Paper No.
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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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`Patent of INTELLECTUAL VENTURES MANAGEMENT, LLC,
`Patent Owner
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`Patent No. 5,632,545
`Issue Date: May 27, 1997
`Title: ENHANCED VIDEO PROJECTION SYSTEM
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`_____________________
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`Inter Partes Review No. IPR2013-00029
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`__________________________________________________________________
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`PETITIONER XILINX, INC.’S OPPOSITION TO MOTION TO AMEND
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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
`
`v.
`
`Patent of INTELLECTUAL VENTURES MANAGEMENT, LLC,
`Patent Owner
`
`Patent No. 5,632,545
`Issue Date: May 27, 1997
`Title: ENHANCED VIDEO PROJECTION SYSTEM
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`
`_____________________
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`Inter Partes Review No. IPR2013-00029
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`__________________________________________________________________
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`PETITIONER XILINX, INC.’S OPPOSITION TO MOTION TO AMEND
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`TABLE OF CONTENTS
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`I.
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`Introduction .......................................................................................................... 1
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`II. Relief Requested .................................................................................................. 1
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`III. Reasons for the Requested Relief ........................................................................ 1
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`A.
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`Patent Owner’s Motion to Amend Should Be Denied for Failing to
`Comply with 37 C.F.R. §§ 42.121 and 42.20. ...................................... 1
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`1.
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`2.
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`Patent Owner’s Motion to Amend Should Be Denied for Failing
`to Comply with 37 C.F.R. § 42.121 and Idle Free. .................... 2
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`Patent Owner’s Motion to Amend Should Be Denied for Failing
`to meet its burden under 37 C.F.R. § 42.20. ............................... 4
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`B.
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`Proposed Claims 4 and 5 Are Unpatentable Under 35 U.S.C. § 103(a).
` ............................................................................................................... 5
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`1.
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`2.
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`3.
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`Statutory Grounds for Challenges ............................................... 6
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`Claim Construction ..................................................................... 6
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`Unpatentability of Proposed Claims 4 and 5 .............................. 8
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`IV. Conclusion .........................................................................................................15
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`–ii–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`I.
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`Introduction
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`Pursuant to 35 U.S.C. §§ 316(a) and 326(a), Petitioner Xilinx, Inc. responds
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`in opposition to Patent Owner’s Motion to Amend that proposes to cancel claims 2
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`and 3 and add substitute claims 4 and 5. As will be shown below, Patent Owner’s
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`proposed claims fail to comply with 37 C.F.R. §§ 42.121 as clarified by the Board
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`in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (P.T.A.B. Jun. 11,
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`2013). Patent Owner has also not met its burden in showing how the claims are
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`patentable over the prior art of record as required by 37 C.F.R. § 42.20. Further,
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`Patent Owner’s proposed claims are unpatentable under at least 35 U.S.C. § 103(a)
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`over the prior art and supporting evidence provided herein.
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`II. Relief Requested
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`Petitioner asks that the Board deny Patent Owner’s motion to amend and not
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`enter proposed claims 4 and 5 because Patent Owner failed to comply with 37
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`C.F.R. §§ 42.121 and 42.20. In the alternative, Petitioner asks that the Board
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`cancel proposed claims 4 and 5 because they are unpatentable under 35 U.S.C. §
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`103(a) based on the prior art and supporting evidence provided herein.
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`III. Reasons for the Requested Relief
`A.
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`Patent Owner’s Motion to Amend Should Be Denied for Failing to
`Comply with 37 C.F.R. §§ 42.121 and 42.20.
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`Patent Owner’s motion to amend should be denied for failing to comply with
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`37 C.F.R. §§ 42.121 and 42.20 as clarified by the Board in Idle Free. Patent Owner
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`failed to comply with 37 C.F.R. § 42.121 because the proposed amendments
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`
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`–1–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`include entirely new claim limitations that are unrelated to the existing limitations.
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`These new limitations essentially propose a new claim strategy that is not
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`appropriate for this proceeding. Patent Owner also failed to carry its burden as
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`required by 37 C.F.R. § 42.20 by not including a claim construction for the new
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`limitations that show how the claims are patentable over the prior art of record.
