Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`XILINX, INC, Petitioner
`
`V.
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`Patent of INTELLECTUAL VENTURES I LLC,
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`Patent Owner.
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`Patent No. 5,632,545
`
`Issue Date: May 27, 1997
`Title: ENHANCED VIDEO PROJECTION SYSTEM
`
`Inter Partes Review No. IPR2013-00029
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`PETITIONER XILINX’S REQUEST FOR ORAL ARGLHVIENT
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`XILINX, INC, Petitioner
`
`V.
`
`Patent of INTELLECTUAL VENTURES I LLC,
`
`Patent Owner.
`
`Patent No. 5,632,545
`
`Issue Date: May 27, 1997
`Title: ENHANCED VIDEO PROJECTION SYSTEM
`
`Inter Partes Review No. IPR2013-00029
`
`PETITIONER XILINX’S REQUEST FOR ORAL ARGLHVIENT
`
`
`
`Petitioner Xilinx’s Request For Oral Argument
`
`Petitioner Xilinx, Inc. (“Xilinx”) hereby requests oral argument pursuant to
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`37 CFR 42.70. Oral argument is presently scheduled for December 9, 2013.
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`ISSUES TO BE ARGUED
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`1.
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`Claim Construction
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`A. The Board’s initial Decision adopted constructions of “light shutter
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`matrix” and “video controller adapted for controlling the light-shutter matrices.”
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`Xilinx agrees that the Board’s initial constructions are correct under the broadest
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`reasonable interpretation standard. Nevertheless, IV challenges the correctness of
`
`the Board’s constructions. Has IV shown that the Board should change its initial
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`constructions?
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`B. IV argues that the term “light shutter matrix system” is limited to a
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`“shutter” that blocks light through absorption? Xilinx disagrees, because neither
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`the ’545 patent nor the prior art requires blocking light through absorption, and
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`because light can be blocked through other mechanisms such as reflection,
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`scattering, etc. Has IV shown that the broadest reasonable construction of “light
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`shutter matrix system” requires light to be blocked through absorption?
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`C. IV argues that the Board should adopt IV’s construction of
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`“equivalent switching matrices,” as being “virtually identical in effect or function.”
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`The Board’s initial Decision in the’334 IPR [IPR2013—00112] construed
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`“equivalent switching matrices” as being “corresponding or virtually identical in
`
`
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`Petitioner Xilinx’s Request For Oral Argument
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`function or effect.” The Board modified IV’s construction because it omitted the
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`key words “corresponding or” from its construction without a basis for doing so.
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`Nevertheless, IV disagrees with the Board’s modification to its original
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`construction. Has IV shown that its construction is correct?
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`II.
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`Obviousness of claims 1-3 in view of Flasck
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`A. The parties dispute whether the Flasck prior art patent discloses a
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`system capable of operating at video speeds at the time of the claimed invention.
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`IV contends that F lasck uses “PDLC” technology that was too slow for use in
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`video display systems in 1995. Xilinx has shown that PDLC televisions did, in
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`fact, exist in 1995. Does Flasck disclose a system that can operate at video speeds?
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`B. IV argues that Flasck is not a light-shutter matrix system because it
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`redirects light through “scattering” as opposed to through absorption. Xilinx does
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`not believe that the term “light shutter matrix system” places limits on how the
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`light is blocked or redirected, nor does it require absorption. Does Flasck disclose
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`a “light shutter matrix system?
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`C. The remaining claim elements are undisputed. Has Xilinx proven that
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`claims 1-3 would have been obvious to a person of ordinary skill in the art in 1995
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`in view of Flasck?
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`III. Obviousness of claims 1-3 in view of Takanashi
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`A. Xilinx’s Petition and Reply briefing explain that Takanashi uses an
`
`
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`Petitioner Xilinx’s Request For Oral Argument
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`optically addressed spatial light modulator (“OASLM”) as a “light shutter matrix
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`system” to encode a pixelated light image onto light beams. IV contends that an
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`OASLM cannot be a “light shutter matrix system” because it does not control the
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`pixelated image using electrical addressing (i.e., an “EASLM”). The issue boils
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`down to whether electrical addressing is necessary (IV’s position) or sufficient but
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`not necessary (Xilinx’s position) for a “light shutter matrix system”. Does
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`Takanashi disclose a light-shutter matrix system?
