UNITED STATES PATENT AND TRADEMARK OFFICE

________________
BEFORE THE PATENT AND TRIAL APPEAL BOARD
________________
GALAXIA ELECTRONICS CO., LTD.
Petitioner
v.
REVOLUTION DISPLAY, INC.
Patent Owners
________________
Patent No. D736,750
________________
PETITION FOR POST-GRANT REVIEW
OF U.S. PATENT NO. D736,750

3271143.6

TABLE OF CONTENTS
Page
I.

INTRODUCTION .............................................................................................................. 1

II.

STANDING AND PROCEDURAL STATEMENTS ........................................................ 1

III.

MANDATORY NOTICES ................................................................................................. 2

A.

Real Party-in-Interest (37 C.F.R. 42.8(b)(1)) ...................................................... 2

B.

Related Matters (37 C.F.R. 42.8(b)(2))................................................................ 2

C.

Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3)) ............................................. 2

D.

Service Information (37 C.F.R. 42.8(b)(4)) ......................................................... 3

IV.

STATEMENT OF PRECISE RELIEF REQUESTED ....................................................... 3

V.

750 PATENT BACKGROUND AND RELEVANT FIELD............................................ 3

A.

Overview of the 750 Patent ................................................................................... 3

B.

Relevant Field ......................................................................................................... 8

VI.

CLAIM CONSTRUCTION .............................................................................................. 10

VII.

DETAILED EXPLANATION OF INVALIDITY ........................................................... 10

A.

Lack of Ornamentality .......................................................................................... 11

B.

Improper Naming of Inventors ............................................................................. 28

VIII. CONCLUSION ................................................................................................................. 33

3271143.6

Table of Exhibits
Exhibit No.

Description

1001

U.S. Design Patent No. D736,750

1002

Declaration of Sang-Beom Kim

1003

April 29, 2010 Exclusive Agreement

1004

PowerPoint deck entitled, NEW LED Display Concept, dated

June 25, 2013

1005

PowerPoint deck entitled, NEW LED Display Concept LV-9,

dated October 23, 2013

1006

October 24, 2013 Email from Henry Ambrose

1007

SolidWorks 3D drawing dated November 8, 2013

1008

PowerPoint deck entitled, New LED Display Concept LV-9,

dated November 14, 2013

1009

November 2013 Email chain among Galaxia and VER personnel

1010

December 2013 Email chain among Galaxia and VER personnel

1011

PowerPoint deck entitled, New LED Display Concept LW9,

dated December 3, 2013

1012

3D drawing dated December 5, 2013

1013

December 5, 2013 Email from HS Moon to Henry Ambrose and

Jeremy Hochman

1014

PowerPoint deck entitled, New LED Display Concept Frame,

dated December 17, 2013

1015

December 17, 2013 Email from HS Moon to Henry Ambrose and

Jeremy Hochman

ii

I.

INTRODUCTION
Galaxia Electronics Co., Ltd. (Galaxia or Petitioner) requests post-grant

review of the claim of U.S. Patent No. D736,750 (Ex. 1001, the 750 Patent),
and cancellation of the claim as unpatentable under 35 U.S.C. sections 101 and 171
for (i) lacking ornamentality and (ii) failing to name the correct inventors. This
Petition demonstrates that it is more likely than not that the claim of the 750
Patent is unpatentable. 37 C.F.R. 42.208.
As an initial matter, the design claimed by the 750 Patent lacks
ornamentality, as it was dictated entirely by functional considerations and is
primarily functional. The claim of the 750 Patent is therefore not directed at
patentable subject matter. It should be invalidated on that basis.
Furthermore, the design claimed in the 750 Patent was jointly conceived
and reduced to practice by employees of Petitioner Galaxia. But the 750 Patent
names only Jeremy Hochman and Henry Ambrose as the inventors, and fails to
name all of the joint inventors. The 750 Patent should be invalidated as a result.
II.

