`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`___________________
`
`
`
`XILINX, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC,
`Patent Owner.
`
`
`
`Inter Partes Review No. IPR2013-00112
`Patent No. 5,779,334
`
`
`
`
`
`__________________________________________________________________
`
`TRIAL PRESENTATION OF PETITIONER XILINX, INC.
`
`
`
`
`
`
`Attached hereto is a copy of Petitioner Xilinx, Inc.’s trial presentation.
`
`
`
`
`
`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
`
`
`Dated: January 24, 2014
`
`
`
`
`
`
`
`
`Trial PresentationTrial Presentation
`
`Of PetitionerOf Petitioner
`
`Xilinx, Inc.Xilinx, Inc.
`IPR2013-00112
`
`
`
`By:By:
`
`
`David McCombsDavid McCombs
`
`Thomas KingThomas King
`
`Haynes and Boone, LLPHaynes and Boone, LLP
`
`1
`
`
`
`
`
`OverviewOverview
`
`Technical Summary
`Disputed Issues
`–Takanashi Light-Shutter Matrix
`–Takanashi Equivalent Switching
`Matrices
`–Lee Video Controller
`Rebuttal
`
`2
`
`
`
`
`
`‘334 Patent‘334 Patent
`
`3
`
`
`
`
`
`Takanashi and LeeTakanashi and Lee
`
`4
`
`
`
`
`
`OverviewOverview
`
`Technical Summary
`Disputed Issues
`–Takanashi Light-Shutter Matrix
`–Takanashi Equivalent Switching
`Matrices
`–Lee Video Controller
`Rebuttal
`
`5
`
`
`
`
`A write-light based projector uses aA write-light based projector uses a
`
`“light shutter matrix system”“light shutter matrix system”
`
`Takanashi Figure 8
`
`6
`
`
`
`
`IV argues that Takanashi is not a matrixIV argues that Takanashi is not a matrix
`
`because it is formed frombecause it is formed from
`
`“continuous layers of material”“continuous layers of material”
`
`“Takanashi illustrates and describes that
`each device . . . is just such a non-matrix
`structure, formed of continuous layers of
`material, rather than any rectangular
`arrangement of elements capable of
`limiting the passage of light.”
`[IV Response, Paper No. 26 at 23]
`
`7
`
`
`
`
`“Optically Addressed” vs. “Electrically“Optically Addressed” vs. “Electrically
`
`Addressed” Spatial Light ModulatorsAddressed” Spatial Light Modulators
`
`“A person having ordinary skill in the art
`in 1995 would consider the SLM in
`Takanashi to be an ‘optically addressed’
`SLM or ‘OASLM.’ . . . The ‘optical’
`addressing refers to the fact that the
`write light controls the image encoded
`on the SLM (as opposed to electrically
`addressed SLM (‘EASLMS’), such as those
`described in the specification of the ’334
`patent, which use electrical circuits to
`encode the SLM).”
`
`Exh. 1012 (Buckman Decl.) at 8.
`
`8
`
`
`
`
`OASLMs and EASLMS create an imageOASLMs and EASLMS create an image
`
`by controlling a continuous liquidby controlling a continuous liquid
`
`crystal layercrystal layer
`
`“An OASLM controls the liquid crystal by
`shining the write light at a photosensitive
`material (i.e., a material that takes on an
`electric charge in response to light). By
`shining the write light at some areas and
`not others, an ‘image’ of electric charge
`is created on the photosensitive
`material. The continuous liquid crystal
`layer changes states in response to this
`charge ‘image.’”
`
`Exh. 1012 (Buckman Decl.) at 8.
`
`9
`
`
`
`
`OASLMs and EASLMS create an imageOASLMs and EASLMS create an image
`
`by controlling a continuous liquidby controlling a continuous liquid
`
`crystal layercrystal layer
`
`“[I]n an EASLM, electric circuitry such as
`transistors and capacitors are used to
`generate an electric charge “image.” The
`continuous liquid crystal layer changes
`states in response to this charge
`“image,” just as in the OASLM. In either
`instance, visible light passing through the
`continuous liquid crystal layer will
`receive the image encoded by the
`electric charge.”