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`1.
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`Patent Owner’s Motion to Amend Should Be Denied for
`Failing to Comply with 37 C.F.R. § 42.121 and Idle Free.
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`According to 37 C.F.R. § 42.121, a motion to amend can be denied where it
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`“does not respond to a ground of unpatentability involved in the trial” or where it
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`“seeks to enlarge to scope of the claims of the patent or introduce new subject
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`matter.” These rules were clarified in Idle Free based on the Board’s goal of
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`“streamlin[ing] and converg[ing] issues at all phases of the proceeding.” Idle Free,
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`IPR2012-00027 at *4.
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`In Idle Free, the Board stated that “a proposed substitute claim is not
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`responsive to an alleged ground of unpatentability of a challenged claim if it does
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`not either include or narrow each feature of the challenged claim being replaced.”
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`Idle Free, IPR2012-00027 at *5. The Board also stated that claim amendments
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`according to a different strategy are not appropriate for inter partes review
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`proceedings. Id. at *6. “If a patent owner desires a complete remodeling of its
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`claim structure according to a different strategy, it may do so in another type of
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`proceeding before the Office.” Id. In other words, a motion to amend that adds new
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`–2–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`limitations to existing claims without narrowing any of the existing limitations is
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`not appropriate for this proceeding and is not responsive under 37 C.F.R. § 42.121.
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`The proposed claims include the limitations of claims 2 and 3, respectively.
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`They do not include any further narrowing of the existing limitations of claims 2
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`and 3, but instead include entirely new and unrelated limitations—a heat
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`containment system, a second controller, and a control link. These new limitations
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`do not appear in any claim of the ’545 Patent and were never presented during
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`original prosecution. By including new limitations and not narrowing the existing
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`limitations, Patent Owner has failed to “either include or narrow each feature of the
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`challenged claim being replaced,” as required by Idle Free. See id. at *5.
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`Instead, Patent Owner is attempting to show patentability of the proposed
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`claims based on entirely new grounds which is not appropriate for this forum. See
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`id. at *6. The proposed claims create entirely new issues that do not “streamline
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`and converge” the existing issues in this proceeding. For example, in responding to
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`the motion to amend, Petitioner has had to enter two new challenges that propose
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`entirely new combinations of both existing and new prior art. To determine
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`patentability of the proposed claims, the Board will be required to review these
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`new references and supporting evidence as well as additional future arguments and
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`evidence. This type of amendment is better suited for another proceeding such as
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`ex parte reexamination or reissue. See id. at *6.
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`–3–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`Because Patent Owner’s motion to amend proposes claims that do not
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`narrow the existing limitations copied from claims 2 and 3, and instead raises
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`entirely new grounds of patentability, the motion to amend is not “responsive to an
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`alleged ground of unpatentability” under 37 C.F.R. § 42.121. Id. at *5.
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`Consequently, the motion to amend should be denied.
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`2.
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`Patent Owner’s Motion to Amend Should Be Denied for
`Failing to meet its burden under 37 C.F.R. § 42.20.
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`Patent Owner’s Motion to Amend should be denied under 37 C.F.R. § 42.20
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`for not including a claim construction that shows how that new proposed
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`limitations are to be interpreted over the prior art. See id. at *7.
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`According to Idle Free, “a patent owner bears the burden to show
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`entitlement to the relief requested.” Id. (citing 37 C.F.R. § 42.20(c)). In a motion to
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`amend, the burden is “on the patent owner to show a patentable distinction of each
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`proposed substitute claim over the prior art.” Id. To meet its burden Patent Owner
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`must include a “construction of new claim terms, sufficient to persuade the Board
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`that the proposed substitute claim is patentable over the prior art of record, and
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`over prior art not of record but known to the patent owner.” Id.
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`Patent Owner failed to provide such a construction as required by Idle Free.
