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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`XILINX, INC.
`Petitioner
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`v.
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`INTELLECTUAL VENTURES I LLC
`Patent Owner
`
`__________________
`
`Case IPR2013-00029
`Patent 5,632,545
`____________________
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`
`
`INTELLECTUAL VENTURES’ PATENT OWNER RESPONSE PURSUANT
`TO 37 C.F.R. § 42.120
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`
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`I.
`
`II.
`
`Table of Contents
`
`INTRODUCTION............................................................................................................. 1
`
`OVERVIEW OF U.S. PATENT NO. 5,632,545............................................................. 2
`
`III. THE BOARD DECISION ENTERED MARCH 12, 2013............................................ 5
`
`IV. CLAIM CONSTRUCTION ............................................................................................. 6
`A.
`Claims 1-3 are directed to a “video projector system”...................................... 7
`B.
`Claims 1-3 require a “light-shutter matrix system” .......................................... 8
`C.
`Claims 1-3 require a “video controller”............................................................ 13
`D.
`Claims 1-3 require “equivalent switching matrices”....................................... 15
`
`V.
`
`THE BOARD SHOULD FIND CLAIMS 1-3 PATENTABLE IN VIEW OF
`XILINX’S PROPOSED CHALLENGES..................................................................... 16
`A.
`Challenge #1: Alleged anticipation by Flasck ................................................. 16
`B.
`Challenge #2: Alleged obviousness in view of Flasck ..................................... 16
`1.
`Flasck does not teach a “video projector system” .................................... 16
`2.
`Flasck does not teach the claimed “light-shutter matrix system”............. 25
`3.
`Flasck does not teach the claimed “video controller adapted for
`controlling the light-shutter matrices” ...................................................... 34
`Challenge #3: Alleged obviousness in view of Takanashi and Lee................ 36
`1.
`Takanashi and Lee do not teach the claimed “light-shutter matrix
`system”...................................................................................................... 36
`Takanashi and Lee do not teach the claimed “video controller
`adapted for controlling the light-shutter matrices” ................................... 40
`Takanashi and Lee do not teach the claimed “equivalent switching
`matrices” ................................................................................................... 46
`Challenge #4: Alleged obviousness of Claims 2 and 3 in view of
`Takanashi, Lee, and Irwin ................................................................................. 49
`
`C.
`
`D.
`
`2.
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`3.
`
`VI. CONCLUSION AND RELIEF REQUESTED ............................................................ 50
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`Table of Authorities
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`
`
`
`FEDERAL CASES
`
`DePuy Spine, Inc. v. Medtronic SofamorDanek, Inc.,
`567 F.3d 1314 (F.C. 2009)............................................................................................. 5, 33-35
`
`Diamond v. Diehr,
`450 U.S. 175,188-89, 209 USPQ 1 (1981) ..............................................................................12
`
`In re John B. Sullivan et al.,
`498 F.3d 1345 (Fed. Cir. 2007)............................................................................................5, 35
`
`In re Peterson,
`315 F.3d 1325 (Fed. Cir. 2003)............................................................................................5, 35
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)............................................................................................5, 12
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)..............................................................................................5, 12
`
`W.L. Gore & Associates,Inc. v. Garlock, Inc.,
`721 F.2d 1540, 220 USPQ 303 (Fed.Cir. 1983) ..................................................................5, 33
`
`FEDERAL STATUTES
`
`35 U.S.C. § 103(a) .....................................................................................................................5, 55
`
`REGULATIONS
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`37 C.F.R. § 42.100(b) ................................................................................................................6, 12
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
`
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`I.