STANDING AND PROCEDURAL STATEMENTS

Petitioner certifies pursuant to 37 C.F.R. section 42.204(a) that the 750

Patent is available for post-grant review and that Petitioner is not barred or
estopped from requesting post-grant review of the 750 Patent. This Petition is

also filed within nine months from the August 18, 2015 issue date of the 750
Patent.
Petitioner files this petition in accordance with 37 C.F.R. section 42.206(a),
and files concurrently with this petition a Power of Attorney and an Exhibit List
pursuant to 37 C.F.R. sections 10(b) and 42.63(e), respectively.
The required fee is paid via online credit card payment.
III.

MANDATORY NOTICES
A.

Real Party-in-Interest (37 C.F.R. 42.8(b)(1))

Petitioner is the real party-in-interest.

B.

Related Matters (37 C.F.R. 42.8(b)(2))

On information and belief, there are no judicial or administrative matters

involving the 750 Patent.
C.

Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3))

Lead Counsel

Back-Up Counsel

Robert Rose
Reg. No. 47,037
Law Office of Robert Rose
PO Box 301272
Escondido, CA 92030-1272
Phone: (626) 768-0876
Fax: (626) 768-7654
robert.rose@mac.com

Timothy Yoo
(Pro Hac Vice)
Bird, Marella, Boxer, Wolpert, Nessim,
Drooks, Lincenberg & Rhow, P.C.
1875 Century Park East, 23rd Floor
Los Angeles, CA 90067
Phone: (310) 201-2100
Fax: (310) 201-2110
tyoo@birdmarella.com

D.

Service Information (37 C.F.R. 42.8(b)(4))

Petitioner consents to service by e-mail at the addresses of counsel provided

above.
IV.

STATEMENT OF PRECISE RELIEF REQUESTED

Pursuant to 37 C.F.R. section 42.22(a), Petitioner states that the claim of the

750 Patent is unpatentable under 35 U.S.C. sections 101 and 171 for (i) lacking
ornamentality and (ii) failure to name the correct inventors. Petitioner seeks
cancellation of the claim. Petitioners full statement of the reasons for the relief
requested is set forth in detail in Section VII below.
V.

750 PATENT BACKGROUND AND RELEVANT FIELD

A.

Overview of the 750 Patent

The 750 Patent (Ex. 1001) is entitled Modular Video Support Frame
Member. It issued on August 18, 2015, from Application Ser. No. 29/481,243
(the 243 Application), filed February 3, 2014. The 750 Patent claims what it
purports to be an ornamental design for a modular video support frame member
represented by the following figure:

(Ex. 1001 at 2.) The 750 Patent contains 6 other figures, FIGS. 2-7, ostensibly
directed at top, side, front, and back perspectives of the claimed design. FIG. 2 is
an enlarged perspective view of a portion of the claimed design:

(Ex. 1001 at 3.) A front perspective of the claimed design is shown in FIG. 4:

(Ex. 1001 at 5.) FIG. 5 and FIG. 6 are top and side views, respectively:

(Ex. 1001 at 6.) As seen in the Figures, the claimed design is essentially a
rectangle-shaped support frame with four corner blocks at the vertices and two
mid-frame support units centered along the long axis of the rectangle. As
demonstrated below, the look of those individual elementsas well as the look of
the entire support frameis dictated by its functionality.

B.

Relevant Field

The video support frame memberthe purportedly ornamental design of

which is claimed in the 750 Patentis used in connection with large-scale LED
video image displays. These displays are found, among other places, on the sides
of buildings, in amusement parks, and on-stage at concerts or other live events:

Given their size, these large LED displays are comprised of smaller tiles
(e.g., individual video support frame members that are usually no more than 60 cm
x 120 cm) fastened together to form a larger support frame:

In designing the component tiles embodying the claimed design, it was

important for them to be easily portable (i.e., lightweight), stackable, and
structurally sound. (Ex. 1002, 6.) After all, the tiles were designed to be
transported from site to site, as part of outdoor touring displays. It was therefore
important for them to be as lightweight as possible while maintaining structural
integrity. They also had to take up as little space as possible when stacked (i.e.,
minimal bulk).
The tiles were also designed so they could be assembled (and disassembled)
easily and interchangeably. (Id.) This required symmetry in the overall rectangle
shape as well as a congruence of the corner units where the tiles are fastened. In
other words, each of the four corner units had to be identical so that the tiles could
be assembled at the vertices both easily and interchangeably:

Each tile also had to support its own individual power-supply unit (PSU) to
power the LED lights, so that if one tile lost power, it could be contained without a
resulting loss of power to the entire LED display.
VI.