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`As a result, Patent Owner has not met its burden in showing how the proposed
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`claims are patentable over the prior art of record. For example, Patent Owner
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`argues that Lee does not teach a “second controller” and a “control link” that
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`–4–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`provide variable control of each individual light source as recited in proposed
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`claims 4 and 5. (See Motion to Amend at 14.) Patent Owner also argues that Lee
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`does not teach a second control and control link that “reduce[s] the generated heat
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`that is deleterious to the LCD panel or that affects characteristics of the LCD
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`panel.” (Id.)
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`First, when “second controller” and “control link” are interpreted under the
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`broadest reasonable construction, Lee does in fact teach these limitations. (XLNX-
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`1004 at 3:14-19; XLNX-1012 at 29-30.) In fact, Patent Owner’s expert, Mr. Smith-
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`Gillespie, even agrees that Lee teaches these limitations. (See Deposition of Mr.
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`Smith-Gillespie, XLNX-1014 at 157-58.) Second, if Patent Owner intended these
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`terms to include limitations such as “reduc[ing] the generated heat that is
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`deleterious to the LCD panel or that affects characteristics of the LCD panel,” a
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`construction should have been providing supporting such a definition.
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`Patent Owner has not provided a claim construction and thereby has not
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`shown why Lee does not at least render “second controller” and “control link”
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`obvious. Consequently, Patent Owner has failed to meet its burden as required by
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`37 C.F.R. § 42.20 and Idle Free.
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`B.
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`Proposed Claims 4 and 5 Are Unpatentable Under 35 U.S.C. §
`103(a).
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`Petitioner challenges the validity of proposed claims 4 and 5 by proposing
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`new challenges 5 and 6 as follows:
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`–5–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`1.
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`Statutory Grounds for Challenges
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`Challenge #5: Claims 4 and 5 are obvious under 35 U.S.C. § 103(a) over
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`U.S. Patent No. 5,108,172 to Flasck (“Flasck”) in view of U.S. Patent No.
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`5,692,821 to Rodriguez, Jr. et al. (“Rodriguez”), further in view of U.S. 5,287,131
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`to Lee (“Lee”), further in view of U.S. Patent No. 5,136,397 to Miyashita
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`(“Miyashita”). Flasck was filed on September 24, 1990, and issued on April 28,
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`1992, and thus is prior art to the ’545 Patent at least under 35 U.S.C. § 102(b).
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`Rodriguez was filed on June 28, 1996, and issued on December 2, 1997, and thus
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`is prior art to the ’545 Patent at least under 35 U.S.C. § 102(e). Lee was filed on
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`November 25, 1992, and issued on February 15, 1994, and thus is prior art to the
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`’545 Patent at least under 35 U.S.C. § 102(b). Miyashita was filed December 23,
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`1991, and issued on August 4, 1992, and thus is prior art to the ’545 Patent at least
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`under 35 U.S.C. § 102(b).
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`Challenge #6: Claims 4 and 5 are obvious under 35 U.S.C. § 103(a) over
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`Flasck in view of U.S. Patent No. 5,313,234 to Edmonson et al. (“Edmonson”),
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`further in view of Lee, further in view of Miyashita. Edmonson was filed on
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`January 19, 1993, and issued on May 17, 1994, and thus is prior art to the ’545
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`Patent under at least 35 U.S.C. § 102(b).
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`2.
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`Claim Construction
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`Petitioner presents claim analysis in a manner that is consistent with the
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`–6–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`broadest reasonable interpretation in light of the specification. See 37 C.F.R. §
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`42.100(b). Claim terms are given their ordinary and accustomed meaning as would
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`be understood by one of ordinary skill in the art, unless the inventor, as a
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`lexicographer, has set forth a special meaning for a term. Multiform Desiccants,
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`Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); York Prods., Inc. v.
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`Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996).
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`In the ’545 Patent, the inventor did not act as a lexicographer and did not
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`provide a special meaning for any of the claim terms. Accordingly, using the
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`broadest reasonable interpretation standard, the terms should be given their
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`ordinary and custom meaning as understood by a person of ordinary skill in the art:
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`• “heat filter glass”: transparent material that blocks or absorbs the passage of
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`infrared radiation. (XLNX-1012, ¶15.)