`
`Exh. 1012 (Buckman Decl.) at 8.
`
`10
`
`
`
`
`IV’s expert admits that the ‘334 patentIV’s expert admits that the ‘334 patent
`
`uses a “continuous” liquid crystal layeruses a “continuous” liquid crystal layer
`
`Is the liquid crystal layer in the ‘334
`“Q.
`and the ‘545 patents a continuous layer?
`A. Yes, it is.”
`
`[Smith Gillespie Tr. Ex. 1014 at 174:4-11]
`
`11
`
`
`
`
`OASLMs and EASLMS organizeOASLMs and EASLMS organize
`
`continuous liquid crystal into rows andcontinuous liquid crystal into rows and
`
`columns of pixelscolumns of pixels
`
`“In practical applications, EASLMs and
`OASLMs are also similar in that they
`create images out of rows and columns.
`In either type of projection system,
`images are created by organizing the
`continuous liquid crystal layer into a
`pixelated matrix of rows and columns.
`Each pixel in the liquid crystal matrix
`permits or limits the passage of light
`according to the electric field near that
`location. The electric field is also
`organized into rows and columns.”
`Exh. 1012 (Buckman Decl.) at 9.
`
`12
`
`
`
`
`OASLMs and EASLMS organizeOASLMs and EASLMS organize
`
`continuous liquid crystal into rows andcontinuous liquid crystal into rows and
`
`columns of pixels using electric fieldscolumns of pixels using electric fields
`
`“In a typical EASLM, the liquid crystal
`rows and columns correspond to the
`locations where electric fields are
`created by the electrical elements
`fabricated on or in the glass. In OASLM
`systems, the liquid crystal rows and
`columns correspond to the locations
`where electric fields are created by the
`write light hitting the photosensitive
`elements.”
`
`Exh. 1012 (Buckman Decl.) at 9.
`
`13
`
`
`
`
`Video systems like Takanashi displayedVideo systems like Takanashi displayed
`
`pixelated images in rows and columnspixelated images in rows and columns
`
`[Ex. 1015 at 555-56]
`
`14
`
`
`
`
`
`OverviewOverview
`
`Technical Summary
`Disputed Issues
`–Takanashi Light-Shutter Matrix
`–Takanashi Equivalent Switching
`Matrices
`–Lee Video Controller
`Rebuttal
`
`15
`
`
`
`
`Takanashi Has Equivalent SwitchingTakanashi Has Equivalent Switching
`
`MatricesMatrices
`
`Takanashi Fig. 17
`
`16
`
`
`
`
`In the ‘334 action, the Board found aIn the ‘334 action, the Board found a
`
`threshold showing of “equivalentthreshold showing of “equivalent
`
`switching matrices”switching matrices”
`
`“Petitioner has made a threshold
`showing with respect to the alleged
`switching matrices, which correspond to
`each other and, apart from allowing
`different colors of light (red, green, or
`blue) to pass through, appear to function
`in the same manner.”
`[Institution Decision, Paper No. 14 at 21]
`
`17
`
`
`
`
`Construction of “equivalentConstruction of “equivalent
`
`switching matrices”switching matrices”
`
`Board Construction in ‘334 IPR
`Switching matrices that are corresponding or
`virtually identical in function or effect.
`
`[Institution Decision, Paper No. 14 at 12]
`IV Construction
`Switching matrices that are virtually identical in
`function and effect.
`
`[IV Response, Paper No. 26 at 18-20]
`MW Dictionary Definition of “Equivalent”
`“corresponding or virtually identical esp[ecially] in
`effect or function.”
`
`[Ex. 2001]
`
`18
`
`
`
`
`In the ‘334 action, The Board modifiedIn the ‘334 action, The Board modified
`
`IV’s proposed constructionIV’s proposed construction
`
`“We disagree with Patent Owner’s
`proposed interpretation, however,
`because it removes the word
`‘corresponding’ from the dictionary
`definition.”
