,” by the “Wayback Machine.” Ex. 1031, 1. The
Wayback Machine indicates that the MeanWell website was scraped from
the Internet on January 16, 2012. Ex. 1031, 1. Patent Owner argues that
“[t]here is no evidence in the record (or anywhere) that the Kim reference
used a MeanWell power supply or the type of power supply that is identified
in Exhibit 1031.” Mot. 6. Patent Owner also argues that the document is
irrelevant and prejudicial because Petitioner is using the document to show a
person of ordinary skill in the art would have mounted a power supply
externally, without citation to any support or evidence. Id. at 7.
Petitioner does not assert, however, that Kim actually uses a
MeanWell power supply. Reply 26–27. Petitioner relies on the MeanWell
website to show that a person of ordinary skill in the art “would have known
that externally mounted power supplies, such as Kim’s power supply 520,
were commercially available in waterproof casings.” Id. at 26 (emphasis
added). We do not understand the Reply as arguing that Kim specifically
uses a MeanWell LED power supply, only that commensurate power
supplies such as disclosed by Kim were commercially available and known
to those of ordinary skill in the art. Id. With respect to support for Exhibit
1031, this document was responsive to Patent Owner’s arguments, and, as
discussed above with respect to Exhibits 1026 and 1029, Mr. Flask testified
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that “waterproofing the display when it is installed outdoors, such as at a
sports stadium or in the Times Square, was also well-known prior to 2013.”
Ex. 1005 ¶ 48. The MeanWell website in Exhibit 1031 buttresses this
testimony, offered in response to Patent Owner’s assertion that neither Mr.
Flasck nor Petitioner explained how such waterproofing of the power supply
would have been accomplished. We find Petitioner’s arguments and
evidence, as a whole, offer sufficient support for the assertion that
waterproofing of LED power supplies was known and readily available in
the industry to those of ordinary skill in the art. Finally, the MeanWell
website is not prior art per se, but is submitted for the limited purpose of
showing the background knowledge of a person of ordinary skill in the art at
the time of the invention. See Randall Mfg. 733 F.3d at 1362; Ariosa
Diagnostics, 805 F.3d at 1365.
Finally, Patent Owner “also objects to Exhibit 1031 under FRE 801–
804 as hearsay, arguing that it “is a statement made outside of this
proceeding and relied upon by Petitioners to prove the truth of the matter
asserted in Exhibit 1031.” Mot. 3. Exhibit 1031 is not offered to prove the
truth of the matter asserted in the MeanWell website, e.g., that MeanWell’s
power supply products were waterproof, rather for the fact that the contents,
specifically waterproof LED power supplies, were known and commercially
available to those of ordinary skill in the art. See, e.g., Joy Techs., Inc. v.
Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990), judgment aff’d, 959
F.2d 226 (Fed. Cir. 1992) (“A prior art document submitted as a “printed
publication” . . . is offered simply as evidence of what it describes, not for
proving the truth of the matters addressed in the document. Therefore, it is
not hearsay under Fed.R.Evid. 801(c).”).
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To the extent that Exhibit 1031 could be considered hearsay, it is also
the type of information that falls under FRE 703 as the bases that an expert
would reasonably rely upon to form and substantiate an opinion. We
determine that Exhibit 1031, as it provides details of commercially available
waterproof power supplies for electronic applications, is the type of
information that has probative value in evaluating Mr. Flasck’s testimony.
Thus, whether the exhibit is admissible or not, the information is helpful in
evaluating Mr. Flasck’s testimony as to the level, skill, and knowledge of
those of ordinary skill in the art and substantially outweighs any prejudicial
effect to Patent Owner.
Accordingly, we DENY Patent Owner’s Motion to Exclude Exhibit
1031.
IV. CONCLUSION10
For the foregoing reasons, we determine Petitioner has demonstrated
by a preponderance of the evidence that claims 1, 2, 7, 9, 13, 18, 20, 22–24,
26–28, and 30 of the ’294 patent are unpatentable.
V. ORDER
Accordingly, it is

10 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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ORDERED that claims 1, 2, 7, 9, 13, 18, 20, 22–24, 26–28, and 30 of
U.S. Patent No. 9,978,294 B1 are held unpatentable under 35 U.S.C. § 103
as obvious;
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims
35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 2, 9,
13, 20
102 Guoshi 1, 2, 9, 13, 20
7, 18,
22–24,
26–28
103(a) Guoshi, Kim,
Panagotacos
7, 18, 22–24,
26–28

30 103(a) Guoshi, Kim,
Nicholson
30
Overall
Outcome
1, 2, 7, 9, 13,
18, 20, 22–24,
26–28, 30

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FOR PETITIONER:
Linnea Cipriano
Patrick McCarthy
GOODWIN PROCTER LLP
lcipriano@goodwinlaw.com
pmccarthy@goodwinlaw.com

For PATENT OWNER:
Peter Lambrianakos
Joseph Mercadante
FABRICANT LLP
plambrianakos@fabricantllp.com
jmercadante@fabricantllp.com