`
`INTRODUCTION
`The petitioner Xilinx, Inc. (hereinafter “Xilinx”) initiated the present inter
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`partes review proceeding on October 19, 2012 by filing a petition for inter partes
`
`review. In its petition, Xilinx argued that the claims of U.S. Patent No. 5,632,545
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`(hereinafter “the ‘545 patent”) are unpatentable on four different grounds. On
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`January 23, 2013, patent owner filed a patent owner preliminary response in
`
`response to Xilinx’s petition. In the patent owner preliminary response, patent
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`owner argued that the references relied upon in Xilinx’s petition fail to disclose or
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`suggest several elements required by the claims of the ‘545 patent. Upon
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`consideration of Xilinx’s petition and the patent owner preliminary response, the
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`Patent Trial and Appeal Board (hereinafter “the Board”) issued a decision on
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`March 12, 2013. In its decision, the Board granted Xilinx’s petition in part,
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`thereby allowing the inter partes review to proceed to trial.
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`Both the petition filed by Xilinx and the decision by the Board rely on the
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`declaration of Dr. Buckman. Whatever may be Dr. Buckman’s amount of
`
`knowledge in the field of optics generally, it became apparent during Dr.
`
`Buckman’s deposition that he has less experience in the field of video projector
`
`systems. At page 27, lines 1-2 of the deposition transcript (Ex. 2004), Dr.
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`Buckman acknowledged that he has never “designed a projection system.” Dr.
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`Buckman also acknowledged that his curriculum vitae nowhere mentions the terms
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`“liquid crystal” or “video projection display” (deposition transcript at p. 8, line 24
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`– p. 9, line 6) and that he has never testified in a legal proceeding about liquid
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`crystal displays (deposition transcript at 9, lines 7-10). As discussed herein, patent
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`owner submits that several of the assertions made by Dr. Buckman in his
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`declaration are inaccurate or simply incorrect.
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`The present response explains in detail why Claims 1-3 of the ‘545 patent
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`are patentable in view of the challenges proposed by Xilinx in its petition.
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`Specifically, the present response discusses how the applied references fail to
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`disclose or suggest at least the claimed “light-shutter matrix system comprising a
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`number of equivalent switching matrices,” “video controller adapted for
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`controlling the light-shutter matrices,” and “lens system in the path of the separate
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`light beams” in a manner that renders the claims of the ‘545 patent unpatentable.
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`For the reasons discussed herein, patent owner submits that Claims 1-3 of the ‘545
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`patent are patentable and requests that the Board issue a final decision to that
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`effect.
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`II. OVERVIEW OF U.S. PATENT NO. 5,632,545
`The ‘545 patent is directed to a “color video projector system” with
`
`“separate light sources for producing separate beams of light which are passed
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`each first through color filters to provide separate color beams before being
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`processed by video-controlled light shutter matrices.” (Abstract.) The separate
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`beams of light are “combined into a single beam projectable to provide a full-color
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`video display with superimposed color spots.” (Id.)
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`The ‘545 patent has three granted claims, of which only Claim 1 is
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`independent. Claim 1 requires in part “a lens system in the path of the separate
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`light beams, adapted for focusing the beams.” Fig. 1 of the ‘545 patent, which is
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`reproduced below, illustrates the elements required by Claim 1.
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`
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`Claim 1 of the ‘545 patent requires, in part, “a light-shutter matrix system
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`comprising a number of equivalent switching matrices,” which is illustrated in Fig.
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`1 as element 120. For the reasons discussed herein, patent owner submits that the
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`claimed “light-shutter matrix system” should be interpreted as a two-dimensional
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`array of elements that selectively admit and block light. As also discussed herein,
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`patent owner submits that the claimed “equivalent switching matrices” should be
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`interpreted as switching matrices that are virtually identical in function and effect.
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`Claim 1 of the ‘545 patent also requires “a video controller adapted for
`
`controlling the light-shutter matrices.” With respect to the claimed “video
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`controller,” the ‘545 patent states:
`
`A video signal for the system is delivered from outside
`via link 125 into a controller 122. A great variety of
`different signal formats are known and can be
`implemented, both analog and digital, or any
`combination of several signals can be used. Controller
`122 controls the three monochrome matrices 117, 118,
`and 119.
