Post on 03-Jul-2020
UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD ______________
CIRQUE DU SOLEIL MY CALL, L.L.C. Petitioner
v.
HOLOGRAM USA, INC. Patent Owner
______________
Inter Partes Review No. IPR2015-01084
Patent 8,328,361 ______________
PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
IPR No. IPR2015-01084 Patent 8,328,361
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Petitioner’s Exhibit List
Exhibit Description
1001 U.S. Patent No. 8,328,361 (the “’361 Patent”)
1002 U.S. Patent No. 5,865,519 (“Maass”)
1003 U.S. Patent No. 5,685,625 (“Beaver”)
1004 U.K. Patent No. 468,705 (“Stableford”)
1005 U.S. Patent No. 5,900,850 (“Bailey”)
1006 U.S. Patent No. 5,573,325 (“Lekowski”)
1007 Expert Declaration – Marshall Monroe
1008 Excerpts of Prosecution History of the ‘361 Patent
1009 U.S. Patent No. 4,927,238 (“Green”)
1010 U.S. Patent No. 5,585,967 (“Monroe”)
1011 U.S. Patent No. 3,549,803 (“Cletus”)
1012 Mitsuru Hayakawa, ILA/D-ILA Super Projectors for the Present and the Future, Victor Company of Japan, Limited (JVC), 2000.
1013 Jim Steinmeyer, The Science Behind the Ghost (2013)
1014 O. A. Battista, Mylar--The New Synthetic Film, Popular Science, Sept. 1995.
1015 U.S. Patent No. 4,805,895 (“Rogers”)
1016 European Patent Specification Publication EP 0319077B1 (“Piccioni”)
1017 U.S. Patent No. 4,019,656 (“Spears”)
1018 U.S. Patent No. 2,952,182 (“Marks”)
1019 Hawley’s Condensed Chemical Dictionary (14th ed. 2001)
1020 The American Heritage Dictionary Of The English Language (3d ed. 1992)
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I. INTRODUCTION
Cirque du Soleil My Call, L.L.C.. (“Petitioner”) requests inter partes review
of claims 1-20 ( “Challenged Claims”) of US 8,328,361 (Ex. 1001).
II. MANDATORY NOTICES
A. Real Party in Interest (37 C.F.R. § 42.8(b)(1))
For purposes of this Petition only, Petitioner identifies (in addition to
Petitioner itself) the following real parties-in-interest: Cirque Jackson I.P., L.L.C.;
Cirque du Soleil (US), Inc.; Cirque du Soleil Nevada, Inc.; Cirque du Soleil Inc.;
Cirque du Soleil Holding, USA; Groupe Cirque du Soleil Inc.; Créations Méandres
Inc.; The Estate of Michael J. Jackson and the following entities related thereto—
PPB, LLC; Triumph International, Inc.; MJ Publishing Trust d/b/a Mijac Music;
and Mijac Music LLC. This identification is made out of an abundance of caution.
It is Petitioner’s view that only Petitioner has control or the opportunity to control
the instant proceeding or otherwise meets the requirements of 35 U.S.C. § 312(a).
B. Related Matters (37 C.F.R. § 42.8(b)(2))
The following may effect, or be effected by, a decision in this proceeding:
Hologram USA, Inc. et al. v. Pulse Evolution Corporation et al, Civil Action No.
2:14-cv-00772 (D. Nev.); Hologram USA, Inc. et al. v. Cirque du Soleil My Call,
LLC et al, Civil Action No. 2:14-cv-00916 (D. Nev.) (“Litigation”); Hologram
USA, Inc. et al. v. Arena3D Industrial Illusion, LLC et al, Civil Action No. 2:14-
cv-01695 (E.D. La.); Crypton Future Media, Inc. v. Hologram USA, Inc. et al.,
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Civil Action No. 1:14-cv-01247 (D. Del.); IPR2015-00959, directed to claims of
US 7,883,212 (parent of the ’361 Patent); and IPR2015-00962, directed to claims
of US 8,177,368 (divisional of ’212 Patent).
C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
Lead counsel: David Ben-Meir (Reg. No. 46,152)
Back-up counsel: Mark T. Garrett (Reg. No. 44,699)
D. Service Information (37 C.F.R. § 42.8(b)(4))
Email: david.ben-meir@nortonrosefulbright.com
Post: David Ben-Meir, Norton Rose Fulbright US LLP, 555 South Flower
Street, Forty-First Floor, Los Angeles, California 90071, United States
Phone: 213.892.9202 Fax: 213.892.9494
Petitioner consents to electronic service.
III. GROUNDS FOR STANDING
Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’361 Patent is
available for inter partes review, and that Petitioner is not barred or estopped from
requesting an inter partes review challenging the Challenged Claims on the
grounds identified in this Petition. The ’361 Patent has not been subject to a
previous estoppel-based proceeding of the AIA, and Petitioner was served with the
original complaint in the Litigation within the last 12 months.
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IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED
A. Claims for which Review is Requested (37 C.F.R. § 42.104(b)(1))
Review is requested for the Challenged Claims, which are directed to an
apparatus for creating a Pepper’s Ghost illusion, an old phenomena.
B. Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2))
Ground 1: Invalidation of claims 1-4, 7-15 and 18-20 under 35 U.S.C.
§ 103(a) based on Maass (US 5,865,519 – Ex. 1002), Beaver (US 5,685,625 – Ex.
1003), Stableford (U.K. Patent No. 468,705 – Ex. 1004), Bailey (US 5,900,850 –
Ex. 1005) and Spears (US 4,019,656 – Ex. 1017). The issue dates of these
references render them prior art to the ‘361 Patent (which claims priority to a PCT
application filed April 1, 2004) under at least § 102(b).
Ground 2: Invalidation of claims 5, 6, 16 and 17 under § 103(a) based on
Maass (Ex. 1002), Beaver (Ex. 1003), Stableford (Ex. 1004), Bailey (Ex. 1005),
Spears (Ex. 1017) and Marks (US 2,952,182 - Ex. 1018), the issue date for which
renders it prior art under at least § 102(b).
Ground 3: Invalidation of claims 1-4, 7-15 and 18-20 under § 103(a) based
on Lekowski ( US 5,573,325 - Ex. 1006, the issue date for which renders it prior
art under at least § 102(b)), Stableford (Ex. 1004), Bailey (Ex. 1005) and Spears
(Ex. 1017).
Ground 4: Invalidation of claims 5, 6, 16 and 17 under § 103(a) based on
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Lekowski (Ex. 1006), Stableford (Ex. 1004), Bailey (Ex. 1005), Spears (Ex. 1017)
and Marks (Ex. 1018).
As explained in detail below, these grounds are not cumulative of each other
and all are required to fully explain the invalidity of the Challenged Claims.
V. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R. §§ 42.22(a)(2) AND 42.104(b)(4)
A. Background
1. The ‘361 Patent
The ‘361 Patent is directed to an apparatus for presenting what long been
called the “Pepper’s Ghost” illusion, an optical effect in which a theater audience
sees what appears to be a free-standing, three-dimensional hologram of a person or
object on a stage. Ex. 1001 at 1:13-30. The Background acknowledges that one
known arrangement for creating this illusion is “where a presenter resides behind
an inclined, partially reflective screen, typically a tensioned foil, onto which an
image … is projected.” Id. at 1:18-20. The ‘361 Patent purports to improve how
the screen (also called a “foil” in the ‘361 Patent) of the apparatus, which acts as an
optical beam-splitter, is mounted. See id. at 1:31-43 (describing shortcomings).
The screen is a partially reflective sheet that reflects an image to create the
Pepper’s Ghost illusion for the audience. Id. at 1:13-21.
The Background summarizes a “number of problems” with the Pepper’s
Ghost apparatus, including “uneven tensioning of the foil and wrinkles upon the
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foil, that may impair the viewed quality of the image projected onto the foil.” Id.
at 1:32-35. In the Brief Summary of the Invention, the inventors propose “the use
of a frame” that “increases the utility of [the] apparatus over the prior art systems,”
(id. at 2:59-62) and “[t]he use of a variable tensioning arrangement [that] allows
wrinkles upon the screen to be minimised, and ideally eradicated to present a
smooth surface for upon which the image can be projected.” Id. at 3:26-29. As the
prior art discussed below reveals, however, the use of frames and variable
tensioning arrangements had been used in the theater/stage and image projection
arts years prior to the ‘361 Patent’s filing.
The ‘361 Patent describes “an image projection apparatus [that] comprises a
projector … a frame … and a partially transparent screen.” Id. at Abstract.
Annotated FIG. 1 below shows box frame 102 that comprises trusses 104 and
support frame 108. FIG. 1 also shows projector 106 and screen 110 attached to the
box frame 102 with tensioning straps 114.
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The box frame is intended to hold the screen between an the box frame’s
upper truss and the level of the stage. Id. at 6:25-32; FIG. 1. “[T]he front edge of
the screen 108 is proximate the front upper cross-piece truss 104a of the box frame
102.” Id. at 6:20-22. Additionally, “the rear edge of the screen is proximate a
stage 109 that lies to the rear of the box frame 102.” Id. at 6:22-24. This
configuration is also described in a second aspect shown in FIG. 5. Annotated
FIG. 5 below depicts box truss framework 500 comprising square upper truss work
502, leg trusses 504, and cross-piece truss 512.
As shown, “a cross-piece truss 512 is fixed to two of the leg trusses 504 such
that it horizontally spans the gap therebetween at a height close to, and typically
slightly below, the level of a stage floor 514.” Id. at 8:24-27. The upper edge of
film 518 is attached to upper truss work 502 via ratchet straps 538. Id. at 8:45-49.
