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` IPR2013-00112
`U.S. Patent No. 5,779,334
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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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`
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`XILINX, INC.
`Petitioner
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`v.
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`INTELLECTUAL VENTURES I LLC
`Patent Owner
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`__________________
`
`Case IPR2013-00112
`Patent 5,779,334
`____________________
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`
`
`INTELLECTUAL VENTURES’ PATENT OWNER PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`Table of Contents
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`I.
`Introduction…………………………………………………………………1
`II. Overview of U.S. Patent No. 5,779,334………………………….…...…….6
`III. Claim Construction…………………………………………………………8
`A. Claims 1-6 and 11-14 require a “light-shutter matrix system”……..10
`B. Claims 1-6 and 11-14 require a “video controller” and Claims 7-10
`require “a video signal through an LCD controller”………………...13
`C. Claims 1-6 and 11-14 require “equivalent switching matrices”……16
`D. Claims 7-10 require “a dynamic color image”……………………...17
`IV. The Trial Should Not Be Instituted Because Xilinx Failed To Show A
`Reasonable Likelihood The Petitioner Would Prevail…………….……….19
`A. Challenge #1: Alleged obviousness of Claims 1 and 4-14 over
`Takanashi………………………………………………….….……..20
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`1.
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`2.
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`3.
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`4.
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`Claims 1, 4-6, and 11-14: It would not have been
`obvious to add a “video controller” to the system
`of Takanashi in the way the petition argues…………...21
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`Claims 1, 4-6, and 11-14: Takanashi does not
`disclose a “light-shutter matrix system” ……………...23
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`Claims 1, 4-6, and 11-14: Takanashi does not
`disclose “equivalent switching matrices”…………..…27
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`Claim 7-10: Takanashi does not disclose “directing
`the separate … beams” or “switching the … matrix”...30
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`5.
`Claims 7-10: Takanashi does not disclose a
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`“dynamic color image”………………………………..32
`B. Challenge #2: Alleged obviousness of Claims 1-14 over Takanashi
`and Lee ………….…………………………………..….……..…….33
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`1.
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`2.
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`3.
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`4.
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`Claims 1-6 and 11-14: Takanashi and Lee do not
`disclose a “video controller adapted for controlling
`the light-shutter matrix system”…………………..…34
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`Claims 1-6 and 11-14: Takanashi and Lee do not
`disclose a “light-shutter matrix system” ……………37
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`Claims 1-6 and 11-14: Takanashi and Lee do not
`disclose “equivalent switching matrices”…………...37
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`Claim 7-10: Takanashi and Lee do not disclose
`“directing the separate … beams” or “switching the …
`matrix”……………………………………………....38
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`5.
`Claims 7-10: Takanashi and Lee do not disclose a
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`“dynamic color image”……………………………...40
`C. Challenge #3: Alleged obviousness of Claims 1 and 4 -14 over
`Takanashi and Burstyn…………………………………………....41
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`1.
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`2.
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`3.
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`4.
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`Claims 1, 4-6, and 11-14: Takanashi and Burstyn
`do not disclose a “video controller adapted for
`controlling the light-shutter matrix system”…..…….41
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`Claims 1, 4-6, and 11-14: Takanashi and Burstyn
`do not disclose a “light-shutter matrix system” .……43
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`Claims 1, 4-6, and 11-14: Takanashi and Burstyn
`do not disclose “equivalent switching matrices”……44
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`Claim 7-10: Takanashi and Burstyn do not disclose
`“directing the separate … beams” or “switching the …
`matrix”……………………………………………....44
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`5.