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`(Col. 3, lines 13-18). For the reasons discussed herein, patent owner submits that
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`the broadest reasonable interpretation of the “video controller” element, in light of
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`the specification, is a component that controls light-shutter matrices to facilitate the
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`display of video in accordance with a video signal.
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`As will be shown, the Xilinx petition fails to prove any disclosure or
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`combination of disclosures that amount to “a light-shutter matrix system
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`comprising a number of equivalent switching matrices” or “a video controller
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`adapted for controlling the light-shutter matrices,” as required by Claim 1 of the
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`‘545 patent.
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`III. THE BOARD DECISION ENTERED MARCH 12, 2013
`On March 12, 2013, the Board entered a decision granting Xilinx’s petition
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`in part and denying Xilinx’s petition in part. Specifically, Xilinx’s petition was
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`granted with respect to Challenge #2 (i.e., that Claims 1-3 of the ‘545 patent are
`
`allegedly obvious in view of U.S. Patent No. 5,108,172 to Flasck) and with respect
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`to Challenge #3 (i.e., that Claims 1-3 of the ‘545 patent are allegedly obvious in
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`view of U.S. Patent No. 5,264,951 to Takanashi and U.S. Patent No. 5,287,131 to
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`Lee). Xilinx’s petition was denied with respect to Challenge #1 (i.e., that Claims
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`1-3 of the ‘545 patent are allegedly anticipated in view of U.S. Patent No.
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`5,108,172 to Flasck) and with respect to Challenge #4 (i.e., that Claims 2-3 of the
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`‘545 patent are allegedly obvious in view of U.S. Patent No. 5,264,951 to
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`Takanashi, U.S. Patent No. 5,287,131 to Lee, and U.S. Patent No. 5,784,038 to
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`Irwin).
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`As discussed herein, patent owner disagrees with several of the assertions
`
`made by the Board in its decision. Patent owner submits that the Board is not
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`bound by any of the findings in its March 12, 2013 decision because that decision
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`was a preliminary decision based only on facts available as of March 12, 2013.
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`The evidentiary record will continue to change and grow throughout the present
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`inter partes review. Patent owner submits that the Board’s final decision with
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`respect to Claims 1-3 of the ‘545 patent should be based on the complete
`
`evidentiary record and not on findings of the March 12, 2013 decision because, as
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`noted above, those findings were based on an incomplete evidentiary record.
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`IV. CLAIM CONSTRUCTION
`The words of a claim “are generally given their ordinary and customary
`
`meaning.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
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`1996). “[T]he ordinary and customary meaning of a claim term is the meaning that
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`the term would have to a person of ordinary skill in the art in question at the time
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`of the invention, i.e., as of the effective filing date of the patent application.”
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`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). The Board is
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`required to give a claim “its broadest reasonable construction in light of the
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`specification in which it appears.” 37 C.F.R. § 42.100(b). But a broadest
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`reasonable construction does not warrant ignoring express elements in a claim.
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`See, e.g., Diamond v. Diehr, 450 U.S. 175,188-89, 209 USPQ 1, 9 (1981) in which
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`the court found that “claims must be considered as a whole” and that “[i]t is
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`inappropriate to dissect the claims into old and new elements and then to ignore the
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`presence of the old elements in the analysis.”
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`As will be shown, several claim elements were not given their proper weight
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`
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`and interpretation in the Board decision entered March 12, 2013. In its final
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`decision, the Board should construe the terms “light-shutter matrix system,”
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`“equivalent switching matrices,” and “video controller” in accordance with the
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`interpretations proposed herein.
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`A.
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`Claims 1-3 are directed to a “video projector system”
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`The claims are directed to a “video projector system.” The term “video” is
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`important to understanding the distinction between the claims and the references
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`cited by petitioner. Video, according to the Wiley Encyclopedia of Electrical and
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`Electronics Engineering “is a time sequence of 2-dimensional frames (pictures).