`
`[Institution Decision, Paper No. 14 at 12]
`
`19
`
`
`
`
`IV argues that the ‘334 specificallyIV argues that the ‘334 specifically
`
`distinguishes the Takanashi systemdistinguishes the Takanashi system
`
`“Such a system of filters is specifically
`described as different from equivalent
`monochrome LCD arrays in the
`specification of the ‘334 patent. (See Col.
`2, lines 3-18). (See also Mr. Smith-
`Gillespie’s declaration, Ex. 2008 at ¶ 28).”
`[IV Response, Paper No. 26 at 31]
`
`20
`
`
`
`
`IV’s expert admits that IV’s argument isIV’s expert admits that IV’s argument is
`
`incorrectincorrect
`
`“It's not as specifically described in the
`‘334 patent. It's different than the
`system described in the ‘334 patent.”
`[Ex. 1014 (Smith-Gillespie Tr.) at 220:3-20]
`
`21
`
`
`
`
`IV argues that the ‘334 patent identifiesIV argues that the ‘334 patent identifies
`
`advantages over the type of system usedadvantages over the type of system used
`
`by Takanashi:by Takanashi:
`
`“[T]he specification of the ’334 patent
`identifies several advantages that are
`realized in a system which uses
`equivalent switching matrices, such as a
`“triple monochrome LCD structure,”
`(col.2, lines 8-9), over systems such as
`Takanashi.”
`
`[IV Response, Paper No. 26 at 32]
`
`22
`
`
`
`
`IV’s expert admits that this argument isIV’s expert admits that this argument is
`
`also incorrectalso incorrect
`
`“Q. Okay. So is it fair to say that that
`last portion of the sentence where it says
`over systems such as those described in
`Takanashi isn't really accurate?
`A. Again, it's going back to the '334
`patent comparison between LCD types.
`And Takanashi is not a typical LCD. So
`yeah, that's probably not accurate.”
`[Ex. 1014 (Smith-Gillespie) at 221:25-222:15]
`
`23
`
`
`
`
`
`OverviewOverview
`
`Technical Summary
`Disputed Issues
`–Takanashi Light-Shutter Matrix
`–Takanashi Equivalent Switching
`Matrices
`–Lee Video Controller
`Rebuttal
`
`24
`
`
`
`
`Timeline Of Correction to LeeTimeline Of Correction to Lee
`
`Video Controller TestimonyVideo Controller Testimony
`
`Institution Decision
`6/27/2013
`
`Buckman Deposition
`Corrects Lee Video
`Controller Testimony
`8/7/2013
`
`Patent Owner
`Response
`8/27/2013
`
`Petition Filed in
`IPR 2013-112
`1/15/2013
`
`2013
`
`Jan
`
`Jun
`
`Jul
`
`Aug
`
`2013
`
`25
`
`
`
`
`IV’s expert does not dispute that LeeIV’s expert does not dispute that Lee
`
`discloses a video controllerdiscloses a video controller
`
`Q. Did you see where Dr. Buckman
`corrected his opinion to identify element
`20 in Lee as a video controller?
`A. Okay. I don't recall that, but I read
`through it and knew that he was pointing
`to something else. So whether it was
`that or one of the other 21 or 22, I'm not
`sure.
`
`[Ex. 1013 at 99:2-20]
`
`26
`
`
`
`
`IV’s expert does not dispute that LeeIV’s expert does not dispute that Lee
`
`discloses a video controllerdiscloses a video controller
`
`Cont’d:
`“Q. Okay. I see that your declaration
`doesn't have a response to Dr.
`Buckman's testimony in that point; is
`that right?
`A. No, I didn't respond to that.
`Q. All right. So that's just not an
`opinion that you've expressed in your
`declaration, if you have one on that
`point?
`A.
`I don't have one on that point, I
`guess.”