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`• “fan in communication with an outside environment”: a fan that circulates a
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`fluid such as air between two separate spaces. (Id. at ¶17.)
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`• “second controller”: one or more control circuits separate from the video
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`controller. (Id. at ¶19.)
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`• “control link”: an electronic connection between the video controller and
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`another controller. (Id. at ¶21.)
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`–7–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`3.
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`Unpatentability of Proposed Claims 4 and 5
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`The charts below show where each element of proposed claims 4 and 5 is
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`found in the prior art relied upon.
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`a)
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`Challenge #5: Obviousness by Flasck, Rodriguez,
`Lee, and Miyashita
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`Proposed claims 4 and 5 are obvious under 35 U.S.C. § 103(a) over Flasck
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`(XLNX-1002), in view of Rodriguez (XLNX-1009), further in view of Lee
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`(XLNX-1004), further in view of Miyashita (XLNX-1011). Flasck teaches an LCD
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`projector that uses three individual light sources and heat filter glass to control heat
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`within the projector. (XLNX-1012 at ¶23.) Rodriguez teaches an LCD projector
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`that includes a heat containment system with a fan and heat filter glass enclosing a
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`light source to control heat within the projector. (XLNX-1012 at ¶23.) Lee teaches
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`an LCD projector that uses three individual light sources and includes a controller
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`that provides variable control of each light source. (XLNX-1012 at ¶24.) Miyashita
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`teaches an LCD projector that includes a controller that can control a light source
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`and a fan and is connected to a video controller. (XLNX-1012 at ¶25.)
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`Reasons to Combine: A person of ordinary skill in the art would have found
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`it obvious to combine an LCD projector such as that of Flask with a heat
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`containment system such as that of Rodriguez and second controllers and control
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`links such as those of Miyashita and Lee. Such a combination would have been
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`nothing more than the use of known techniques taught by Rodriguez, Lee, and
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`–8–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`Miyashita to improve Flasck’s similar LCD projector in the same way. (XLNX-
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`1012 at ¶22-29.)
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`Proposed claims 4 and 5 include the same limitations except for the portion
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`copied from claims 2 and 3. Thus, the analysis for both claims is provided below.
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`[4.0]: The video projector system of claim 1 wherein the light-shutter matrices
`are monochrome LCD arrays, and wherein the video projector system further
`comprises:
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`Patent Owner copied this limitation from issued claim 2 that was previously
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`shown to be and still is unpatentable over Flasck. (See Petition, Paper No. 2 at 17;
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`XLNX-1012 at 16.)
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`[5.0]: The video projector system of claim 1 wherein three light sources provide
`three beams, and red, green, and blue filters are used to provide red, green, and
`blue beams to an LCD matrix system, and wherein the video projector system
`further comprises:
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`Patent Owner copied this limitation from issued claim 3 that was previously
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`shown to be, and still is, unpatentable over Flasck. (See Petition, Paper No. 2 at 17-
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`18; XLNX-1012 at 30.)
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`[4.1] & [5.1]: a heat containment system, wherein the heat containment system
`comprises an enclosure that isolates components in the heat containment system
`from other components of the video projector system, and wherein the heat
`containment system includes:
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`Rodriguez teaches a heat containment system. (XLNX-1009 at Abstract,
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`3:55-66; XLNX-1012 at 17-19.) The heat containment system in Rodriguez
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`includes an enclosure that isolates components in the enclosure from other
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`–9–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`components of an LCD projector. (XLNX-1012 at 17-19.) Figure 4 of Rodriguez
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`showing the heat containment system. (XLNX-1009 at 19-20.)
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`[4.1.1] & [5.1.1]: the individual light sources;
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`Rodriguez teaches that the heat containment system includes “a light source
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`30 which is mounted within generally rectangular duct 32.” (XLNX-1009 at 3:58-
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`60; XLNX-1012 at 20.) Flasck teaches using three individual light sources.
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`(XLNX-1002 at 7:60-66; XLNX-1012 at 19-20.). Including three light sources
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`such as in Flasck in a heat containment system such as in Rodriguez would have
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`been obvious to a person of ordinary skill in the art. (XLNX-1012 at ¶27, p.20.)