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`… An analog TV signal is in an interlaced format consisting of 30 frames (60
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`fields) per second. ” (Ex. 2007 at page 166) In his deposition, Dr. Buckman
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`stated, with regard to the speed at which the frames need to be changed in order to
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`be considered video speed, that (Ex. 2004 at 12, lines 17-20):
`
`Video speed is a speed of refreshing of the image, the
`entire image, which is fast enough to be undetectable by
`the human eye, so it looks like a continuous -- a
`continuous picture.
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`The claims should be interpreted as a system enabling the projection of
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`video, meaning the projection of moving images that change fast enough to be
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`undetectable by the human eye. A projector is not a video projector if it is unable
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`to project moving images such that changes between images occur fast enough to
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`be undetectable by the human eye. (Ex. 2005 at ¶ 15).
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`B.
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`Claims 1-3 require a “light-shutter matrix system”
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`Independent Claim 1 requires “a light-shutter matrix system comprising a
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`number of equivalent switching matrices equal to the number of beams and placed
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`one each in the beam paths.”
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`A person of ordinary skill in the art at the time of filing of the ‘545 patent
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`would have understood a “light-shutter matrix system” to be a two-dimensional
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`array of elements that selectively admit and block light. (See Mr. Smith-
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`Gillespie’s declaration, Ex. 2005 at ¶ 16). In addition to this being the plain and
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`ordinary meaning of the terms “light,” “shutter,” and “matrix,” evidence to support
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`this interpretation was provided in the patent owner preliminary response filed on
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`January 23, 2013. In particular, The American Heritage College Dictionary (Ex.
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`2001, hereinafter “AH Dictionary”) was quoted in the response to support patent
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`owner’s proposed claim construction.
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`The Board’s decision, though, dismissed both the proposed interpretation
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`and the supporting evidence in lieu of a broad definition of the phrase “light-
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`shutter matrix system.” In particular, the Board adopted the definition of a light-
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`shutter matrix system as “a set of matrices, such as monochrome LCD arrays,
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`where each matrix comprises a rectangular arrangement of elements capable of
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`limiting the passage of light.” (Decision at 8; emphasis added.) However, as will
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`be shown, neither the reasons for dismissing the presented evidence nor the
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`decision’s broad interpretation of the “light-shutter matrix system” is proper.
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`On pages 8 and 9 of its decision, the Board provided reasons for not
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`considering the presented evidence from the AH Dictionary. With regard to the
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`dictionary definition of “shutter,” the Board disregarded this evidence because the
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`described shutter was defined with reference to “a camera” rather than a video
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`projector system. However, in the place of this definition, the Board quoted a
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`definition of a “shutter” from Merriam-Webster’s Collegiate Dictionary, Ex. 3001,
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`(hereinafter “MW Dictionary”) which states, “a mechanical device that limits the
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`passage of light; esp: a camera attachment that exposes the film or plate by
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`opening and closing an aperture.” (Emphasis added.) Since the only justification
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`given by the Board for dismissing the AH Dictionary definition was that it was
`
`related to a “camera shutter,” it was inconsistent for the Board to use a definition
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`that is also described especially as “a camera attachment.”
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`In effect, replacing the AH Dictionary definition with the MW Dictionary
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`definition did not remove the association with a camera shutter, but did replace the
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`proposed evidence indicating that a shutter “opens and closes to control [light
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`exposure]” (AH Dictionary at pg. 1264) with the broader assertion that a shutter
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`merely “limits the passage of light.” This definition, however, effectively replaces
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`the claim term “light-shutter matrix” with the non-claim term “light-limiter
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`matrix” and reads the term “shutter” out of the claims. While a light-shutter may
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`indeed limit the passage of light, not everything that limits the passage of light is a
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`light-shutter. For example, any opaque object limits the passage of light since it
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`blocks all light, but such an object is not necessarily a shutter. (Ex. 2005 at ¶ 16).