CLAIM CONSTRUCTION
Pursuant to 37 C.F.R. section 42.100(b), the challenged claim shall be

given its broadest reasonable construction in light of the specification of the patent
in which it appears. See also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271,
1278-83 (Fed. Cir. 2015).
The language of the challenged claim does not need to be construed for
purposes of the invalidity ground set forth in this petition. The claim language
should therefore be given its plain meaning to a person of ordinary skill in the art.
VII. DETAILED EXPLANATION OF INVALIDITY
The claim of the 750 Patent is unpatentable under 35 U.S.C. sections 101
and 171 for (i) failing to name the correct inventors and (ii) lacking ornamentality.
10

First, the claimed design lacks ornamentality, as it is primarily functional.

The claim of the 750 Patent is therefore not directed at patentable subject matter,
and it should therefore be invalidated.
Second, the design claimed in the 750 Patent was jointly conceived and
reduced to practice by employees of Petitioner Galaxia. But the 750 Patent names
only Jeremy Hochman and Henry Ambrose as the inventors, and fails to name all
of the joint inventors. The 750 Patent should be invalidated as a result.
A.

Lack of Ornamentality
1.

Applicable Law Regarding Ornamentality

To be patentable under 35 U.S.C. section 171, a design must be primarily

ornamental. See M.P.E.P. 1504.01(c). That is, it must have been created for
the purpose of ornamenting and cannot be the result or merely a by-product of
functional or mechanical considerations. Id.
Based on this requirement, a design patent can be declared invalid if the
claimed design is primarily functional rather than primarily ornamental, i.e., if
the claimed design is dictated by the utilitarian purpose of the article. High
Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013)
(citations omitted).
In determining whether a design is primarily functional or primarily
ornamental the claimed design is viewed in its entirety, for the ultimate question is

11

not the functional or decorative aspect of each separate feature, but the overall
appearance of the article, in determining whether the claimed design is dictated by
the utilitarian purpose of the article. See L.A. Gear Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117, 1123 (Fed. Cir. 1993).
2.

Claim: The ornamental design for a modular video

support frame member, as shown and described.

The claim of the 750 Patent should be invalidated since the claimed design
is primarily functional instead of being primarily ornamental. The design as a
whole is dictated by function, not by ornamentation. For instance, there is nothing
in the development of the underlying video support frame member indicating that a
design choice was made for the purpose of ornamenting. In fact, the obverse is
true: each of the design choices was expressly dictated by functional
considerations.
a.

Background of Development

As background, the named inventors on the 750 Patent, Jeremy Hochman

and Henry Ambrose, are employed by a company named Video Equipment Rentals
(VER). On information and belief, VER owns Revolution Display, Inc., the
exclusive assignee of the 750 Patent. Irrespective of the relationship between
those two entities, however, Petitioner Galaxias employees collaborated with Mr.

12

Hochman and Mr. Ambrose to develop the video support frame member illustrated
in FIGS. 1-7 of the 750 Patent. (Ex. 1002, 4.)
Galaxia and VER entered into an exclusive agreement on April 29, 2010,
under which Galaxia agreed to supply to VER its proprietary WinVision products
for a period of five years. (Ex. 1003.) That agreement remains the only
contractual arrangement between Galaxia and VER. (Ex. 1002, 4.) It does not
contain a provision about the joint development of intellectual property.1
b.