The lower edge of film 518 is attached to cross-piece truss 512 via ratchet straps
532. Id. at 8:37-44.
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Tensioning straps 114, 532, 538 shown in FIGs. 1 and 5 can be tightened or
loosened individually so an even tension can be applied over the screen’s whole
surface. Id. at 6:42-47. Keeping screen 110 under tension is intended to reduce or
eliminate wrinkles in the screen to increase the quality of the reflected image. Id.
at 3:26-29; 6:42-47; 8:50-56.
Annotated FIG. 4 below details a specific clamping arrangement for the
screen. Clamping jaws 116 are used with bolts 122, openings 118, 120 (not
shown), nuts 124, and tensioning straps 114.
Clamps 116 are attached to the top and bottom edges of screen 110 and hold
screen 110 between clamps 116. Id. at 6:35-41. Bolts 122 pass through openings
118, 120 (not shown) in clamps 116 and screen 110 and thread into nuts 124 on the
other side of the screen. Id. How clamps 116 are attached to a free end of each of
tensioning straps 114 is not disclosed. Id. at 6:29-32; FIG. 4. The opposite ends of
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tensioning straps 114 are attached to trusses 104 and tensioned individually via
friction locking buckle arrangements 128. Id. at 6:35-41.
2. Prosecution History
Of the Challenged Claims, the Examiner rejected claims 1-20 under § 103(a)
as obvious over a combination of Maass (Ex. 1002), Green (Ex. 1009), Beaver (Ex.
1003), Spears (Ex. 0017), and Lekowski (Ex. 1006). Ex. 1008 at 27, 70, 89. In the
Reasons for Allowance, the Examiner noted that the claims reciting “the use of a
tensioning strap and a friction locking buckle arrangement” comprised the
allowable subject matter of the ’361 Patent. Id. at 9.
Independent Claims 1 and 10 are directed to an “image display apparatus,”
and recite an “image source,” “frame,” “light source,” “partially transparent
screen,” “retention members,” an “abrasive coating,” “tensioning straps,” and
“friction locking buckle arrangements.” Ex. 1001 at 9:2-4, 20-37, 65-67; 10:1-2,
18-30. At the time of the initial Office Action, only claims 1-4 were pending in the
application. Ex. 1008 at 89. The Examiner stated that Spears teaches “an abrasive
coating…[that] is sandpaper” that can be used to “improve the grip on the retention
members.” Id. at 91-92. In response, Patent Owner argued that Spears and the
other cited references are in “disparate fields of technology” and that the abrasive
coating of Spears is “not suitable for retaining an item (e.g., foil) under tension.”
Id. at 83-84. Patent Owner also argued that Green teaches away from a
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combination with Spears because Green teaches the “use of apertures in its screen
that align with pegs for securing the screen.” Id. at 84-85.
The Examiner did not find these arguments persuasive. The Examiner
responded that Spears is analogous art with the other references because it is
“reasonably pertinent to the particular problem with which the applicant was
concerned,” which is a “retention aid.” Id. at 75. The Examiner stated that Spears
teaches “jaw members … [that] have roughened surfaces … to frictionally grip”
and that “frictionally gripping” an item is necessarily “retain[ing] it under some
kind of pulling force” and “under tension.” Id. The Examiner also stated that
combining Spears with Green would allow “retention [to occur over] a larger
surface area … of the screen … and would be less likely to tear at any one of the
pegs” of Green. Id. at 76.
In response, Patent Owner added new claims 5 and 7-21, including
independent claim 10. Patent Owner amended independent claim 1 to state that the
film is “polymeric,” and that “faces of the first and second retention members” are
“oriented parallel to [a] common inclined plane” of the foil, flexible tensioning
means, and the frame. Id. at 56-57. Patent Owner argued that the “pivotal nature
of Spears contact faces would result in damage to a polymeric film.” Id. at 62.
The Examiner then added Lekowski to teach a “polymeric film,” maintained
his previous rejections, and dismissed Patent Owner’s arguments as moot. Id. at
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30, 33. Patent Owner then amended independent claims 1 and 10 to include
“tensioning straps and corresponding friction locking buckle arrangements.” Id. at
13. Based on these amendments, the Examiner allowed the application. Id. at 9.
B. Claim Construction (37 C.F.R. § 42.104(b)(3))
Petitioner requests that the claim terms be given their broadest reasonable
interpretation (BRI), as understood by one of ordinary skill in the art and consistent
with the disclosure. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
48764 (Aug. 14, 2012).
1. “foil”
Independent claims 1 and 10 recite a “foil.” Ex. 1001 at 9:30, 10:18. The
‘361 Patent does not explicitly define this term. The specification, however, states
that an “inclined, partially reflective screen [is] typically a tensioned foil” (Ex.
1001 at 1:18-19), and later characterizes it as a “polymeric foil” (id. at 6:25-26).
The claim term should be construed therefore as: a flexible material capable of
acting as a beam-splitter, such as Mylar®. Ex. 1007 at ¶¶ 80, 104, 200.
2. “fixing means”
Claims 3 and 14 recite “fixing means.” Ex. 1001 at 9:42-44; 10:41-43. The
use of “means” gives rise to a rebuttable presumption that this phrase should be
construed under Section 112/6. Both claims 3 and 14 recite that the fixing means
must pass through openings in the screen “so as to clamp the screen between the
first and second retention members” (id. at 9:43-44, 10:42-43), which is the
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claimed function. See Signtech USA, 174 F.3d at 1356. There is no structure in
either claim sufficient to overcome the presumption that Section 112/6 applies.
The only structure disclosed in the specification that could be argued to perform
either claimed function is a bolt. Id. at 5:16-23 (describing a bolt as the fixing
means associated with language similar to the claim 14 function), 6:35-37 (“bolt
122” associated with language similar to the claim 1 function), FIG. 4 (showing
bolt 122), 8:37-44 (“bolts 528” associated with language similar to claim 1
function), and FIG. 5 (showing bolts 528). Accordingly, the structure
corresponding to the functions of the claimed “fixing means” should be construed
as bolts and their equivalents. Ex. 1007 at ¶ 85, 106.
3. “abrasive coating”
Claims 1 and 10 recite “abrasive coating.” Ex. 1001 at 9:25; 10:23. The
term abrasive coating should be construed in accordance with its ordinary meaning
as: a material that is applied to second material, such that the first material is
bonded to the second material, wherein the first material possesses the quality that
it is specifically intended to mar, scratch, roughen, or otherwise remove third
material from the surface of a target or mating object. Ex. 1019 at 2, 277 (14th ed.
2001); Ex. 1020 at 6, 363 (3rd ed. 1992). The specification does not explicitly
define the term, but does describe it as “typically sandpaper,” consistent with the
ordinary meaning of abrasive. The specification also uses coating in the sense of
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an intrinsic bonding of one material with another. Ex. 1001 at 6:25-26. A
POSITA therefore would have understood abrasive coating in the context of the
‘361 Patent in accordance with the above construction. Ex. 1007 at ¶¶ 81-82.
C. Level of Ordinary Skill in the Art
A person of ordinary skill in the art at the relevant time (“POSITA”), which
for the purpose of this proceeding is assumed to be the April 1, 2004 filing date of
the PCT application and is the timeframe discussed herein unless otherwise stated,
would have had 10‒12 years of training and experience in the field of live
entertainment special effects design and engineering, including their construction,
such as in theaters and theme parks. Ex. 1007. at ¶¶ 53-67. Alternatively, a
POSITA would have had a bachelor’s degree in mechanical engineering and 6‒9
years of such experience. Id.
1. Explanation of Skills and Knowledge
A POSITA would have been versed in the technical, aesthetic, production
process, safety, and regulatory concerns involved in the creation and maintenance
of built environments in the theater and entertainment industries. Id. at ¶ 53.
This would have included knowledge of rigging, such as the theatrical fly
system used to suspend and move set material up and down on a stage. Id. at ¶¶
60, 63, 67, 89, 100-107. A POSITA also would have had experience in scrims and
prosceniums, occlusions, stage walls, mullions, selective lighting, and other set
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dressing elements. Id. at ¶¶ 60, 62, 205. A POSITA would have understood stage
lighting and had an understanding of the science of light, with a basic knowledge
of optics, including reflection, refraction, and behaviors of wavelengths,
electromagnetism, and the human visual spectrum. Id. at ¶¶ 61, 67, 89, 90, 150.
A POSITA would have had knowledge from the fields of set design, the
gaming and casino industry, video games and interactive hardware design, rock ʼn
roll shows and tours, theme parks and expositions, film and television, and military
effects such as heads-up displays and simulators. See, e.g., id. at ¶¶ 26-48, 58-66.
A POSITA would have had available a myriad of special effects devices and
equipment to use, from scrims to theater fly systems, projectors to video screens,
and sound systems to beam-splitters, and would have been versed in the well-
known methods of operation of each such device or piece of equipment. Id.
2. Set Design Considerations
To incorporate special effects, a POSITA would have understood how to
tailor the design of a particular special effect to the configuration of a particular
theater. Id. at ¶ 60. For example, some auditoriums were mostly flat, with the
audience staring up at the stage. Others, like opera houses, situated the audience
above the stage so it could view the stage and the orchestra below. Some stages
included a subfloor with an under-stage area useful for illusions. Id.
A POSITA would have also accounted for the requirements of the
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performance and would have used established set design principles and
components based on the needs and constraints of the show and theater. Id.
3. Knowledge of Pepper’s Ghost
A POSITA would have been very familiar with Pepper’s Ghost
configurations. Id. at ¶ 73. These configurations had been used for over 150 years.
Id. at ¶ 28, 49-52. Polymeric film beam splitters have been employed in numerous
Pepper’s Ghost configuration illusions in many of the industries in which a
POSITA would have been familiar, including stage illusions. Id. at ¶ 104.