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`Hence, the question of whether a light-limiter matrix is disclosed by the references
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`is not the same question as whether a light-shutter matrix is disclosed by the
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`references. For this reason, the Board should interpret the claimed “light-shutter
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`matrix system” as a two-dimensional array of elements that selectively admit and
`
`block light. (See Mr. Smith-Gillespie’s declaration, Ex. 2005 at ¶ 16).
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`In addition, patent owner submits that the decision improperly interpreted
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`the broad definition of a light-shutter matrix system which the Board adopted. On
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`page 7 of its decision, the Board cited to column 1, lines 64-76 of the ‘545 patent,
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`which states that “[i]n a preferred embodiment the light-shutter matrices are
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`monochrome [liquid crystal display] LCD arrays,” as a justification for interpreting
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`anything with an LCD or liquid crystal material as the “light-shutter matrix
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`system” required by Claim 1. This interpretation is evidenced by the Board’s
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`statements regarding how Flasck and Takanashi allegedly disclose such a “light-
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`shutter matrix system.” Regarding Flasck, the Board stated on page 13 of its
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`decision that “Flasck discloses that active matrix 46 is ‘covered by an LCD,’ which
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`is one example of a matrix capable of limiting the passage of light.” Regarding
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`Takanashi, the Board stated on page 18 of its decision that “Takanashi discloses in
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`each combination a liquid crystal element ECB, and an LCD array is an example of
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`a light-shutter matrix according to the ‘545 patent.” Accordingly, the Board
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`appears to regard every LCD or layer of material containing liquid crystals as a
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`light-shutter matrix. Patent owner disagrees and submits that this is not the case.
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`(Ex. 2005 at ¶ 16).
`
`Liquid crystals may exhibit many optical properties and have been used as
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`polarizers, waveguides, lenses, and gratings, among various other uses. For
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`example, in the book Optics and Nonlinear Optics of Liquid Crystals 2003 by Dr.
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`Iam-Choong Khoo et al., the author includes a 100+ page chapter on the Electro-
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`Optical Properties of Liquid Crystals that states, in part:
`
`An important feature of liquid crystals is that their
`directors can be reoriented by a reasonably low external
`electric, magnetic or optical field, giving rise to a variety
`of
`electro-optic, magneto-optic
`and
`opto-optic
`modulation effects. The applied external field deforms
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`Patent Owner Response IPR2013-00029
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`the liquid crystal directors from their initial states and,
`thus, alter [sic] the phase or amplitude of the impinging
`light. Once the external field vanishes, the directors may
`relax to their initial states or stay in their final states,
`depending on the type of liquid crystal and the physical
`mechanism involved.
`
`Several electro-optical effects in liquid crystals have been
`observed. These include: (i) dynamic scattering, (ii)
`guest-host effect, (iii) field-induced nematic-cholesteric
`phase
`change,
`(iv)
`field-induced
`director-axis
`reorientation, (v) laser-addressed thermal effect, and (vi)
`light scattering by micron sized droplets.
`
`(Ex. 2008 at pg. 100, emphasis added)
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`Accordingly, liquid crystals produce “a variety of electro-optic, magneto-
`
`optic and opto-optic modulation effects,” and the results of these effects may vary
`
`“depending on the type of liquid crystal and the physical mechanism involved.”
`
`One of ordinary skill in the art would not consider liquid crystals exhibiting any of
`
`these optical effects to be a light shutter or part of a light-shutter matrix system.
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`Thus, patent owner submits it is not reasonable to treat every liquid crystal display
`
`device or device containing liquid crystals as a light-shutter, without any
`
`description in the text to state that the device is actually used as a light-shutter.
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`(See Mr. Smith-Gillespie’s declaration, Ex. 2005 at ¶ 16).
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`In addition, the decision uses the MW Dictionary to define the term “matrix”
`
`as “something resembling a mathematical matrix esp[ecially] in rectangular
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`arrangement of elements into rows and columns.” Decision, pg. 8, lines 14-15.