`
`[Ex. 1013 at 99:2-20]
`
`27
`
`
`
`
`IV’s expert admits that all videoIV’s expert admits that all video
`
`projection systems have video controllersprojection systems have video controllers
`
`Q. Is it your testimony that any real video
`projection system in 1996 would have had a
`video controller?
`A. Yes. That was my testimony yesterday, I
`think.
`Q. Yes. And is that still your testimony today?
`A. Yes.
`
`[Smith-Gillespie, Ex. 1014 at 206:8-13]
`
`28
`
`
`
`
`IV argues that its expert did not make aIV argues that its expert did not make a
`
`broad admission on video controllersbroad admission on video controllers
`
`“Xilinx’s assertion that IV’s expert
`admitted that “any real video projection
`system in 1996” “would have a video
`controller” is selective and incomplete.
`. . .
`Immediately after that testimony, IV’s
`expert clarified that: not ‘every video
`projection system would include a,
`quote, video controller adapted for
`controlling the light shutter matrices.’”
`[Paper No. 43 (in IPR 2013-29) at 5 (emphasis in original)]
`
`29
`
`
`
`
`IV’s expert admitted that liquid crystalIV’s expert admitted that liquid crystal
`
`display projectors have video controllersdisplay projectors have video controllers
`
`“Q And those video projection systems that
`used active matrix LCDs in 1996, those systems
`would have had some kind of module that
`controlled the light shutter matrices inside the
`system, right?
`A That’s correct.
`Q And those same systems in 1996 would have
`had a video controller that decoded [a] video
`signal, correct?
`A Uh, that – well, if it was a video projector,
`then yes, it would have to have that.”
`[Ex. 1014 (Smith-Gillespie) at 211:20-212:7]
`
`30
`
`
`
`
`“Video Controller Adapted For“Video Controller Adapted For
`
`Controlling The Light-Shutter Matrices”Controlling The Light-Shutter Matrices”
`
`Board Construction
`A component that controls light-shutter matrices
`to facilitate the display of video.
`
`IV Construction
`A component that controls light-shutter matrices
`to facilitate the display of video in accordance with
`a video signal.
`
`31
`
`
`
`
`IV’s construction reads in a limitationIV’s construction reads in a limitation
`
`from the specificationfrom the specification
`
`[IV Response, Paper No. 26 at 17]
`
`32
`
`
`
`
`
`OverviewOverview
`
`Technical Summary
`Disputed Issues
`–Takanashi Light-Shutter Matrix
`–Takanashi Equivalent Switching
`Matrices
`–Lee Video Controller
`Rebuttal
`
`33
`
`
`
`
`
`Claim 15 (substitute for Claim 3)Claim 15 (substitute for Claim 3)
`
`Claim Limitation
`
`The video projector system of claim 2, wherein
`the three color filters comprise one each of red,
`green, and blue filters, and wherein the video
`projector system further comprises:
`a second controller adapted to control the three
`white-light sources; and
`
`Prior Art
`Reference
`Takanashi/
`Lee
`
`Lee/
`Miyashita
`
`a control link adapted to connect the video
`controller to the second controller to provide
`individualized variable control of each of the
`three white-light sources.
`
`Lee/
`Miyashita
`
`34
`
`
`
`
`
`Claim 16 (substitute for Claim 12)Claim 16 (substitute for Claim 12)
`
`Claim Limitation
`
`The video projector system of claim 11 wherein
`the splitter divides the beam of white light into
`three separate beams of colored light, one red,
`one green, and one blue, further comprising:
`a second controller adapted to control the
`source; and
`
`Prior Art
`Reference
`Takanashi/
`Lee
`
`Lee/
`Miyashita
`
`a control link adapted to connect the video
`controller to the second controller to provide
`variable control of the source.
`
`Lee/
`Miyashita
`
`35
`
`
`
`
`IV’s substitute claims do not respond toIV’s substitute claims do not respond to
`
`a ground of unpatentabilitya ground of unpatentability
`
`“Scope. A motion to amend may be
`denied where:
`(i) The amendment does not
`respond to a ground of
`unpatentability involved in the
`trial.”