A POSITA addressing the creation of a Pepper’s Ghost illusion would have
recognized the need to maintain beam splitters as taut as possible. Id. at ¶¶ 150-
151. A POSITA would therefore have looked at available design options for
tensioning a beam splitter. Id. Frames, tensioning straps, and lighting were widely
used in the stage and theater industry to provide a variety of benefits. Id. at ¶¶ 100-
107. Adjustable tensioning mechanisms were used to tension myriad theater
structures, including curtains, fabrics, and projection screens. Id. at ¶ 107. A
POSITA would have recognized the benefits of such tensioning structures with a
flexible beam splitter. Id. at ¶¶ 171-172.
Further, lighting arrangements were provided in many stage productions but
would have been particularly important in Pepper’s Ghost illusions to mask the
beam splitter and adequately contrast the projected image with other real objects
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on the stage, as a POSITA would have appreciated. Id. at ¶¶ 140-143. Thus, when
looking at design options for a Pepper’s Ghost illusion, a POSITA would have
recognized the benefits of proper illumination. Id.
D. The Challenged Claims Are Invalid Under §§ 102(b) or 103(a)
1. Grounds 1 and 2 – Obvious over Maass, Stableford, Bailey, Beaver, Spears and Marks
The Maass reference discloses all of the elements of independent claims 1
and 10, other than certain of the claimed details regarding how the partially
reflective screen is tensioned (Maass discloses the need to tension the screen).
Maass discloses a device for displaying moving images “in the background of a
stage.” Ex. 1002 at Title; Abstract. Maass also discloses that an “object of the
present invention is an apparatus with which film and image presentations can be
made relaxed and the presenter himself can move into the image without thereby
interfering with reproduction of the image on a projection screen.” Id. at 1:53-57.
Such an apparatus may be similar to a “theatre production … ghost trick.” See,
e.g., id. at 1:41-52. The image may be “projected by the image source on to the
reflecting surface … and it is then reflected in the transparent smooth foil in such a
way that it appears to the viewer on the background of the stage.” Id. at 2:9-14.
As shown in the annotated version of FIG. 2 below, Maass discloses the
claim limitations of a light amplifier, a mirror, a reflecting surface, a transparent
smooth foil, a mounting bracket, a winding tube, a stage floor, and a stage ceiling.
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The light amplifier 12 shines an image that is reflected by mirror 14 and
further reflected onto the foil 20 by reflecting surface 18. Id. at 3:51-64. The foil
20 is held “tautly smooth” and “preferably without any inclusions” so “the image is
not distorted.” Id. at 2:49-51. The foil 20 reflects some of the light impinging
upon it from the reflecting surface 18. Id. at 2:52-59. This creates an illusion to
viewers of a moving image appearing in the background of a stage as a virtual
image. Id. at 3:64-67.
As shown in FIG. 5 below, Maass discloses that the image producing
elements of FIG. 2 can be disposed on lattice frames 44. See, e.g., id. at 4:32-57.
Such a lattice framework provides a “desirable embodiment” so the apparatus can
be easily assembled, disassembled, and transported. Id. at 3:20-24.
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As explained below, it would have been obvious to combine elements from
Stableford, Bailey, Beaver, Spears, and Marks with the Maass apparatus because
all of the references relate to one or both key fields to which the ‘361 Patent
directed, i.e., image projection systems and tensioning systems, and disclose
features that a POSITA would have recognized were advantageous to combine
with each other. Ex 1007 at ¶¶ 139, 149, 156, 171, 185, 192. Stableford discloses
a projection screen that “gives increased illumination … is easily assembled or
mounted, and is light in weight.” See, e.g., Ex. 1004 at p. 1, ll. 5-11. Stableford is
analogous art to the ‘361 Patent because Stableford discloses an apparatus relating
to “projection screens such as are used for cinematograph displayers,” similar to
the ‘361 Patent’s apparatus. See, e.g., Ex. 1001 at 1:4-9; Ex. 1004 at p. 2, ll. 15-17.
Also, Stableford teaches flexible projection elements that can be held under tension
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between frames and/or trusses. See, e.g., Ex. 1001 at 2:48-50; Ex. 1004 at p. 3, ll.
18-19.
In addition, a POSITA would have been motivated to combine elements of
Bailey into the Maass apparatus because Bailey’s tensioning straps provides a
variable tensioning capability that Maass alone does not possess and that a
POSITA would have recognized is advantageous. Ex 1007 at ¶¶ 171-178. Bailey
discloses a large scale, portable display system comprised of flexible foldable strap
members that can be erected as a stage backdrop. See, e.g., Ex. 1005 at Abstract.
The flexible display panels can be attached to a beam and tensioned with
tensioning straps. See, e.g., id. at 5:47-52. Bailey is analogous art to the ‘212 in
that Bailey is directed to an “image display system, particularly adapted for use in
conjunction with stage performances” similar to the ‘361 Patent’s apparatus. See,
e.g., Ex. 1001 at 1:4-16; Ex. 1005 at 1:57-59. Also, both the ‘361 Patent and
Bailey teach flexible stage display elements that can be held under tension between
frames and/or trusses. See, e.g., Ex. 1001 at 3:9-25; 6:21-50; Ex. 1005 at 5:58-64.
In addition, a POSITA would have been motivated to combine lighting
elements of Beaver into the Maass apparatus because a POSITA would have
recognized the importance of lighting a stage in a manner that is properly balanced
and illuminates the real objects on it without interfering with or drawing unwanted
attention to the stage illusion. Ex 1007 at ¶¶ 140-45. Beaver discloses an
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apparatus for presenting optical illusion effects similar to Pepper’s Ghost. See,
e.g., Ex. 1003 at Abstract; 1:34-50. Beaver’s illusion uses a series of projection
screens and inclined mirrors to project images to an audience. See, e.g., id. at 2:44-
67. Just as with the ‘361 Patent’s light source, Beaver achieves contrast between a
projected image and real objects by illuminating objects on a stage area at a desired
light level without illuminating the projection screen. See, e.g., id. at 2:35-39.
In addition, a POSITA would have been motivated to combine the gripping
surfaces of Spears with the Maass apparatus because of the friction-enhancing
effects it discloses for retaining and gripping Mass’s foil. Ex. 1007 at ¶¶ 183-88.
Spears discloses an apparatus for gripping and squeezing collapsible, flexible
tubes. See, e.g., Ex. 1017 at Abstract; 1:13-15. Just as with the ‘361 Patent’s
retention members used to grip the screen, Spears employs opposing jaw members
to grip and squeeze the collapsible tubes. See, e.g., id. at 2:12-26.
Spears is analogous art to the ‘361 Patent because, as the Examiner
articulated during prosecution, while the ‘361 Patent applies its disclosure to the
ultimate objective of creating images using an inclined partially reflective screen,
the disclosure is focused on how to retain the screen under tension. Spears is
similarly directed to a retention device and a POSITA would have considered art
relating to clamping and retention devices even if the application was not
specifically directed to creating stage illusions. See, e.g., Ex. 1017 at 2:12-53,
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FIGs. 1-3. Both the ‘361 Patent and Spears teach using clamping jaws to retain
and squeeze a flexible material. Id.; Ex. 1001 at 4:22-58; Ex. 1007 at ¶¶ 183-88.
As explained below, a POSITA would have looked to Marks because a
POSITA would have perceived the advantage of applying a neutral gray pigment
to Maass’s reflecting surface 18 to reduce halation and produce a more realistic
looking image for the audience. Ex. 1007 at ¶¶ 190-94. Marks discloses a method
and apparatus for presenting three dimensional projection images to an audience
using a series of projection screens. See, e.g., Ex. 1018 at 1:15-25. Marks’s
illusion integrates a foreground image with a background image containing
complementary objects of a scene into three dimensional images having an
apparent depth effect on a viewer. See, e.g., id. at 2:9-64. The light intensities and
color compositions of the foreground and background images may be adjusted to
synthesize the images and avoid image conflict that would decrease the three
dimensional effect. See, e.g., id. at 4:51-75; 5:1-38. Ex. 1007 at ¶ 190.
Marks is analogous art to the ‘361 Patent because both Marks and the ‘361
Patent are directed to the field of image projection. See, e.g., Ex. 1001 at 1:4-10;
Ex. 1018 at 1:15-25. More specifically, both Marks and the ‘361 Patent use one or
more image projectors (e.g., Ex. 1018, elements 32, 33; Ex. 1001, element 106),
one or more reflective elements (e.g., Ex. 1018, element 29; Ex. 1001, element
112), and one or more projection screens (e.g., Ex. 1001, elements 26, 31; Ex.
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1018, element 110) to create three dimensional images or images having depth.
See, e.g., Ex. 1001 at 1:26-30; Ex. 1018 at 2:9-24, 36-42, 59-64. Additionally,
both Marks and the ‘361 Patent teach using proper lighting intensities to ensure the
integrity of the projected images displayed to the audience. See, e.g., Ex. 1001 at
4:20-53; Ex. 1018 at 4:51-66; Ex. 1007 at ¶¶ 191-93.
Because only a few of the limitations of independent claims 1 and 10 differ,
their invalidity is discussed together below.
Claim 1 [1.0] Claim 10 [10.0] An image display apparatus, comprising: Maass
discloses an image projection apparatus. Ex. 1002 at 1:5-7 (“The invention
concerns an apparatus for representing moving images in the background of a stage
or the like using an image source.”), FIGs. 1-5 and 3:36-50 (describing views of
“apparatus”).
[1.1] [10.1] an image source: Maass’s computer controlled light amplifier 12 is
an image source that projects a moving image onto a screen. See Ex. 1002 at 1:8-
16; 3:51-67 (describing light amplifier 12 as an image source that radiates light and
projects a moving image); see light amplifier 12 in FIGs. 1-5.
[1.2] [10.2] a frame: Maass’s winding tube 24 and mounting bracket 22 together
are a frame because they provide structural support for pulling foil 20 under
tension. Id. at 3:58-60, 4:49-51 (describing winding 24 and mounting bracket as
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supporting the upper and lower ends of the foil 20, respectively); see winding tube
24, mounting bracket 22 in FIGs. 1-3, 5.