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`Patent owner substantially agrees with this definition, but submits that there is no
`
`reason to narrow the term matrix to only a “rectangular arrangement.” The AH
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`Dictionary definition, to which the decision did not object, states “a regular
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`arrangement of elements into rows and columns.” (Emphasis added.)
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`For these reasons, patent owner submits that the plain and ordinary meaning
`
`of a “light-shutter matrix system” at the time of filing was a two-dimensional array
`
`of elements that selectively admit and block light.
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`C.
`
`Claims 1-3 require a “video controller”
`
`Independent Claim 1 requires “a video controller adapted for controlling the
`
`light-shutter matrices.” Patent owner submits that, at the time of filing of the ‘545
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`patent, a person of ordinary skill in the art would have understood the “video
`
`controller” element to be a component that controls light-shutter matrices to
`
`facilitate the display of video in accordance with a video signal. (See Mr. Smith-
`
`Gillespie’s declaration, Ex. 2005 at ¶ 17).
`
`In its decision, the Board stated that:
`
`Applying the broadest reasonable interpretation of the phrase
`based on the specification, “video controller adapted for
`controlling the light-shutter matrices,” means a component that
`controls light-shutter matrices to facilitate the display of video.
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
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`Decision at 10.
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`Accordingly, the Board recognized that a “video controller adapted for
`
`controlling the light shutter matrices,” must “control[] light-shutter matrices to
`
`facilitate the display of video.” However, such an interpretation is too broad in
`
`view of the specification of the ‘545 patent, which states (col. 3, lines 13-18,
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`emphasis added):
`
`A video signal for the system is delivered from outside via link
`125 into a controller 122. A great variety of different signal
`formats are known and can be implemented, both analog and
`digital, or any combination of several signals can be used.
`Controller 122 controls the three monochrome matrices 117,
`118, and 119.
`
`Accordingly, the broadest reasonable interpretation of the “video controller”
`
`element, in light of the specification, is a component that controls light-shutter
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`matrices to facilitate the display of video in accordance with a video signal. Such
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`a “video controller” must be a component that (1) controls light-shutter matrices,
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`(2) controls the matrices to facilitate the display of video, and (3) controls the
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`matrices in accordance with a video signal. (See Mr. Smith-Gillespie’s
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`declaration, Ex. 2005 at ¶ 17).
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
`
`
`
`D.
`
`Claims 1-3 require “equivalent switching matrices”
`
`Independent Claim 1 requires “a number of equivalent switching matrices
`
`equal to the number of beams and placed one each in the beam paths.” The phrase
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`“equivalent switching matrices” should also be given its plain and ordinary
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`meaning in light of the specification. At the time of filing the ‘545 patent, the
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`plain and ordinary meaning of “equivalent switching matrices” was switching
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`matrices that are virtually identical in effect or function. This definition is
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`supported by the MW Dictionary at pages 392-393, which defines equivalent as
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`“corresponding or virtually identical esp[ecially] in effect or function.”
`
`This definition is also supported in the specification of the ‘545 patent. For
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`example, at column 2, lines 1-7, the ‘545 patent states:
`
`In various embodiments, assuming projectors of relatively
`equal cost, by using a triple monochrome LCD structure instead
`of a color AM – LCD and pre-coloring of light, more light
`output can be achieved than conventional systems. Systems
`according to embodiments of the invention are also less
`expensive than conventional color LCD systems, because the
`monochrome LCDs used are less expensive than color LCDs.
`
`Accordingly, the ‘545 patent distinguishes between equivalent monochrome
`
`LCDs versus conventional color LCD systems in which a unique LCD is used for
`
`each color. Therefore, the “equivalent switching matrices” are not the same as
`
`conventional color-specific switching matrices. In light of the specification of the
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`4848-9636-4052.3
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`

`

`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
`
`
`‘545 patent and the plain and ordinary meaning of the term “equivalent,” the Board
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`should construe the “equivalent switching matrices” of Claims 1-6 and 11-14 to be
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`switching matrices that are virtually identical in function and effect. (See Mr.