Joint Development with Petitioner

In mid-2013, Galaxia and VER began discussing the development of a new

outdoor touring video support frame directed at transporting large-scale displays
from site to site. Galaxia and VERs representatives, including named inventors
Jeremy Hochman and Henry Ambrose, met at InfoComm 2013 in Orlando,
Florida to discuss development. (Id., 5.) At that time, VER requested a support
frame, appropriate for outdoor touring use, capable of supporting a 5,000-nit2 light
display while weighing no more than 9-10 kilograms per square meter. (Id., 6.)
In other words, one of the principal utilitarian considerations for the support
frame member was that it had to be lightweight. It also had to be durable, since it
1

In fact, the only provision regarding intellectual property relates to Galaxia

granting a limited license to VER to use Galaxias WinVision trademark during the
term of the agreement.
2

A unit of light intensity.

13

was to be used for outdoor touring. It is axiomatic that the frames also had to be
designed so that they could combine with other frames easily to form the larger,
transportable LED display comprising multiple frames.
Galaxia proposed the basic design and concept of the new video support
frame member in October 2013. (Id., 7.) On or around October 23, 2013, it
presented Mr. Hochman and Mr. Ambrose a PowerPoint deck entitled, New LED
Display Concept LV-9, which contained an early version of the basic design:

(Ex. 1002; Ex. 1005.3) Galaxia proposed the use of carbon fiber tubes for the outer
frame, because of their light weight and durability. (Ex. 1002, 8.)

The contents of the deck New LED Display Concept LV-9 were essentially
coextensive with the PowerPoint deck entitled, New LED Display Concept,
which is dated June 25, 2013 (see Ex. 1004).

14

On or around October 24, 2013, Galaxia employees HS Moon, Sang-Beom

Kim, and JJ Jung had a teleconference with Henry Ambrose and Jeremy Hochman
in which Mr. Ambrose suggested some modifications to the initial proposed
design. (Id., 9; Ex. 1006.) Among other things, Mr. Ambrose suggested moving
the placement of the power-supply unit (PSU)and the corresponding PSU bus
bartoward the center of the frame as follows:

In an October 24, 2013 follow-up email from Henry Ambrose documenting

the conference call, Mr. Ambrose acknowledged that VER had reviewed the
Power Point of the NEW LED CONCEPT LV-9 Dated 10-23-2013[.] (Ex. 1006
at 3.) Mr. Ambrose also wrote that he was encouraged about the reductions in
bulk and weight and was committed to work[ing] together with Galaxia

15

Engineers to achieve a competitive product solution. (Id.) Mr. Ambrose also

commented that VER was willing to assist in the development of the mechanics
of the frame in order to expedite Galaxias design of the tile. (Id. at 4.)
On or around November 14, 2013, Galaxia presented Mr. Hochman and Mr.
Ambrose a revised PowerPoint deck entitled, New LED Display Concept LV-9,
which contained among other revisions the design of the mid-frame portion
directed at mating with the PSU bus bar:

(Ex. 1008 at 7.)

16

(Ex. 1008 at 2.) Importantly, the design of this mid-frame portion is identical to
the corresponding portion claimed by the 750 Patent:

17

(Ex. 1001 at 2.) That is, Galaxia proposed the design of this mid-frame portion,
and it was adopted wholesale into the final design without any further input from
Mr. Hochman or Mr. Ambrose.
Also as part of the November 14, 2013 presentation, Galaxia presented its
initial proposed design for the corner block, which is directed at allowing the frame
to be combined with other frames to form a larger display support frame:

(Ex. 1008 at 7.) The divots in the corner block were contemplated in order to
reduce the weight of the overall frame (by allowing a reduction in mass without
any appreciable loss in durability). (Ex. 1002, 12.) The hollowed-out divots
were to be filled in with epoxy and painted over, in order to reduce mass. (Id.)
Again, Galaxia proposed the use of a carbon fiber tube for the outer frame.
The reasons were twofold. First, the tubular shape allowed for easier assembly,