[1.3][10.3] a light source…the light source arranged to illuminate at least part
of the apparatus: The phrase “at least part of the apparatus” means “at least part
of the stage.” This interpretation comports with the use and function of the light
source described in the ‘361 Patent: “The apparatus may comprise a light source
arranged to illuminate at least part of a stage.” Ex. 1001 at 4:32-36; see also 7:33-
35 (“A light source 140 is mounted on the box frame 102 and illuminates the prop
138 in order to reduce the effect of any residual light reflected from the board 112
onto the prop.”). The specification also states the light source’s purpose: “in order
that the colour and light levels of the area immediately surrounding the peppers
ghost image, the stage background, can most closely match the colour of the
projection surface background, excluding the area on both which is carrying the
image. Id. at 4:41-45. Ex. 1007 at ¶ 87.
Despite the theatrical environment that Maass is directed to, and although it
would have been an essential and inherent element to any theater or stage
environment, particularly one involving creating an optical illusion for an
audience, Maass does not disclose any light source, separate from the computer
controlled light emitting amplifier 12. Ex. 1007 at ¶¶ 112, 124-125.
Beaver, however, discloses an illumination system 30 including a light
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source arranged to illuminate at least part of a stage. Ex. 1003 at 3:55-58 (“an
illumination system 30 for said stage area 28 so that objects on said stage … may
be illuminated at a desired light level ... ;”)
A POSITA would have been motivated to light at least part of Maass’s stage
with Beaver’s illumination system because a POSITA would have recognized the
direct impact that proper lighting of a stage would have on the quality and
believability of the stage illusion. Ex. 1007 at ¶¶ 135-45. Maass discloses an
embodiment that enables a live presenter to interact with a projected image without
interfering with the image’s projection. Ex. 1002 at 4:23-31. In Pepper’s Ghost
stage illusions that used real objects or actors with the projected image, a POSITA
would have recognized the need for proper lighting that illuminates real objects
without interfering with the projected image and compromising the illusion’s
quality. Ex. 1007 at ¶ 140. One aspect of Pepper’s Ghost illusions was to draw the
attention of the audience away from any visual evidence of the beam splitter to
other parts of the stage. Id. at ¶ 141. Illumination systems accomplished this by
creating an “area of interest” for the audience by shining light on a prop, actor,
and/or certain area of the stage, and by varying brightness levels, colors, and
positions about the stage area. Id. Additionally, light levels would have been
reduced around the edges of the beam splitter to mask them from the audience’s
view. Id. A POSITA would have also recognized that the projected image’s
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lighting level should be balanced with the other stage lighting to enhance the
illusion’s realization. Id. at ¶¶ 142-143. A POSITA would have recognized that
this balance was important to create a convincing interaction between the projected
image and the real objects or actors on the stage. Id.
A POSITA would have been motivated by these issues to use an
illumination system like Beaver’s (id. at ¶ 144), which discloses that “appropriate
lighting” is key to determining when an actor or other objects on a stage should be
visible to the audience (id.; Ex. 1003 at 4:18-21) and which teaches using an
illumination system that would allow one to contrast a virtual image with real
objects and change that contrast at different instances. Id.; Ex. 1003 at 6:13-19
(“Utilizing selective lighting … to have some of the characters or objects disappear
and others remain, … .”).
[1.4][10.4] an at least partially transparent screen: Maass’s foil 20 is a partially
transparent screen because it is a transparent smooth foil that is sometimes used as
a transparency film. Ex. 1002 at 1:61-63 (describing a transparent smooth foil
connected between the floor and ceiling of a stage); see foil 20 in FIGs. 1-5; see
also id. at 2:60-63.
[1.4.1] [10.4.1] the screen inclined at an angle with respect to a plane of emission
of light from the image source: Maass’s foil 20 is inclined at an angle relative to a
plane of emission of light from light amplifier 12 . Ex. 1002 at 2:28-29 (describing
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that the foil extends at an angle of about 45° relative to the floor of the stage); see
light amplifier 12, foil 20 in FIGs. 1-3, 5. The “plane of emission” is perpendicular
to the light from the image source (light amplifier 12), and the angle of the plane of
emission of light from Mass’s light amplifier 12 is about 90° relative to horizontal.
See id. FIGs. 1-3, 5; Ex. 1007 at ¶ 88.
[1.4.2] [10.4.2] and the screen having a front surface arranged such that light
emitted from the image source is reflected therefrom: Maass’s foil 20 reflects
some light impinging on its front surface from the light amplifier 12. Ex. 1002 at
2:52-55 (describing that the foil is to reflect between 30 and 50%, preferably 30%,
of the light impinging on it); see light leaving light amplifier 12 and reflecting off
member 18 onto the front surface of foil 20 in FIGs. 1-3, 5; see also id. at 3:61-67.
[1.4.3] [10.4.3] wherein the screen is a polymeric foil: The term “foil” means “a
flexible material capable of acting as a beam-splitter,” such as Mylar®. See V.B.1,
supra. Maass’s foil 20 acts as a projection screen for the image projected by light
amplifier 12. Ex. 1002 at 1:53-67 (describing a transparent smooth foil); see also
id. at 2:48-65. It would have been obvious to a POSITA to use a polymeric foil for
Maass’s foil 20. Most, if not all, transparent foils possessing any tensile strength
can be broadly classified as polymeric. Ex. 1007 at ¶¶ 80, 126-129. Indeed,
Lekowski discloses a screen used for the same purpose, which is made from
Mylar®, a polymeric material. Ex. 1007 at ¶¶ 202-203; Ex. 1006 at 2:29-42.
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[1.5] [10.5] the frame being arranged to retain the screen under tension:
Maass’s winding tube 24 and mounting bracket 22 comprise a frame to retain foil
20 under a very high tensile stress. Id. at 4:49-51 (describing that winding tube 24
is fixed to the frame, foil 20 is pulled off the winding tube and attached to
mounting bracket 22, and then tensioned); see foil 20, winding tube 24, mounting
bracket 22 in FIGs. 1-3, 5; see also id. at 3:58-60.
[1.5.1] [10.5.1] such that the tension of the screen can be independently varied at
a plurality of positions along at least one edge of said screen: Maass does not
clearly disclose a way to vary the screen’s tension at a plurality of positions.
Bailey, however, discloses tensioning devices 60 with ratchet-type devices that
allow one to vary tension as needed at a plurality of positions to retain a flexible
stage scenery device under tension “as a generally planar member.” Ex. 1005 at
3:64-67; 6:9-23. Bailey provides this by arranging the tensioning straps at a
plurality of positions along flexible display support member 28, as shown in FIG.
4. Id. at 5:50-52 (“Each of the support members 26 may be secured to the beam 22
at its lower end by a suitable flexible tensioning device 60, for example.”), 6:9-21
(“The tensioning devices 60 may comprise flexible strap, ratchet-type tensioning
devices…to increase tension in the loop formed by the strap”), and FIG. 4.
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A POSITA would have been motivated to use the tensioning straps 60 of
Bailey to provide for variable tensioning along the bottom edge of Maass’s foil,
with the straps interposed along the foil’s edge between the mounting bracket 22
and lattice frame 44. Ex. 1007 at ¶¶ 173-182. A POSITA would have recognized
the need to vary tension along an edge of the screen to provide a smooth, planar
surface. Id. at ¶ 175. As a POSITA would have recognized, the accuracy of an
image’s reflection depends on the extent to which the reflecting surface was planar.
Id. If the surface was a flexible screen, whether it would have been planar or not
would have depended on whether the screen had been tensioned. Id. More
specifically, a POSITA would have understood that a beam splitter would have to
be held taut at its edges in order to accurately reflect the image. Id. Otherwise, the
light forming the image would have been reflected in various haphazard directions
due to wrinkles, waves or inclusions in the beam splitter, causing distortion of the
image from the beam splitter, and resulting in a subpar audience experience. Id.
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Accordingly, a POSITA would have incorporated the Bailey’s tensioning straps (or
some like them) into the Maass apparatus so that Maass’s foil could be tensioned
to have a smooth planar surface. Id.
A POSITA also would have recognized the benefit of varying tension along
an edge of foil 20 to provide fine-tuning adjustments (id. at ¶ 176), which Bailey’s
tensioning straps would have provided. For example, a POSITA would have
understood that the foil might not be properly dimensioned. Id. A POSITA would
have understood that the foil may expand and contract due to environmental
conditions. Id. These conditions would have included changes in temperature, air
flow and noise, all of which a POSITA would have recognized would affect the
foil tension and cause vibrations. Id. A POSITA would have recognized,
therefore, the advantage of having the flexibility to make slight additional
tensioning adjustments using straps. Id. at ¶¶ 177-178.
[1.6] [10.6] the image source being arranged such that light forming the image
impinges upon the screen: Maass’s light amplifier 12 projects a moving image
onto a mirror and reflecting member 18, which projects the light forming the image
onto the foil 20 where it impinges upon the front surface of the foil 20. Ex. 1002 at
3:61-67 (describing the light amplifier 12 projecting an image onto foil 20); see
light leaving light amplifier 12 and reflecting off member 18 onto the front surface
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of foil 20 in FIGs. 1-3 and 5; 2:52-55 (describing that light impinges on the foil
20).
[1.6.1] [10.6.1] such that a virtual image is created from light reflected from the
screen, the virtual image appearing to be located behind the screen: Maass’s
light amplifier 12 projects a moving image that is converted by foil 20 to a virtual
image that appears behind foil 20 in the background of a stage. Id. at 3:61-67
(describing that viewers see the moving image projected onto foil 20 as a virtual
image in the background of the stage).
[1.7] [10.7] and the frame comprises first and second retention members:
Maass’s frame includes first and second retention members in the form of the
winding tube and mounting bracket 22 for retaining the top and bottom edges of
the foil, respectively. Id. at 3:32-35 (“Desirably the winding tube is secured to the
upper girder portions by way of brackets while the mounting support which holds
the free end of the foil is fixed to the lower girder portions.”); FIG. 5.
