PTAB

IPR2019-01117

NEC Display Solutions of America, Inc. v. Ultravision Technoliges, LLC

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1. Case Identification

2. Patent Overview

  • Title: Modular Display Panel
  • Brief Description: The ’782 patent describes a modular LED display panel designed for outdoor use. The invention combines features such as a thermally conductive shell, a printed circuit board (PCB) with LEDs on one side, driver circuitry, a power supply unit, and protective elements like potting material or louvers into a single, environmentally sealed, and waterproof unit.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tokimoto and Kim - Claims 1, 3-6, 9-12, 16, 22-25, and 28 are obvious over Tokimoto in view of Kim.

  • Prior Art Relied Upon: Tokimoto (Japanese Application # P2001-337626A) and Kim (Korean Application # 2002-0069818).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tokimoto discloses a waterproof, panel-type LED module with a plastic casing, a PCB, and protective resin, addressing the core structure of the challenged claims. However, Tokimoto places driver circuits on the same side of the PCB as the LEDs. Kim teaches an ultra-thin, waterproof LED module that explicitly addresses heat dissipation and size reduction by, among other things, locating operating elements on the rear of the PCB and using a rear-mounted power supply and metal heat sink. The combination of Tokimoto's foundational module with Kim's improved component placement and thermal management allegedly renders the key limitations of independent claims 1 and 22 obvious.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine the references because they solve the same problems of creating thin, weatherproof, and modular LED displays. A POSITA would be motivated to incorporate Kim's teachings—such as placing driver circuits on the back of the PCB and using a rear-mounted power supply—into Tokimoto's design to achieve the known benefits of improved heat dissipation, better use of space on the front of the PCB for LEDs, and a thinner overall profile.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as the combination involves integrating known components for their predictable functions without requiring any redesign of the underlying concepts.

Ground 2: Obviousness over Tokimoto, Kim, and Li - Claims 1, 3-6, 9-12, and 16 are obvious over Tokimoto in view of Kim, in further view of Li.

  • Prior Art Relied Upon: Tokimoto (Japanese Application # P2001-337626A), Kim (Korean Application # 2002-0069818), and Li (Chinese Application # CN 102930785 A).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground reinforces the argument for the "driver circuit... on a second side of the printed circuit board" limitation. Petitioner asserted that to the extent the combination of Tokimoto and Kim is found insufficient, Li provides an explicit teaching. Li unambiguously discloses an LED display module where the driver circuit and the LEDs are disposed on opposite sides of the PCB board specifically to improve heat dissipation.
    • Motivation to Combine (for §103 grounds): A POSITA, seeking to enhance the thermal performance of the Tokimoto/Kim design, would look to analogous art like Li. Li provides a clear, advantageous solution for managing heat from driver circuits, a known issue in the field, making its incorporation a logical design choice to improve the overall module.

Ground 3: Obviousness over Tokimoto, Kim, Li, and Bessho - Claims 10 and 11 are obvious over Tokimoto in view of Kim and Li, in further view of Bessho.

  • Prior Art Relied Upon: Tokimoto, Kim, Li, and Bessho (Japanese Application # P2003-92195A).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses the power conversion limitations of claims 10 (AC-to-DC converter) and 11 (DC-to-DC down-converter). While the base combination teaches a DC-powered module, Bessho explicitly teaches an LED display system that uses an AC-to-DC converter to convert commercially available AC power to a higher DC voltage. This voltage is then supplied to individual modules, each equipped with its own DC-to-DC down-converter.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Bessho's power architecture with the Tokimoto/Kim/Li module to gain the known benefits of high-voltage, low-current power distribution. This approach improves efficiency, reduces heat generation across wiring, and simplifies the overall system configuration, representing a well-understood engineering trade-off.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 13 based on the combination of Tokimoto, Kim, and Li in further view of Yang (Chinese Patent # CN 2834111 Y), which teaches disposing the power supply unit in a metal shielding box (a Faraday cage) to alleviate electromagnetic interference.

4. Key Claim Construction Positions

  • Petitioner argued that the challenged claims are obvious regardless of whether the Board adopts its proposed constructions or those proposed by the Patent Owner in a related ITC proceeding.
  • For the term "driver circuit," Petitioner adopted the Patent Owner's proposed construction of "LED driver circuit" for its obviousness analysis, contending the prior art meets this construction.
  • For terms like "shell," "waterproof," and "protective structure," Petitioner noted the parties' proposed constructions from the ITC case and argued that the prior art teaches the claimed features under either interpretation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) was inappropriate, despite a previously filed petition against the ’782 patent (IPR2019-00881).
  • The core reasons asserted were that this petition was filed by a different, unrelated petitioner, relied on a different primary prior art reference (Tokimoto), and presented substantially different arguments. Further, because no institution decision had been issued in the earlier case, Petitioner could not have relied on the Board’s analysis as a "roadmap."

6. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1, 3-6, 9-13, 16, 22-25, and 28 of the ’782 patent as unpatentable.