18

since the circular end shape allows the tube to be inserted into the corner blocks
without regard to orientation (as opposed to, say, with a rectangular end shape).
Second, the carbon fiber tubes were readily available, since they are commonly
used for other applications, such as in fishing rods. (Id., 13.)
In a subsequent email exchange among Mr. Hochman, Mr. Ambrose, and
Galaxias HS Moon and JJ Jung, among others, the parties discussed the design
further. (Ex. 1009.) For instance, in a November 16, 2013 email to HS Moon and
JJ Jung, Mr. Ambrose noted the need to make improvements on weight
reduction[.] (Id. at 2.) He also requested a modification in the tiles design to
allow it to be assembled in a curved display. He suggested introducing some
amount of taper to the Corner Blocks . . . . (Id.)
Galaxias HS Moon responded on November 17, 2013 that Galaxias
mechanic engineering team was working on a proposed solution. In the
meantime, he pointed out that the contemplated solution would allow for curvature
up to 15 degrees. He also proposed using a detachable plate to connect the tiles
as opposed to creating two separate versions of the tile (one allowing for curvature
and one for flat displays). This was because of concerns about the uniformity in
flatness of the tiles, i.e., concerns about stackability and interchangeability if the
tile design was altered. (Ex. 1009 at 1.) So instead of altering the design of the

19

corner blocks, he suggested using a detachable plate that could be altered to deal
with occasional needs. (Id.)
In a November 18, 2013 email, Jeremy Hochman interposed his comments,
offering that the corner block could be retained as proposed by Galaxia, but with
taper to the side added. (Ex. 1009 at 1.) Galaxias HS Moon responded that
Galaxia would keep the current corner block in all cases. In other words,
Galaxia would keep the corner blocks uniform for all versions of the tile, and
instead design a detachable plate that could be used to connect the tiles together,
whether in a flat or curved configuration.
On November 24, 2013, Galaxia and VERs representatives met at the Live
Design International Show (LDI) in Las Vegas to discuss the design further. (Ex.
1002, 15.) Galaxia also showed VER a physical sample of the proposed design.
Henry Ambrose sent an email on December 2, 2013 partially recapping what was
discussed at that meeting. (Ex. 1010.) In that email, among other things, Mr.
Ambrose discussed the placement of the PSU units. (Id. at 1.) He also requested
the 3D Model and latest E-Drawing from Galaxia. (Id.) He noted that the
overall impression of the Winvision Air sample received at LDI was very
positive. (Ex. 1010 at 1.)

20

Galaxia proposed a revised tile design in a December 3, 2013 PowerPoint

deck entitled, New LED Display Concept LW9. (Ex. 1011.) In that deck, the
proposed design of the corner block was as follows:

(Ex. 1011 at 5.)

The corner block design was revised further in a subsequent December 17,
2013 PowerPoint deck entitled, New LED Display Concept Frame, which was
sent to Henry Ambrose and Jeremy Hochman by email. (Exs. 1014-15.) The
corner block was slightly altered so it could mate with an attaching block:

21

(Ex. 1014 at 3.) The attaching block (Spider Block) is used to attach the corner
blocks of up to four tiles together, as follows:

22

(Id.) Importantly, this corner block design is substantially similar, if not identical,
to the corner block design claimed by the 750 Patent:

(Ex. 1001 at 3.)

c.

Functional Design

As evident above, each design choice in the video support frame member
was dictated by functional considerations. The claimed design is essentially a
rectangle-shaped support frame with four corner blocks and two mid-frame support
units. The look of those individual elementsas well as the look of the entire
support frameis dictated by its functionality. By way of example, two of the
most important functional considerations in the design of the video support frame
member were (1) the frame had to be lightweight and (2) the frame had to be
uniform (i.e., interchangeable).

23

Because weight reduction was such an important consideration, the video

support frame required a reductive design, i.e., using the least amount of material
possible to achieve its purpose. This reductive design is evident in the design of
the corner block:

(Ex. 1014 at 3.) The outer shape of the corner block was designed so that it could
mate with the Spider Block while the boundaries (i.e., mating surface) of the
corner block remained entirely coterminous with the boundaries of the Spider
Block. That way, the bare minimum of materials could be used, thereby
minimizing the weight of the frame. For instance, the semi-circular portion of the
corner block protruding at the vertex was placed to accommodate mating with the
corresponding fastening bolt on the Spider Block, as follows:

24

Hence, the corner block is shaped the way it is because of functionalnot

ornamentalconsiderations.
Likewise, the hollowed-out bevels were placed in the corner block in order
to reduce weight. The idea was to fill the bevels with epoxy (similar to how a
baseball batter might hollow out a bat and fill it with cork to reduce weight while
maintaining surface area). (Ex. 1002, 12.) In other words, they were not placed
there for the purpose of ornamenting.
Similarly, the overall shape of the video support frame is dictated entirely by
the functional consideration of uniformity. Because each video support frame
member is a smaller part of a larger displaythat is, the frames have to be
combined togetherit is important that they are uniform and interchangeable.
This impels a rectangular shape, since the symmetric shape allows one particular
tile to be replaced easily with another tile in a larger rectangular display:

25

Moreover, the two mid-frame portions were placed to support the PSU bus
bar running along the center of the long axis of the frame. Neither was placed
there for the purpose of ornamenting. As shown above, each support frame has its
own PSU to power the LED lights in its segment of the display. Those PSUs sit on
a bus bar that is connected to the support frame member using the mid-frame
portions. The placement and detachability of the PSUs were significant functional
considerations in the design of the support frame. (See, e.g., Ex. 1006 at 3 (It was
noted that the existing location of the PSU/Controller might interfere with the VER
Touring Frame. . . . The possibility of a detachable PSU was discussed to allow the
option of a smaller PSU in the case that only indoor Brightness is required and the
priority is reduced weight.).) The placement and look of the mid-frame portions
were therefore dictated by function.

26

Finally, even the tubular shape of the outer frame was dictated by function
and practicality. Again, the tubular shape allows for easier assembly, since a
circular end shape allows the tube to be inserted into the corner blocks irrespective
of precise orientation. (Ex. 1002, 13.) Further, carbon fiber tubes can be readily
acquired, since they are already used for other applications, such as for fishing
rods. (Id.)
Tellingly, in the various communications between Galaxia and VER about
alterations to the design of the support frame, the two sides discussed among other
things weight and bulk reduction (Ex. 1006 at 3), the placement of the PSU unit
(id.; Ex. 1010 at 1), altering the shape of the corner block to allow for a curved
display (Ex. 1009 at 1), and the mechanism whereby the support frame could
attach with other components (Ex. 1010 at 1). There was never any discussion
about how to make the frame look prettier or distinctive.
In sum, the claimed design is dictated by the utilitarian purpose of the
article. Nothing about the overall shape or the design and placement of individual
elements, for instance, was motivated by an ornamental purpose. Therefore, the
claimed design is primarily functional and cannot be the subject of a design patent.

27

B.

Improper Naming of Inventors

1.

Applicable Law Regarding Inventorship

The patent laws require the naming of the actual inventor or joint inventors
of the claimed subject matter. M.P.E.P. 2157; see 35 U.S.C. 115(a) ([a]n
application for patent . . . shall include, or be amended to include, the name of the
inventor for any invention claimed in the application). All joint inventors are
required to be named jointly on a patent application. 35 U.S.C. section 116
provides that when an invention is made by two or more persons jointly, they
shall apply for patent jointly . . . . 35 U.S.C. 116. Inventors may apply for a
patent jointly even though (1) they did not physically work together or at the same
time, (2) each did not make the same type or amount of contribution, or (3) each
did not make a contribution to the subject matter of every claim of the patent. Id.
When a patent does not name the correct inventors, it should be invalidated under
35 U.S.C. section 101. See M.P.E.P. 2157.
For individuals to be considered joint inventors, there must be some
quantum of collaboration or connection. M.P.E.P. 2137.01. For persons to
be joint inventors under Section 116, there must be some element of joint behavior,
such as collaboration or working under common direction, one inventor seeing a
relevant report and building upon it or hearing anothers suggestion at a meeting.

28

Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 916-17
(Fed. Cir. 1992).
2.