Nevertheless, even if Maass’s winding tube and mounting bracket do not
comprise a frame’s retention members, Stableford discloses retention members that
are part of a frame in the form of stretcher bars e. Ex. 1004 at p. 3, ll. 1-14; FIG. 1.
Stableford’s stretcher bars comprise first and second retention members because
they hold (on both sides of screen b) the projection screen under an even tension.
Id. at p. 1, ll. 50-58; p. 3, ll. 14-19.
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It would have been obvious to a POSITA to incorporate Stableford’s
stretcher bars e into the apparatus of the Maass/Beaver/Bailey combination
discussed in V.D.1 [1.5.1, 10.5.1], supra, because of the even tension the stretcher
bars would have provided across the lower edge of the foil 20. Ex. 1007 at ¶¶ 154-
166, 179-182. Stableford is analogous art to the ‘361 Patent because both are
directed to tensioning a projection apparatus. Ex. 1007 at ¶ 156. In this
configuration, Bailey’s tensioning straps 60 would have been connected at one end
to Stableford’s stretcher bars e, which hold the lower edge of the foil, and at other
end to Maass’s mounting bracket 22 connected to lattice frame 44 to facilitate the
desired tension. An example of this obvious combination is depicted below:
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Maass stresses the importance of holding the foil or screen “tautly smooth”
to reduce “distortion effects.” Ex. 1002 at 2:48-52. A POSITA would have
recognized the benefits of using stretcher bars in place of the mounting bracket 22
at the lower end of the Maass foil to better achieve this. Ex. 1007 at ¶ 156. A
POSITA would also have recognized the tensioning benefit, particularly in
conjunction with Bailey’s tensioning straps, provided by Stableford’s stretcher
bars, which by sandwiching the edge of the projection screen more evenly than the
mounting bracket distribute the forces on the lower end of the foil when under
tension. Ex. 1004 at FIG. 4. Ex. 1007 at ¶¶ 154-156. The stretcher bars have this
advantage because, as a POSITA would have known, they can tension load across
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the length of the foil’s edge. Id. at ¶¶ 105, 154-156.
A POSITA would have also been motivated to use the sandwich
configuration of stretcher bars e taught by Stableford (Ex. 1004 at FIG. 4) to
provide an evenly distributed frictional gripping area along the edge of the screen
of Maass and continue to retain the screen under tension in the event the screen
may be affected by changing environmental conditions. Ex. 1007 at ¶ 157. It
would have been obvious therefore to substitute the mounting bracket 22 of the
Maass/Bailey combination with Stableford’s stretcher bars, comprising the first
and second retention members of a frame. Id.
[1.7.1] [10.7.1] first and second retention members … having opposing faces
arranged in parallel to sandwich an edge region of the screen therebetween: The
Maass/Beaver/Bailey/Stableford combination discussed in V.D.1 [1.7, 10.7],
supra, sandwiches an edge region of the screen because, as highlighted therein,
Stableford discloses how the stretcher bars e sandwich its projection screen to
facilitate creating an even tension. Ex. 1004 at p. 2, ll. 113-115; p. 3, ll. 1-2
(“bottom edges of the screen strips shall be held between stretcher bars e bolted or
otherwise secured together”); Fig. 1. As Stableford also depicts, stretcher bars e on
opposing sides of the screen are parallel to each other and inherently have
opposing faces that sandwich the screen’s edge. Id. at FIGs. 1 and 4.
[1.7.1.1] [10.7.1.1] and at least one of the faces of the first and second retention
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members comprises an abrasive coating arranged to contact the screen: The
claim term “abrasive coating” means “a material that is applied to second material,
such that the first material is bonded to the second material, wherein the first
material possesses the quality that it is specifically intended to mar, scratch,
roughen, or otherwise remove third material from the surface of a target or mating
object.” See V.B.3., supra. The Maass/Beaver/Bailey/Stableford combination
discussed at V.D.1 [1.7, 10.7], supra, does not disclose that the retention members’
surface that contacts the screen has an abrasive coating. It would have been
obvious though to apply an abrasive coating to the screen-facing sides of the
retention bars in the Maass/Bailey/Stableford combination because a POSITA
would have recognized the advantage of an abrasive surface (of the abrasive
coating) in having a frictional contact between the stretcher bars e and the edges of
the screen. Ex. 1007 at ¶¶ 131, 157. A POSITA would have recognized that an
abrasive surface for the screen-facing side of the retention members would
improve the members’ grip on the foil’s edges and ensure that the foil would not
slip away from any part of the retention members’ length, which would have
potentially introduced wrinkles on the screen and caused unwanted image
distortions. Id.
A POSITA would alternatively have been motivated to combine the
roughened, high-friction and abrasive coating on the surfaces of Spears’ squeezing
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jaws into the apparatus of the Maass/Beaver/ Bailey/Stableford combination. Ex.
1007 at ¶ 184. As discussed above, Spears is analogous art to the ‘361 Patent. Id.
at 185. A POSITA would have been motivated to use Spears’ abrasive coating on
Stableford’s stretcher for the same reasons discussed in the preceding paragraph.
Id. at ¶ 186.
[1.7.2] wherein the first and second retention members are connected to one or
more flexible tensioning means which extend from the frame: The
Maass/Beaver/Bailey/Stableford/Spears combination discussed at V.D.1 herein,
meets this limitation because in the combination, the stretcher bars e are the
retention members used to retain the lower end of the foil, and they are also
connected to tensioning straps that themselves are connected to the lattice frame
44. The tensioning straps extend from the frame or fixed mounting points of the
Maass structure. Ex. 1002 at FIG. 5; Ex. 1004 at FIG. 1; Ex. 1005 at 5:50-52; FIG.
4. See also [1.5.1, 1.7.1, 10.5.1, 10.7.1], supra.
[1.7.2.1] the flexible tensioning means comprising tensioning straps and
corresponding friction locking buckle arrangements for tightening the tensioning
straps; [10.8] apparatus, comprising: tensioning straps and corresponding
friction locking buckle arrangements for tightening the tensioning straps: The
Maass/Beaver/Bailey/Stableford/Spears combination discussed herein meets the
limitation of having the retention members attached to tensioning straps because in
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the combination, Bailey’s tensioning straps 60 are attached to Stableford’s stretcher
bars e (which advantageously replace Maass’s mounting bracket 22). Ex. 1005 at
5:50-52; 6:9-23; 8:8-12; FIG. 4. For example, a beam splitter may be large and not
properly dimensioned. Ex. 1007 at ¶ 176. It may also expand and contract due to
environmental conditions. Id. A POSITA would have recognized these potential
issues and the advantage of having the flexibility to make fine tensioning
adjustments. Id. Essentially, using tensioning straps would have allowed a POSITA
to fine-tune the tension force along the screen’s edge to achieve optimal tensioning
under various environmental conditions. Id.
The Maass/Beaver/Bailey/Stableford/Spears combination discussed herein
also meets the limitation of having friction locking buckle arrangements that
correspond to and are for tightening tensioning straps. The combination satisfies
the limitation because the tensioning devices 60 of Bailey “each include a flexible
strap 62 connected at one end to a ratchet type locking mechanism 64 trained
through a connector ring 40.” Ex. 1005 at 6:6-23. A manual actuating lever causes
the strap to be tensioned. Id. Bailey’s locking mechanism 46 and connector ring
40 are a friction locking buckle arrangement. Ex. 1007 at ¶ 170.
[1.8] the foil, flexible tensioning means and the frame lying in a common
inclined plane, with the faces of the first and second retention members being
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oriented parallel to the common inclined plane and the tension on the foil being
applied in the common inclined plane
[10.9] wherein the foil and the frame reside in a common inclined plane, with
the faces of the first and second retention members being oriented parallel to the
common inclined plane, the retention members being under tension, with the
tension on the retention members and the foil being applied by the tensioning
straps in the common inclined plane
The broadest reasonable interpretation of common inclined plane is “in the
same plane as the angled foil.” This interpretation comports with the use and
function of the tensioning straps described in the ‘361 Patent, where the tensioning
straps 114 are connected to box frame 102 and connected to the screen 110 in the
same plane as the angled screen 110. Ex. 1001 at 6:27-29 (describing the
configuration of screen 110, tensioning straps 114, and frame 102); see screen 110,
tensioning straps 114, truss 104 disposed in the same plane. Id. at FIG. 4; 6:42-47.
In the adjustably tensioned Maass/Beaver/Bailey/Stableford/Spears
combination, foil 20 lies in the same inclined plane as stretcher bars e and lattice
frame 44, and is tensioned in that plane. Ex. 1002 at 4:49-51 (describing that foil
20 is fixed to mounting bracket 22 and tensioned); see foil 20, winding tube 24,
fixing point of mounting bracket 22 in the same inclined plane in FIGs. 1-3, 5.
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A POSITA would have recognized the advantages of configuring the Maass/
Stableford/Bailey/Spears combination of the foil, tensioning means, and the frame
in a common plane. Ex. 1007 at ¶¶ 158, 182. A POSITA would have understood
that disposing one or more of them in different planes would create stress on the
foil due to moment forces, and which would have been exacerbated when the foil
is under a high tension. Id. A POSITA would have been motivated to configure
the Maas/Stableford/Bailey apparatus to mitigate unnecessary stress on the foil. Id.
See also V.D.1 [1.5.1, 10.5.1, 1.7, 10.7], supra.