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`[4.1.2] & [5.1.2]: heat filter glass adapted to filter heat from the separate light
`beams as the separate light beams pass through the heat filter glass and exit the
`heat containment system; and
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`Rodriguez teaches that its heat containment system includes a port that is
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`filled with an infrared filter (e.g., heat filter glass). (XLNX-1009 at 6:34-43;
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`XLNX-1012 at 21-22.) The infrared filter allows light to pass through while keep
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`the heat in the enclosure. (XLNX-1012 at 21-22.) Thus, Rodriguez teaches heat
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`filter glass adapted to filter heat from a light source as the light beams pass though
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`the filter and exit the heat containment system as claimed. (Id.)
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`[4.1.3] & [5.1.3]: a fan in communication with an outside environment, wherein
`the fan is adapted to force heat generated by the individual light sources and
`heat filtered by the heat filter glass into the outside environment;
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`–10–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`Rodriguez teaches that the heat containment system includes a fan in
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`communication with an outside environment. (XLNX-1012 at 22-23.) The “fan 72
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`is mounted to one end of the duct 32 [e.g., heat containment system] and is utilized
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`to draw cooling fluid through duct 32.” (Id.; XLNX-1009 at 6:34-36.) As shown in
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`figure 4, the position of the fan within the duct allows for heat generated by the
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`light source and filtered by the heat filter glass to be exchanged with an outside
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`environment. (XLNX-1012 at 23-24.)
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`[4.2] & [5.2]: a second controller adapted to control the individual light sources
`and the fan; and
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`Lee teaches a controller adapted to control three individual light sources.
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`(XLNX-1004 at 3:14-19; XLNX-1012 at 24-25.) Miyashita teaches a controller
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`adapted to control a light source and a fan, (XLNX-1011 at 5:21-41, Fig. 3;
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`XLNX-1012 at 25-26.) It would have been obvious for a person of ordinary skill in
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`the art to combine a controller such as in Lee that controls individual light sources
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`and a controller as in Miyashita that controls a light and a fan with an LCD
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`projector as in Flasck. (XLNX-1012 at ¶28, 26-27.)
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`[4.3] & [5.3]: a control link adapted to connect the video controller to the second
`controller
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`Miyashita teaches a control link adapted to connect a video controller to a
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`second controller. (XLNX-1012 at 27-28.) The video controller in Miyashita is
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`implemented as a microprocessor system that uses a data bus to connect the
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`–11–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`microprocessor system to additional controller circuits. (Id.) The additional
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`controller circuits include controls for a lamp and a fan. (Id.)
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`[4.3.1] & [5.3.1]: to provide individualized variable control of each of the
`individual light sources.
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`Lee teaches a control link that connects a controller to three individual light
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`sources. (XLNX-1012 at 29-30.) The control link is connected to the controller “so
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`as to change the light intensity emitted from a respective light source.” (XLNX-
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`1004 at 3:14-19.) Thus, the control link—via the controller—provides
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`individualized variable control of each of individual light sources. (XLNX-1012 at
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`29-30.)
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`b)
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`Challenge #6: Obviousness in view Flasck,
`Edmonson, Lee, and Miyashita
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`Proposed claims 4 and 5 are obvious under 35 U.S.C. § 103(a) over U.S.
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`Flasck (XLNX-1002), in view of Edmonson et al. (XLNX-1010), further in view
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`of Lee (XLNX-1004), further in view of Miyashita (XLNX-1011). Challenge 6 is
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`the same as challenge 5 except that challenge 6 uses the Edmonson reference in
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`place of the Rodriguez reference. Edmonson teaches a heat containment system
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`that includes an enclosure with a light source, heat filter glass to filer heat
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`generated by the light source, and a fan to exchange heat from the enclosure with
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`an outside environment. (XLNX-1012 at ¶33.)
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`–12–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`Reasons to Combine: A person of ordinary skill in the art would have found
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`it obvious to combine an LCD projector such as that of Flask with a heat
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`containment system such as that of Edmonson and second controllers and control
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`links such as those of Miyashita and Lee. Such a combination would have been
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`nothing more than the use of known techniques taught by Edmonson, Lee, and
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`Miyashita to improve Flasck’s similar LCD projector in the same way. (XLNX-
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`1012 at ¶31-38.)