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`B. IV does not dispute that Lee discloses a video controller and that any
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`practical video projection system in 1995 would have a video controller.
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`Nevertheless, IV contends that this element is not met because the Petition
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`misidentifies the video controller in Lee. Xilinx corrected this mistake in time for
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`IV to respond, yet IV chose not to. Does Lee disclose a video controller? If not,
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`would it have been obvious to combine Takanashi, Lee, and a video controller at
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`the time of the claimed invention?
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`C. Xilinx’s Petition explains that the three spatial light modulators
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`(“SLMs”) in Takanashi are equivalent because they encode pixelated light images
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`onto different colored light beams. IV argues that these SLMs are not equivalent
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`because they are color-specific. Does Takanashi disclose equivalent switching
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`matrices?
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`D. The remaining claim elements are undisputed. Has Xilinx proven that
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`
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`Petitioner Xilinx’s Request For Oral Argument
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`claims 1-3 would have been obvious to a person of ordinary skill in the art in 1995
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`in view of Takanashi and Lee?
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`IV. Patent Owner’s Proposed Claims 4 and 5
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`A. Xilinx’s Opposition to Motion to Amend shows that the Motion to
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`Amend should be denied because substitute claims 4 and 5 include entirely new
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`features, in contravention of the Board’s Idle Free decision, that go to a different
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`claiming strategy and add new issues.
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`IV argues that the substitute claims 4 and 5
`
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`comply with Idle Free because they include the limitations of claims 2 and 3.
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`Should Patent Owner’s Motion to Amend be denied for failure to comply with the
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`rules as clarified by the Board in Idle Free?
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`B. Xilinx provides element-by element analysis for claims 4 and 5 with
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`respect to Flasck, Rodriguez, Lee, and Miyashita with appropriate explanations and
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`evidence showing reasons to combine. IV argues that the combination fails to
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`teach all features and that hindsight was used in the combination. Are claims 4 and
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`5 obvious over Flasck in view of Rodriguez, Lee, and Miyashita?
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`C. Xilinx provides element-by element analysis for claims 4 and 5 with
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`respect to Flasck, Edmonson, Lee, and Miyashita with appropriate explanations
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`and evidence showing reasons to combine. IV argues that the combination fails to
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`teach all features and that hindsight was used in the combination. Are claims 4 and
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`5 obvious over Flasck in view of Edmonson, Lee, and Miyashita?
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`
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`Petitioner Xilinx’s Request For Oral Argument
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`V. Other motions
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`A. Xilinx anticipates that IV will file a motion to exclude Dr. Buckman’s
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`testimony from the ’545 proceeding.
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`Respectfully submitted,
`
`/DaVid L. McCombs/
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`David L. McCombs
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`Registration No. 32,271
`HAYNES AND BOONE, LLP
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`Customer No. 27683
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`Telephone: 214/651-5533
`Facsimile: 214/200-0853
`
`Attorney Docket No.: 42299.41
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`Dated: November 4, 2013
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re patent of Kikinis
`
`US. Patent No. 5,632,545
`
`Issued: May 27, 1997
`
`Title: ENHANCED VIDEO
`
`PROJECTION SYSTEM
`
`COOOOOOOOOODQOOOOOOOOWCO'J
`
`Petition for Inter Partes Review
`
`Attorney Docket No.: 42299.41
`Customer No.:
`27683
`
`Real Party in Interest:
`
`Xilinx, Inc.
`
`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
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`service was made on the Patent Owner as detailed below.
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`Date ofservice November 4 , 2013
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`Manner ofservice FEDERAL EXPRESS
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`Documents served Petitioner Xilinx’s Request for Oral Argument
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`Persons served GEORGE E. QUILLIN
`FOLEY & LARDNER LLP
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`3000 K STREET, N.W., SUITE 600
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`WASHINGTON DC 20007-5109
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`gquillin@foley.com
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`/David L. McCombs/
`
`David L. McCombs
`
`Registration No. 32,271
`
`R-347205‘1
`
`
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