Claim 2 [2.0] Claim 13 [13.0] The apparatus according to claim 1 [10], wherein
the abrasive coating is sandpaper.: The Maass/Beaver/Bailey/Stableford/Spears
combination discussed above meets the limitation requiring the abrasive coating to
be sandpaper because Spears discloses that the roughened surfaces of the clamping
side of the retention members can be “a glued-on material such as sandpaper,” or
“[a] coating such as synthetic plastic or rubber composition mixed with sand,
metallic particles, or the like.” Ex. 1017 at 2:30-34. Regardless, it would have
been obvious to a POSITA to have the abrasive coating be sandpaper, given the
prevalence of sandpaper and the ease with which it can be adhered to surfaces that
require high friction. Ex. 1007 at ¶ 187. See also V.D.1 [1.7.1.1, 10.7.1.1], supra.
Claim 3 [3.0] Claim 14 [14.0] The apparatus according to claim 1 [10], wherein
the first and second retention members comprising respective openings
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therethrough arranged to collocate with respective openings in the screen: The
Maass/Beaver/Bailey/Stableford/Spears combination discussed at [1.5.1, 1.7,
1.7.1.1, 10.5.1, 10.7, 10.7.1.1] meets the limitation of having the retention
members with respective collocated openings and clamping members because
Stableford discloses stretcher bars e that have holes where bolts pass through the
bars to secure the foil to the stretcher bars. Ex. 1004 at p. 3, ll. 1-5, FIGs. 1, 4.
[3.1] [14.1] wherein the openings are arranged to receive a fixing means so as to
clamp the screen between the first and second retention members: The term
fixing means means bolts and their equivalents. See V.B.2, supra. The
Maass/Beaver/Bailey/Stableford/Spears combination discussed above meets the
limitation of having the bolts pass through retention members because Stableford
discloses that stretcher bars e have holes where bolts pass through the bars and the
screen b to secure the screen to the stretcher bars. Ex. 1004 at p. 3, ll. 1-5
(disclosing that stretcher bars e bolted together to secure edges of the screen b) and
FIGs. 1 and 4. These bolts clamp the lower edge of foil between stretcher bars e,
with bolts passing through the foil. Id. See also Ex. 1007 at ¶ 161.
Claim 4 [4.0] Claim 15 [15.0] The apparatus according to claim 1 [10] wherein
the frame is arranged to retain the screen under tension such that the tension of
the screen can be varied at a plurality of positions along at least one edge of the
screen
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See V.D.1 [1.5.1, 10.5.1], supra.
[4.1] [15.1] such that the screen is substantially wrinkle free: See V.D.1 [1.5.1,
10.5.1], supra. Maass’s foil 20 is substantially wrinkle free. Ex. 1002, 2:50-52
(discussing that the foil 20 is preferably without any inclusions and should be held
very smooth). Furthermore, the Maass/Beaver/Bailey/Stableford/Spears
combination discussed above can achieve a substantially wrinkle free screen by
varying the tensioning of the screen at a plurality of positions along at least one of
its edges. Ex. 1007 at ¶¶ 174-176. A POSITA would have been motivated to use
Bailey’s tensioning device 60 to provide for variable tensioning along the bottom
edge of Maass foil to achieve Maass’s stated goal of holding the foil without
inclusions, which would render it substantially wrinkle free. Id.
Claim 5 [5.0] Claim 16 [16.0] The apparatus according to claim 1 [10], further
comprising a pigmented reflective member provided in an optical pathway
between the image source and the screen and being operative to reflect only light
from part of the visible spectrum: It would have been obvious for a POSITA to
make reflecting member 18 pigmented in order to reduce unwanted reflections that
cause halation or a fog-like appearance or other distortions of the perceived image.
Ex. 1007 at ¶ 193. It was well-known to a POSITA that a neutral gray layer would
reduce these effects. Id. at ¶¶ 133-134, 193. Moreover, conventional projections
screens in the relevant timeframe were typically already pigmented a neutral gray
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in order to reduce halation. Id. at ¶ 193. Marks corroborates this knowledge that a
POSITA would have had. Ex. 1018 at 7:44-67; Ex. 1007 at ¶ 193.
Alternatively, a POSITA would have been motivated to combine Marks with
the Maass combination apparatus by applying a neutral gray pigment to reflecting
layer 18. Ex. 1007 at ¶ 194. Marks is analogous art to the ‘361 Patent. See
V.D.1, supra. A POSITA would have appreciated the advantage of applying a
neutral gray pigment to reflecting surface 18 (by using a gray projection screen or
painting the surface a neutral gray) to reduce halation and produce a more realistic
looking image for the audience. Ex. 1018 at 7:44-67; Ex. 1007 at ¶¶ 193-194.
Claim 6 [6.0] Claim 17 [17.0] The apparatus according to claim 5 [16], wherein
the pigmented reflective member appears grey to a viewer: The claim limitation
“wherein the pigmented reflective member appears gray to a viewer” is indefinite
because viewers’ perceptions, particularly of color, can differ. Perceptions of one
viewer to another, particularly of color, differ. Ex. 1007 at ¶ 195. If the claims are
interpreted to mean that the pigmented reflective member “is grey,” then they are
invalid as obvious to a POSITA. Id. See V.D.1 [5.0, 16.0], supra.
Claim 7 [7.0] Claim 19 [19.0] The apparatus according to claim 1 [10] further
comprising a second light source arranged to illuminate at least part of a stage
lying behind the screen: See V.D.1 [1.3, 10.3], supra. The
Maass/Beaver/Bailey/Stableford/Spears combination meets this limitation because
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Beaver discloses lights 30 that are disposed in various places, including the sides
of a stage and behind the screen, to illuminate various areas of the stage. Ex. 1003
at 5:58-65 (disclosing light in various areas of the stage that directly illuminate
characters and objects on the stage area 28); and lights 30 in FIGs. 1 and 2.
Claim 8 [8.0] Claim 20 [20.0] The apparatus of claim 1 [10], wherein both faces
of the first and second retention members comprise an abrasive coating: The
Maass/Beaver/Bailey/Stableford/Spears combination meets this limitation because,
in Spears, both faces 24, 26 of its retention members have roughened surfaces 28,
30. Ex. 1017 at 2:27-37. It would have been obvious to have the abrasive surface
on both retention members’ faces because having the abrasive surface on both
faces would have increased the retention members’ grip on the screen. See also
Ex. 1007 at ¶ 188; V.D.1 [1.7.1.1, 10.7.1.1], supra.
Claim 9 [9.0] Claim 18 [18.0] The apparatus according to claim 1 [10], wherein
the image source comprises one of a projector, an LCD, or a television display.
See V.D.1 [1.1, 10.1], supra.
Claim 11 [11.0] The apparatus of claim 10, wherein the first and second
retention members are connected to one or more tensioning means which extend
from the frame.
See V.D.1 [1.7.2], supra.
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Claim 12 [12.0] The apparatus of claim 11, wherein tensioning means are
flexible tensioning means
See V.D.1 [1.7.2], supra.
In sum, claims 1-4, 7-15 and 18-20 are obvious over Maass, Beaver, Bailey,
Stableford and Spears, and claims 5, 6, 16 and 17 are obvious over Maass, Beaver,
Bailey, Stableford, Spears and Marks.
2. Grounds 3 and 4 – The Challenged Claims are Obvious over Lekowski, Bailey, Stableford, Spears and Marks.
Other than certain aspects about using tensioning straps for tensioning the
partially transparent screen and using an abrasive coating on the retention
members’ screen clamping surfaces, Lekowski discloses all of the elements of
claims 1 and 10. Lekowski discloses a device for presenting a multi-sensory show
“composed of live action combined and superimposed with projected images.” Ex.
1006 at Abstract. Lekowski does so using a “projector [that] forms a still and/or
moving image on [a beam] splitter.” Id. Such an apparatus may be used in a
“theatrical presentation.” Id. at 1:11-13. As shown in annotated FIG. 2 below,
Lekowski discloses projector 46, beam splitter 44, one or more mirrors 50, and
front projection screen 54.
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Projector 46 projects an image that is reflected by mirror 50 and further
reflected onto beam splitter 44 by screen 54. Id. at 2:47-52. The image is reflected
toward an audience by beam splitter 44. Id. Various lighting arrangements
illuminate different areas of the stage with varying intensities. Id. at 4:2-5. In
annotated FIG. 3 below, beam splitter 44 is held within frame 51 via retention
clamps 66, 68. Id. at 3:18-20; 34-36. Beam splitter film 45 is held within clamps
66, 68. Id. at 3:34-49; FIG. 3. Lekowski, therefore, discloses all the elements of
claims 1 and 10 other than “tensioning straps” and “abrasive coating.”
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A POSITA would have found it obvious, however, to modify the image
projection apparatus of Lekowski to include these features. The need to maintain a
beam splitter under tension was known as was the benefit of applying variable
tension through the use of straps. Ex. 1007 at ¶¶ 100-107, 113-114, 117, 122-123,
211-216. Therefore, it would have been obvious to a POSITA to have modified
Lekowski to have tensioning straps like Bailey’s to adjust and even the tension of
Lekowski’s beam splitter in the beam splitter’s plane.
A POSITA also would have found it obvious to have an abrasive coating on
the screen-facing sides of the clamps of the screen to maximize the grip on a
material being retained. The use of an abrasive coating to provide such an
enhanced gripping capability was known. Ex. 1007 at ¶¶ 131-132, 184-189.
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Various prior art, including Maass and Stableford, discussed in Section
V.D.1, supra, discloses the need to maintain a beam splitter under tension.