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`Proposed claims 4 and 5 include the same limitations except for the portion
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`copied from claims 2 and 3. Thus, the analysis for both claims is provided below.
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` [4.0] & [5.0]: See [4.0] & [5.0] in Challenge 5, above.
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`[4.1] & [5.1]: a heat containment system, wherein the heat containment system
`comprises an enclosure that isolates components in the heat containment system
`from other components of the video projector system, and wherein the heat
`containment system includes:
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`Edmonson teaches a heat containment system. (XLNX-1011 at 1:59-68;
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`XLNX-1012 at 39-40.) The heat containment system in Edmonson includes an
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`enclosure that isolates components in the enclosure from other components of an
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`LCD projector. (XLNX-1012 at 39-40.) Figure 5 of Edmonson shows the heat
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`containment system inside an LCD projector. (See XLNX-1012 at 40.)
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` [4.1.1] & [5.1.1]: the individual light sources;
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`Edmonson teaches that a light source is included in a heat containment
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`system. (XLNX-1012 at 39-40; XLNX-1011 at 3:22-23 (“the hot compartment 50
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`–13–
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`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
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`includes the illumination source 62”).) Flasck teaches using three individual light
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`sources. (XLNX-1002 at 7:60-66; XLNX-1012 at 40-41.). Including three light
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`sources such as in Flasck in a heat containment system such as in Rodriguez would
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`have been obvious to a person of ordinary skill in the art. (XLNX-1012 at ¶36,
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`p.41.)
`
`[4.1.2] & [5.1.2]: heat filter glass adapted to filter heat from the separate light
`beams as the separate light beams pass through the heat filter glass and exit the
`heat containment system; and
`
`Edmonson teaches that light generated by the light source in its heat
`
`containment system is passes through heat filter glass to exit the heat containment
`
`system. (XLNX-1012 at 41-42) In Edmonson, “[t]he hot condenser lens 72
`
`removes thermal energy from the illumination beam by reflecting infrared
`
`radiation back into the hot compartment 50 while permitting visible light in the
`
`illumination beam to pass into the illumination optics chamber 80.” (XLNX-1011
`
`at 3:47-55) Thus, Edmonson teaches heat filter glass adapted to filter heat from a
`
`light source as the light beams pass though the filter and exit the heat containment
`
`system as claimed. (XLNX-1012 at 41-42.)
`
`[4.1.3] & [5.1.3]: a fan in communication with an outside environment, wherein
`the fan is adapted to force heat generated by the individual light sources and
`heat filtered by the heat filter glass into the outside environment;
`
`Edmonson teaches that the heat containment system includes a fan in
`
`communication with an outside environment. (XLNX-1012 at 44-45.) “The fan
`
`
`
`–14–
`
`
`
`Opposition to Motion to Amend for Inter Partes Review of U.S. 5,632,545
`
`
`
`140 intakes fluid from the passageway 130 and exhausts fluid into the hot
`
`compartment 50.” (XLNX-1011 at 3:19-21.) As shown in figure 5, passageway
`
`130 exchanges air with the outside environment via inlet vents 23 and exhaust port
`
`25. (Id. at 3:1-4, 3:12-21; XLNX-1012 at 44-45.)
`
`[4.2] & [5.2]: See [4.2] & [5.2] in Challenge 5, above.
`
`[4.3] & [5.3]: See [4.3] & [5.3] in Challenge 5, above.
`
`[4.3.1] & [5.3.1]: See [4.3.1] & [5.3.1] in Challenge 5, above.
`
`IV. Conclusion
`
`Patent Owner has not responded to an asserted ground of patentability as
`
`required by 37 C.F.R. 42.121and has not met its burden under 37 C.F.R. § 42.20.
`
`Further, the proposed claims are not patentable over the prior art. For the reasons
`
`set forth above, Petitioner asks that the Board deny Patent Owner’s Motion to
`
`Amend or in the alternative find proposed claims 4 and 5 unpatentable.