`
`37 C.F.R. § 42.121(a)(2)(i)
`
`36
`
`
`
`
`IV’s substitute claims do not respond toIV’s substitute claims do not respond to
`
`a ground of unpatentabilitya ground of unpatentability
`
`“In the context of the claim element
`added by Bergstrom, it is essential to
`know whether such methods of
`operations pre-existed in other contexts,
`and, if so, how they worked. Although
`Bergstrom is not expected to know of all
`pre-existing prior art, it is expected,
`reasonably, to indicate that it is unaware
`of the above-noted manners of
`operation in any context, if in fact it is
`unaware.
`Cont’d.
`Idle Free Systems v. Bergstrom, Inc., IPR2012-0027, Paper No. 66
`(January 7, 2014)
`
`37
`
`
`
`
`IV’s substitute claims do not respond toIV’s substitute claims do not respond to
`
`a ground of unpatentabilitya ground of unpatentability
`
`Cont’d
`Otherwise, it is expected, reasonably to
`explain such pre-existing manners of
`operation, and why it would not have
`been applicable to render the invention
`of claim 24 obvious to one with ordinary
`skill in the art.
`Idle Free Systems v. Bergstrom, Inc., IPR2012-0027, Paper No. 66
`(January 7, 2014)
`
`38
`
`
`
`
`Lee Teaches A Second Controller WithLee Teaches A Second Controller With
`
`Individualized Variable Control OverIndividualized Variable Control Over
`
`Three Light SourcesThree Light Sources
`
`“Q. . . . [D]oes controller 18 provide
`individualized variable control of each of
`the individual light sources?
`A. Yes. It shows that it does.
`Lee Figure 1; Smith Gillespie Tr. (Ex. 1013) at 158:2-5.
`
`39
`
`
`
`
`IV argues that item 32 of Miyashita isIV argues that item 32 of Miyashita is
`
`not a “video controller”not a “video controller”
`
`“One of ordinary skill would not consider
`Miyashita’s ‘control unit 32’ to be a
`video controller.”
`
`[Paper No. 35 at 4]
`
`40
`
`
`
`
`Figure 3 of Miyashita Shows A SecondFigure 3 of Miyashita Shows A Second
`
`Controller And A Control LinkController And A Control Link
`
`Video
`Controller
`
`Second
`Controller
`
`Control Link
`
`41
`
`
`
`
`IV argues that item 32 of Miyashita isIV argues that item 32 of Miyashita is
`
`not a “video controller”not a “video controller”
`
`“FIG. 3 is exemplary microprocessor-
`based implementation of [liquid crystal
`video projector] 30. The functions of
`control unit 32 are all implemented by a
`microprocessor system. . . . Digital
`interfaces are made via the I/O port 93
`to control input 60, display 62, . . . .”
`[Ex. 1010 (Miyashita) at 5:22-42]
`
`42
`
`
`
`
`Item 32 of Miyashita includes a videoItem 32 of Miyashita includes a video
`
`controllercontroller
`
`[Ex. 1010, Fig. 2]
`
`43
`
`
`
`
`Trial PresentationTrial Presentation
`
`Of PetitionerOf Petitioner
`
`Xilinx, Inc.Xilinx, Inc.
`
`IPR2013-00112
`
`
`
`By:By:
`
`
`David McCombsDavid McCombs
`
`Thomas KingThomas King
`
`Haynes and Boone, LLPHaynes and Boone, LLP
`
`44
`
`
`
`
`
`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 January 24, 2014
`
`Manner of service FEDERAL EXPRESS
`
`Documents served Trial Presentation of Petitioner Xilinx, Inc.
`
`Persons served GEORGE E. QUILLIN
`FOLEY & LARDNER LLP
`3000 K STREET, N.W., SUITE 600
`WASHINGTON DC 20007-5109
`gquillin@foley.com
`Telephone: 202-672-5300
`
`
`
`
`
`
`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271