Lekowski uses clamps 66, 68 to provide variable tension to the disclosed beam
splitter. See e.g., clamp 66 in Ex. 1006 of FIG. 4 above. The flexible display
panels of Bailey can be attached to a truss like Bailey’s beam 22 and tensioned
with tensioning straps. See, e.g., Ex. 1005 at 5:47-52. An objective in Bailey is to
keep a flexible display element under tension, a focused concern of the ‘361
Patent. See, e.g., id. at 6:6-23. A POSITA recognizing that Bailey’s tensioning
straps would have provided additional benefits to the system of Lekowski, would
have found it obvious to combine Bailey with Lekowski at least because of an
increased ability to adjust and even the tension of the beam splitter in the beam
splitter’s plane. Ex. 1007 at ¶¶ 209-224.
a. Lekowski is not cumulative of Maass
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Lekowski and Maass disclose different image projection structures and
different ways to hold a beam splitter under tension. Maass’s beam splitter is
rolled off a winding tube and attached to a fixed mounting bracket on the stage or a
truss girder. Lekowski’s beam splitter is held within a frame by clamps disposed
on the edges of the beam splitter. Both Lekowski and Maass are necessary to fully
present the state of the art.
Claim 1 [1.0] Claim 10[10.0]
Lekowski satisfies the preamble because it discloses an apparatus for
projecting images in a live theater performance. Ex. 1006 at 1:38-45 (discussing a
multi-sensory theater presentation structure having a projector for projecting an
image superimposed on a live performance); FIG. 2.
[1.1] [10.1]
Lekowski’s projector comprises projectors 46, 48 that project images onto
beam splitter 44, and therefore satisfies the image source limitation. Id. at 2:43-52
(describing projectors 46, 48 as shining light on to beam splitter 44 that is reflected
towards an audience); see projector 46 in Ex. 1006 at FIG. 2.
[1.2] [10.2]
Lekowski discloses frame 51 having members 53, 55, 56, 58. Id. at 3:17-24
(describing frame 51 that supports beam splitter 44); see frame 51, frame members
53, 55, 56, 58 in Ex. 1006 at FIG. 3.
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[1.3][10.3]
The phrase “at least part of the apparatus” means “at least part of the stage.”
See V.D.1 [1.3, 10.3], supra. Lekowski’s lighting illuminates at least part of the
stage. Ex. 1006 at 2:35-38 (describing illumination that allows audience to see
objects and actors on the stage); see also id. at 4:2-5 (describing relative light
intensity levels shining on parts of the stage); Ex. 1007 at ¶ 204.
[1.4][10.4]
Lekowski discloses beam splitter 44 that is a partially transparent screen that
reflects light from the projectors back towards the audience. Ex. 1006 at 2:29-42
(describing beam splitter 44 as a semi-transparent film or partially reflective sheet
of glass); see beam splitter 44, film 45 in Ex. 1006 at FIGs. 2, 3.
[1.4.1] [10.4.1]
Lekowski’s beam splitter 44 is a screen inclined at an angle with respect to a
plane of emission of light from projector 46. Id. at 3:24-28 (describing beam
splitter 44 disposed at an angle with respect to the horizontal plane so that it can
reflect the image from screen 54 toward the audience); see Ex. 1006 at FIG. 2.
[1.4.2] [10.4.2]
Lekowski’s beam splitter 44 is a screen arranged to reflect light from
projector 46 at its front surface. Id. at 2:39-42 (describing beam splitter 44
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reflecting an image toward the audience which is located on the front side of the
beam splitter); beam splitter 44 in FIG. 2. Ex. 1007 at ¶ 197.
[1.4.3] [10.4.3]
See V.B.1, supra. Lekowski’s beam splitter 44 meets this limitation because
it is a partially reflective polymeric film such as Mylar®. Ex. 1006 at 2:33-42
(describing a semi-transparent polymeric film that can be semi-transparent and
reflects light to the audience); beam splitter 44 in FIG. 2; Ex. 1007 at ¶¶ 202-203.
See V.B.1, supra.
[1.5] [10.5]
Lekowski’s frame 51 including its frame members 53, 55, 56, 58, retain a
screen under tension because beam splitter 44 is tensioned using clamps 66, 68
connected to frame 51. Id. at 3:61-65 (describing clamps 68 attached to frame
members to hold film 45 rigidly); see FIG. 3; Ex. 1007 at ¶¶ 199-202.
[1.5.1] [10.5.1]
Lekowski discloses a mechanism for varying the tension of the beam splitter
at multiple positions because the clamps 66 as depicted in FIG. 4 and clamps 68
include a bolt (“adjustable fixing means 78”) that can be turned to provide
localized tension. Ex. 1006 at 3:37-49; FIG. 4; Ex. 1007 at ¶¶ 201-202. Tension
in the plane of beam splitter 44 is provided through clamp body 70 connected to
clamping member 80. Id. Tension force is generated against the counteracting
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static member of frame 55. Id. Tension adjustment is made by turning the bolt
clockwise or counterclockwise. Id. Because there are multiple clamping means
70/80 along the edge of the beam splitter, this aspect enables independent
tensioning at a plurality of positions as required by the claim limitation. Id.
[1.6] [10.6]
Lekowski’s projector 46 projects light forming an image that impinges on
the front side of beam splitter 44 and reflects towards the audience. Ex. 1006 at
2:49-52 (describing light from projector 46 reflecting off the beam splitter 44
toward the audience); see projector 46, beam splitter 44 in FIG. 2; Ex. 1007 at ¶
197.
[1.6.1] [10.6.1]
The image projected from Lekowski’s projector 46 appears as a virtual
image located behind the screen to the audience due to light reflecting from beam
splitter 44. Ex. 1006 at 2:38-42 (describing the audience perceiving an image
reflected by beam splitter 44 to be superimposed on a live performance taking
place on the stage 22, which is located behind the beam splitter); see projector 46,
beam splitter 44, stage 22 in FIG. 2; Ex. 1007 at ¶ 197.
[1.7] [10.7]
Lekowski’s frame 51 comprises retention members formed of retention
clamps 66, 68 that sandwich an edge 64 of film 45. Ex. 1006 at 3:34-48
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(describing clamps sandwiching edge of film 45); FIGs. 3 and 4; Ex. 1007 at ¶ 199.
[1.7.1] [10.7.1]
See [1.7, 10.7], supra. Clamps 66, 68 have fingers (see e.g., 84 and 86 of
FIG. 4) that have parallel opposing faces that face and sandwich the edge 64 of the
film 45. Ex. 1006 at 3:34-48; Ex. 1007 at ¶¶ 199-203.
[1.7.1.1] [10.7.1.1]
It would have been obvious, for the same reasons discussed above in the
context of Maass (see V.D.1 [1.7.1.1] [10.7.1.1], supra), to apply an abrasive
coating to the screen-facing sides of Lekowski’s clamps 66, 68 because a POSITA
would have recognized the advantage that an abrasive surface would provide in
having a frictional contact between those clamps and the edges of the screen. Ex.
1007 at ¶¶ 131, 157. A POSITA would have recognized that an abrasive surface
on the clamps’ screen-contacting faces would improve their grip on the foil’s edges
and ensure that the foil would not slip away from any part of the retention
members’ length, which would have potentially introduced wrinkles on the screen
and distortions in the resulting image. Id.; see also V.B.3., supra.
A POSITA would alternatively have been motivated to combine the
roughened, high-friction and abrasive coating on the surfaces of Spears’ squeezing
jaws into Lekowski. Ex. 1007 at ¶¶ 184, 189. As discussed above, Spears is
analogous art to the ‘361 Patent. Id. at ¶ 185. A POSITA would have been
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motivated to use Spears’ abrasive coating on Lekowski’s clamps for the same
reasons discussed in the preceding paragraph. Id. at ¶¶ 184-189.
[1.7.2]
Lekowski’s clamps are not flexible tensioning means even though they
generally have a common function. Bailey, however, discloses tensioning devices
60 with ratchet-type devices that allow one to vary tension at a plurality of
positions to retain a flexible stage scenery device under tension “as a generally
planar member.” Ex. 1005 at 3:64-67; 5:50-52; 6:9-23; 8:8-12. Bailey’s
tensioning straps are located at a plurality of positions along flexible display
support member 28, as shown in FIG. 4. Id. at 5:50-52 (“Each of the support
members 26 may be secured to the beam 22 at its lower end by a suitable flexible
tensioning device 60, for example.”); 6:9-21 (“The tensioning devices 60 may
comprise flexible strap, ratchet-type tensioning devices…to increase tension in the
loop formed by the strap”); and FIG. 4; Ex. 1007 at ¶ 173.
It would have been obvious to a POSITA to decouple Lekowski’s clamps 68
(such as the four nearest the ceiling 61 in FIG. 3) from frame 51, attach them to
Bailey’s tensioning straps 60, and attach the tensioning straps’ opposing end to
frame 51. An illustration of Lekowski’s frame configuration combined with
Bailey’s tensioning straps and ratchet devices is shown below. Ex. 1007 at ¶ 214.
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This modification would have provided for additional variable tensioning at a
plurality of positions in at least one direction of Lekowski’s film 45. See Ex. 1006
at FIG. 3; Ex. 1007 at ¶ 214. While clamps 68 of Lekowski are sufficient to hold
the beam splitter under tension, a POSITA would have recognized that Bailey’s
additional variable tensioning would have benefits. For example, a POSITA would
have known that a flexible beam splitter may not be properly proportioned, and
would have known that factors such as temperature, humidity fluctuation, and
vibrations can cause changes in the beam splitter’s tension. Id. at ¶ 212. Therefore,
a POSITA would have been motivated to combine Bailey’s flexible tensioning
straps with Lekowski’s clamps 68 to allow for additional tuning and control over
the tensioning of the beam splitter. Id.
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Alternatively, it would have been obvious to combine Bailey with Lekowski
by first replacing clamps 68 along the beam splitter’s top edge with a single
horizontal clamp. Ex. 1007 at ¶ 216. Such a single clamp would function with
respect to tensioning straps 60 similarly to Bailey’s horizontal support member 26,
by providing multiple access points for additional tensioning straps. Id. A
POSITA would then have connected Bailey’s flexible tensioning straps to
Lekowski’s frame 51, and attached the tensioning straps to the single wide clamp
of Lekowski (modified in accordance with Bailey’s teaching). Id. A POSITA
would have been motivated to modify Lekowski in this fashion because she would
have recognized that a stiff support or retention member used with flexible
tensioning straps—as Bailey teaches (Ex. 1005 at 3:64-67)—would reduce the
individual stresses that may occur at the edge of the flexible beam-splitter with the
intermittent clamping configuration of Lekowski. Ex. 1007 at ¶¶ 218, 226.