`
`Dated: September 12, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/David L. McCombs/
`
`
`
`
`David L. McCombs
`Registration No. 32,271
`
`HAYNES AND BOONE, LLP
`Customer No. 27683
`Telephone: 214/651-5533
`Facsimile: 214/200-0853
`Attorney Docket No.: 42299.41
`
`
`R-340574.docx
`
`
`
`–15–
`
`
`
`
`
`PETITIONER’S EXHIBIT LIST
`
`XLNX-1001
`
`September 12, 2013
`
`U.S. Patent No. 5,632,545 to Kikinis
`
`XLNX-1002
`
`U.S. Patent No. 5,108,172 to Flasck
`
`XLNX-1003
`
`U.S. Patent No. 5,264,951 to Takanashi
`
`XLNX-1004
`
`U.S. Patent No. 5,287,131 to Lee
`
`XLNX-1005
`
`U.S. Patent No. 5,784,038 to Irwin
`
`XLNX-1006
`
`Declaration of A. Bruce Buckman, Ph.D. Under 37 C.F.R. §
`1.68
`
`XLNX-1007
`
`Curriculum vitae of A. Bruce Buckman, Ph.D.
`
`XLNX-1008
`
`File History of U.S. Patent No. 5,632,545
`
`XLNX-1009
`
`U.S. Patent No. 5,692,821 to Rodriguez, Jr. et al.
`
`XLNX-1010
`
`U.S. Patent No. 5,313,234 to Edmonson et al.
`
`XLNX-1011
`
`U.S. Patent No. 5,136,397 to Miyashita
`
`XLNX-1012
`
`Declaration of A. Bruce Buckman, Ph.D. under 37 C.F.R. §
`1.68 directed to the proposed substitute claims
`
`XLNX-1013
`
`Declaration of A. Bruce Buckman, Ph.D. under 37 C.F.R. §
`1.68 directed to reply
`
`XLNX-1014
`
`Deposition Transcript Of Robert Smith-Gillespie Vol. 1
`(August 29, 2013)
`
`XLNX-1015
`
`Deposition Transcript Of Robert Smith-Gillespie Vol. 2
`
`XLNX-1016
`
`Excerpts from Spatial Light Modulator Technology (Uzi
`Efron ed., Marcel Dekker 1995)
`
`
`
`
`
`Petitioner’s Exhibit List (09/12/2013)
`Petition for Inter Partes Review of US 5,632,545
`
`
`
`XLNX-1017
`
`Excerpts from the Merriam Webster Dictionary of
`“Equivalent”
`
`XLNX-1018
`
`U.S. Patent No. 5,402,145
`
`XLNX-1019
`
`Lawrence E. Tannas, Flat-Panel Displays and CRTs (1985)
`
`XLNX-1020
`
`Excerpt From The Declaration Of Robert Smith-Gillespie In
`The ’334 IPR.
`
`
`
`
`
`
`
`
`
`–2–
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re patent of Kikinis
`
`U.S. Patent No. 5,632,545
`
`Issued: May 27, 1997
`
`Title: ENHANCED VIDEO
`PROJECTION SYSTEM
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`Petition for Inter Partes Review
`
`Attorney Docket No.: 42299.41
`
`Customer No.:
`
`Real Party in Interest: Xilinx, Inc.
`
`27683
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service September 12, 2013
`
`Manner of service FEDERAL EXPRESS
`
`Documents served Petitioner’s Opposition to the Motion to Amendment
`
`Petitioner’s Exhibit List (09/12/2013)
`
`Exhibits XLNX -1009 through XLNX -1020
`
`Persons served GEORGE E. QUILLIN
`FOLEY & LARDNER LLP
`3000 K STREET, N.W., SUITE 600
`WASHINGTON DC 20007-5109
`gquillin@foley.com
`
`
`
`
`
`
`
`
`
`
`
`
`/David L. McCombs/
`
`
`
`
`David L. McCombs
`Registration No. 32,271
`
`
`
`
`
`
`
`
`
`
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