Joint Inventorship

The design claimed by the 750 Patent was jointly conceived by Petitioner
Galaxias employees. Petitioner Galaxia made substantial contributions to the
development of the design claimed in the 750 Patent. As demonstrated above,
Petitioner Galaxia and its employees did not merely assist the research &
development (R&D) process, but actually reduced ideas to practice through
experiments, testing, and working up various prototype designs.
For instance, during the collaboration process, Galaxia mocked up various
proposed designs using a 3D-rendering program such as SolidWorks, and then
shared those designs with VER as necessary or requested. (Ex. 1002, 10.) By
way of example, an early prototype of the subject design, rendered on SolidWorks
and dated November 8, 2013, is substantially similar to the design claimed in the
750 Patent:

29

(Ex. 1007.) Likewise, a SolidWorks model rendered by Galaxia, dated December

5, 2013, which was sent by email to Henry Ambrose and Jeremy Hochman (Ex.
1013), is substantially similar to the claimed design:

30

(Ex. 1012.) And as demonstrated above, it was Galaxias employees who

independently conceived, reduced to practice, and communicated to VER the look
of at least the mid-frame PSU support units (Ex. 1008) and the corner blocks (Ex.
1014 at 3).
Moreover, none of this was done pursuant to a contractual work-for-hire
arrangement or understanding. Throughout, Mr. Ambrose and Mr. Hochman were
aware of the collaborative nature of the relationship. By way of example, in an
October 24, 2013 email, Henry Ambrose underscored that the purpose of an earlier
teleconference was to review and share ideas about the proposed design of a new
Lightweight 9mm Tile . . . . (Ex. 1006 at 3) (emphasis added). Again, he also

31

emphasized that VER was committed to work[ing] together with Galaxia

Engineers to achieve a competitive product solution. (Id.) Similarly, Mr.
Ambrose invited the Galaxia team to explore possible methods for allowing the
support frames to be hung in curved configurations. (Ex. 1009 at 2.)
In sum, there was an iterative design process in which Petitioner Galaxia
actively participated. There was more than a modicum of collaboration insofar as
there are elements of the claimed design that Galaxia contributed entirely
independently while there are others it contributed in conjunction with Mr.
Hochman and Mr. Ambrose. For example, as illustrated above, the way the
claimed design was reduced to practice was through a collaborative process
involving various teleconferences, in-person meetings, and exchanges of prototype
designs. Throughout, Mr. Hochman and Mr. Ambrose received significant input
from Petitioner Galaxias employees, including especially HS Moon, JJ Jung, and
Sang-Beom Kim. Accordingly, those individuals are joint inventors of the claimed
design.
The 750 Patent, however, only names Mr. Hochman and Mr. Ambrose as
the inventors. Therefore, the 750 Patent should be invalidated for nonjoinder of
all of the joint inventors.

32

VIII. CONCLUSION
For all of the foregoing reasons, Petitioner respectfully requests post-grant
review of the claim of the 750 Patent and cancellation of the claim.

Respectfully submitted,
Date: May 18, 2016
Law Office of Robert Rose
PO Box 301272
Escondido, CA 92030-1272
Phone: (626) 768-0876
Fax: (626) 768-7654

/ Robert Rose #47037/

Robert Rose
Reg. No. 47,037
Attorney for Petitioner
Galaxia Electronics Co., Ltd.

33

CERTIFICATE OF SERVICE
The undersigned hereby certifies that (1) the above captioned PETITION
FOR POST-GRANT REVIEW OF U.S. PATENT NO. D736,750 (2) copies of
Exhibit Nos. 1001 to 1015 and (3) PETITIONERS POWER OF ATTORNEY
were served via FedEx on May 18, 2016 at the official correspondence address for
the attorney of record for U.S. Patent No. D736,750 as shown in the USPTO PAIR
system:
Downs, Rachlin, Martin PLLC
199 Main Street
P O Box 190
Burlington VT 05402-0190
Date: May 18, 2016
Law Office of Robert Rose
PO Box 301272
Escondido, CA 92030-1272
Phone: (626) 768-0876
Fax: (626) 768-7654

3271143.6

/Robert Rose #47037/

Robert Rose
Reg. No. 47,037
Lead Counsel for Petitioner
Galaxia Electronics Co., Ltd.