As another alternative, a POSITA would have been motivated to combine
Stableford with the Lekowski/Spears/Bailey combination to create a structure
similar to the modified Lekowski/Spears/Bailey combination for the same reasons
as those discussed in the preceding two paragraphs. Stableford is analogous art to
the ‘361 Patent because both are concerned with tensioning a flexible screen
apparatus. Ex. 1007 at ¶¶ 219-220. In this Lekowski combination, the difference
would have been that Stableford’s stretcher bars e would have replaced the single
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wide Lekowski clamp 68 Id. An illustration of Lekowski’s frame configuration
combined with Bailey’s tensioning straps and ratchet devices and Stableford’s
stretcher bars is shown below.
A POSITA would have recognized that the Lekowski/Spears/Bailey/Stableford
combination would have provided the same additional benefits as the modified
Lekowski/Spears/Bailey combination of reducing the individual stresses at the
beam splitter’s edge where the tensioning is applied. Id.
[1.7.2.1] [10.8]
The Lekowski combinations discussed above at V.D.2 [1.7.2] supra, meet
the limitation of having the retention members attached to tensioning straps
because in these combinations, Bailey’s tensioning straps 60 are attached to the
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applicable retention members (stretcher bars e or clamps 68 depending on the
combination). See also V.D.2 [1.7.2], supra; Ex. 1007 at ¶ 170.
The Lekowski combinations also meet the limitation of having friction
locking buckle arrangements that correspond to and are for tightening tensioning
straps. Each combination satisfies the limitation because the tensioning devices 60
of Bailey “each include a flexible strap 62 connected at one end to a ratchet type
locking mechanism 64 trained through a connector ring 40.” Ex. 1005 at 6:6-23.
A manual actuating lever causes the strap to be tensioned. Id. Bailey’s locking
mechanism 46 and connector ring 40 are a friction locking buckle arrangement.
Ex. 1007 at ¶ 170.
[1.8] [10.9]
The BRI of “common inclined plane” is “in the same plane as the angled
foil.” See Section V.D.1 [1.8., 10.9], supra. The Lekowski combinations
discussed above (see V.D.2 [1.7.2] supra) meet these limitations. A POSITA
would have constructed the combinations to realize the benefits of being in a
common inclined plane and avoid the disadvantages of being otherwise.
Specifically, a POSITA would have recognized that having the foil, tensioning
means, and the frame configured in different planes would have created moment
forces causing unnecessary stress on the tensioned beam splitter. Ex. 1007 at ¶
221. A POSITA would have understood that such stress would likely cause
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distortion of the foil resulting in undesirable inclusions or even tears. Id. A
POSITA, therefore, would have been motivated to combine Lekowski and Bailey
and, optionally Stableford, to provide tension in a common inclined plane to
mitigate unnecessary stress on the beam splitter. Id.
Lekowski discloses being able to undulate the flexible film beam-splitter for
the purpose of adding other special effects. Ex. 1006 at 4:36‒42. But this is an
option (id. at 4:36 (“[a]dditional special effects may be achieved”) (emphasis
added)) that [does not supplant the rigidly teaching]. Thus, it does not teach away
from the Lekowski/Bailey combination, evidenced in part by its appearance in a
dependent claim. Id. at 4:36 (“[a]dditional special effects may be achieved”)
(emphasis added); 5:44-45 (“[t]he structure of claim 8 further comprising shifting
means for selectively shifting the film.”).
Claim 2 [2.0] Claim 13 [13.0]
The Lekowski combinations discussed herein meet the limitation requiring
the abrasive coating to be sandpaper because Spears discloses that the roughened
surfaces of the clamping side of the retention members can be “a glued-on material
such as sandpaper,” or “[a] coating such as synthetic plastic or rubber composition
mixed with sand, metallic particles, or the like.” Ex. 1017 at 2:30-34. Regardless,
it would have been obvious to a POSITA to have the abrasive coating be
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sandpaper, given the ease with which it can be adhered to surfaces. Ex. 1007 at ¶
187. See also V.D.1 [2.0, 13.0], V.D.2 [1.7.1.1, 10.7.1.1] supra.
Claim 3 [3.0] Claim 14 [14.0] The Lekowski combinations described in [1.7.2] supra, meet this limitation
of having the retention members with respective collocated openings and clamping
members. For the Lekowski/Spears/Bailey combination, Lekowski’s clamps 68
have openings that collocate with holes in film 45 to allow a screw to pass through
the film 45. Ex. 1006 at 3:47-49. The screw necessarily passes through openings
in the clamp 68 that collocate with respective openings in the screen in order to
adjust the spacing between the fingers to capture the film, similar to the screw and
holes of the clamp 66 depicted in Lekowski’s FIG. 4. Ex. 1007 at ¶ 222.
The Lekowski/Spears/Bailey/Stableford combination described in [1.7.2],
supra, meets the limitation because Stableford’s stretcher bars e have holes where
bolts pass through the bars to secure the foil to the stretcher bars. Ex. 1004 at p. 3,
ll. 1-5; FIGs. 1, 4; Ex. 1007 at ¶ 222.
[3.1] [14.1]
The Lekowski/Spears/Bailey combination meets the limitation of having
bolts pass through the retention members because Lekowski’s clamps 68 have
openings allowing screws 90 to pass through film 45. Ex. 1006 at 3:47-49; Ex.
1007 at ¶ 222. The Lekowski/Spears/Bailey/Stableford combination described in
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V.D.2 [1.7.2], supra, meets the limitation of having the bolts pass through
retention members because Stableford discloses that stretcher bars e that have
holes where bolts pass through the bars and the screen b to secure the screen to the
stretcher bars. Ex. 1004 at p. 3, ll. 1-5. See also V.D.1 [1.7, 10.7], and V.B.2,
supra.
Claim 4 [4.0] Claim 15 [15.0]
See V.D.2 [1.5.1, 10.5.1], supra.
[4.1] [15.1] such that the screen is substantially wrinkle free;
The beam splitter 44 in Lekowski is held rigidly and substantially wrinkle
free by clamps 66 and 68 which are also attached to frame 51. Ex. 1006 at 3:61-65
(describing that beam splitter is held rigidly within the frame); see rigid beam
splitter 44 in FIG. 2; see also id. at 2:28-34 (describing that beam splitter can be
glass, which is inherently rigid, or polymeric film, which must be held
substantially wrinkle free to act as an effective beam splitter); Ex. 1007 at ¶ 202.
Claim 5 [5.0] Claim 16 [16.0]
It would have been obvious for a POSITA to make Lekowski’s screen 54
pigmented in order to reduce unwanted reflections that cause halation or a fog-like
appearance or other distortions of the perceived image. Ex. 1007 at ¶¶ 193-194.
See V.D.1 [5.0, 16.0], supra.
Claim 6 [6.0] Claim 17 [17.0]
See V.D.1 [5.0, 6.0, 16.0, 17.0], supra.
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Claim 7 [7.0] Claim 19 [19.0]
See V.D.2 [1.3] [10.3], supra. The Lekowski combinations satisfy this
limitation because Lekowski discloses lights on the stage’s sides with varying light
intensity levels. Id. at 4:2-5 (describing scrim and lighting arrangements that can
make the stage’s lateral zones visible to the audience); see FIG. 2. Regardless, it
would have been obvious to a POSITA to position lighting in the part of the stage
lying behind the screen so as to introduce illumination in selective ways to draw
attention to or away from specific areas, including behind the screen, to support a
presentation. Ex. 1007 at ¶¶ 204-205.
Claim 8 [8.0] Claim 20 [20.0]
The Lekowski combinations meet this limitation. See V.D.1 [8.0, 20.0] and
V.D.2 [1.7.1.1, 10.7.1.1], supra.
Claim 9 [9.0] Claim 18 [18.0]
See V.D.2 [1.1, 10.1], supra.
Claim 11 [11.0] Claim 12 [12.0]
See V.D.2 [1.7.2], supra.
In sum, claims 1-4, 7-15 and 18-20 are obvious over Lekowski, Bailey,
Stableford and Spears, and claims 5, 6, 16 and 17 are obvious over Lekowski,
Bailey, Stableford, Spears and Marks.
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VI. CONCLUSION
For the reasons set forth above, claims 1-20 of the ‘361 Patent are
unpatentable under 35 U.S.C. § 103(a). Petitioner therefore respectfully requests
that the Board institute the requested inter partes review.
Dated: April 21, 2015 Respectfully submitted,
/David H. Ben-Meir/ David H. Ben-Meir (Reg. No. 46,152) NORTON ROSE FULBRIGHT US LLP 555 South Flower Street, Forty-First Floor Los Angeles, CA 90071 Tel: 213.892.9202 Fax: 213.892.9494 david.ben-meir@nortonrosefulbright.com Lead Counsel for Petitioner Cirque du Soleil My Call, L.L.C.
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CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. § 42.6(e) and 37 C.F.R. § 42.105(a), the undersigned
certifies that on April 21, 2015, complete copies of this Petition for Inter Partes
Review and all exhibits were served on Patent Owner at the correspondence
addresses of record listed below (a February 16, 2015 Request for Withdrawal as
Attorney or Agent and Change of Correspondence Address is currently pending
but has not been granted and is therefore not effective) by FEDEX PRIORITY
OVERNIGHT®:
McClure, Qualey & Rodack, LLP 3100 Interstate North Circle, Suite 150 Atlanta, GA 30339
/David H. Ben-Meir/ David H. Ben-Meir (Reg. No. 46,152) Attorney for Petitioner Cirque du Soleil My Call,
L.L.C.