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`Smith-Gillespie’s declaration at, Ex. 2005 ¶ 18).
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`V. THE BOARD SHOULD FIND CLAIMS 1-3 PATENTABLE IN VIEW
`OF XILINX’S PROPOSED CHALLENGES
`
`A.
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`Challenge #1: Alleged anticipation by Flasck
`
`In its decision entered March 12, 2013, the Board denied Xilinx’s petition
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`with respect to Challenge #1 that Claims 1-3 of the ‘545 patent are anticipated by
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`Flasck. Page 20 of the decision states that “the trial is limited to the grounds
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`identified above and no other grounds are authorized.” (Emphasis added). Thus,
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`patent owner understands the present trial to now be strictly limited to the grounds
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`set forth by Xilinx in its Challenges #2 and #3, and patent owner is therefore not
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`responding to the substance of Challenge #1.
`
`B.
`1.
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`Challenge #2: Alleged obviousness in view of Flasck
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`Flasck does not teach a “video projector system”
`
`Claims 1-3 are directed to a “video projector system.” On page 11 of the
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`Board’s decision, the Board stated “Flasck discloses a video projector.” However,
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`while Flasck is directed to an “active matrix reflective projection system”
`
`(abstract), this reflective projection system is not described anywhere in Flasck as a
`
`
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`4848-9636-4052.3
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`16
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
`
`
`“video projector system.” Additionally, as will be shown, the system of Flasck is
`
`not capable of operation at video speeds. (See Mr. Smith-Gillespie’s declaration,
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`Ex. 2005 at ¶¶ 20-26).
`
`Flasck’s projection system is not described as a video system. Indeed, the
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`only mention of “video” in Flasck is in reference to a prior art projection system
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`(col. 2, lines 6-28), which is used as an example of Flasck’s perceived problems
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`with transmissive projection systems. During his deposition, Dr. Buckman cited
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`the label “TV or Computer Interface Electronics,” in Flasck’s Fig. 9 as a reason
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`that Flasck’s projection system would have been a video projector. (Ex. 2004 at
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`16, lines 19-23). Specifically, Dr. Buckman then stated:
`
`Okay. Your original question was you want the source of
`my opinion that this is a video system. Backing up from
`Figure 11 to Figure 9, I note the Box 118, which carries
`the same numerical designation as the box simply labeled
`interface later on in Figure 11.
`
`If we back up to Figure 9, we have that box, the same
`box labeled TV or computer interface electronics than the
`presence of either TV or computer interface. Those
`words within that box signifies to me somebody of
`ordinary skill in the art that this system is designed for
`video operation.
`
`(Ex. 2004 at 17, lines 11-22).
`
`
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`4848-9636-4052.3
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`17
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`Patent Owner Response IPR2013-00029
`U.S. Patent No. 5,632,545
`
`
`
`It is noted element 118, which Fig. 9 of Flasck labels “TV or Computer
`
`Interface Electronics,” is labeled as “interface” in all other figures (except for Fig.
`
`12 which labels element 118 as “TV or Computer Interface”) and that the phrase
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`“TV or Computer Interface Electronics” does not otherwise appear in the
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`specification of Flasck. Other than stating that “information encoding is provided
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`by an electronic interface 118 coupled to the reflective image plane modules 92,
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`104 and 112” (col. 7, lines 32-34), Flasck does not provide any discussion of what
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`the disclosed “interface” is or how it operates.
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`Patent owner submits that the mere labeling of an interface as a “TV or
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`Computer Interface Electronics” does not imply that the interface can be used to
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`carry a video signal. Rather, TV interface electronics are merely electronic
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`interfaces that are compatible with a TV. The cables and other connections that
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`were commonly called TV interf