`Claims 7-10: Takanashi and Burstyn do not disclose
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`a “dynamic color image”…………………………....46
`V. Conclusion and Relief Requested……………………………………….48
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`Table of Authorities
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`FEDERAL CASES
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999) ................................................................................5
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`In re Trans Texas Holdings Corp.,
`498 F.3d 1290 (Fed. Cir. 2007) ............................................................................8
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ......................................................8, 10
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`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................10
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`REGULATORY CASES
`Rohm and Haas Co. v. Brotech Corp.,
`127 F.3d 1089, 44 USPQ2d 1459 (Fed. Cir. 1997)..............................................4
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`Scripps Research Institute v. Nemerson,
`72 USPQ2d 1122 (BPAI 2004) ............................................................................9
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`Stampa v. Jackson,
`78 USPQ2d 1567 (BPAI 2005) ............................................................................5
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`FEDERAL STATUTES
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`35 U.S.C. § 103(a) ...............................................................................................5, 31
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`35 U.S.C. § 314(a) ...............................................................................................1, 21
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`REGULATIONS
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`37 C.F.R. § 42.20(c)...................................................................................................9
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`37 C.F.R. § 42.65(a)...................................................................................................4
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`37 C.F.R. § 42.100(b) ..............................................................................................10
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`37 C.F.R. § 42.104(b)(3)............................................................................................9
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`4831-3635-4322.6
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`37 C.F.R. § 42.104(b)(4).................................................................................. 1-2, 24
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012)........................................................9
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`NON-PERIODICAL PUBLICATIONS
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`Merriam-Webster’s Collegiate Dictionary, 10th ed. 1993 (“Merriam-
`Webster” Exhibit 2001 at 1084) ...........................................................................8
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`Oxford English Dictionary.......................................................................................20
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`OTHER AUTHORITIES
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`U.S. Patent No. 6,002,207....................................................................................8, 11
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`U.S. Patent No. 6,985,253 (filed Dec. 28, 2000, Exhibit 2004)..............................26
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`I.
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`INTRODUCTION
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`The Board should not institute inter partes review of U.S. Patent
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`No. 5,779,334 (the ‘334 patent) because Xilinx has not satisfied Patent Office
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`regulations: “[t]he petition must specify where each element of the claim is found
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`in the prior art patents or printed publications relied upon.” 37 C.F.R.
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`§ 42.104(b)(4). The Board should not institute a trial because, for each ground of
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`rejection, at least one claim element is missing. In addition, Xilinx also has not
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`met the basic threshold required by statute: it has not shown that there is a
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`“reasonable likelihood that [it] would prevail with respect to at least [one] of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a).
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`In addition to the present petition for inter partes review, Xilinx has also
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`filed a petition for inter partes review of U.S. Patent No. 5,632,545 (the ‘545
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`patent) (IPR2013-00029). The present Xilinx petition repeats verbatim several of
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`the arguments from that previous inter partes review petition and, in the sections
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`that are not repetitions of the previous petition, appears to rely on the analysis of
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`the ‘545 patent. However, the claims of the present ‘334 patent are not the same as
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`the claims of the ‘545 patent. For example, the ’545 patent does not claim any
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`methods or processes, while independent Claims 7 and 9 of the ’334 patent are
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`each directed to methods. As a result, the present petition inadequately addresses
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`various claim elements recited in the ‘334 patent and fails entirely to address
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`several other claim elements recited in the ‘334 patent. Therefore, the present
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`petition fails to “specify where each element of the claim is found in the prior art
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`patents or printed publications relied upon” as required by 37 C.F.R.
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`§ 42.104(b)(4).
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`As one example, the Xilinx petition makes no arguments regarding certain
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`method steps required by independent Claims 7 and 9 but, instead, merely cites
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`previous arguments in the petition that are directed to the system components
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`recited in Claims 1 and 11. The cited arguments are specific to the components of
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`Claims 1 and 11 and do not refer to the method steps of Claims 7 and 9, leaving
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`several features of the claims unaddressed. For instance, Claim 7 requires (and
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`Claim 9 similarly requires) “switching the monochrome matrix by action of a
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`video signal through the LCD controller.” In the claim chart entry for these
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`elements, the petition cites arguments directed to “a video controller adapted for
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`controlling the light-shutter matrix system.” These cited arguments do not address
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`any “switching the monochrome LCD screen,” “video signal,” or “action of a
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`video signal through an LCD controller.” See Pet. at pages 11, 16, and 18.
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`Therefore, Xilinx fails at least to specify where each element of independent
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`method Claims 7 and 9 is found in the relied-upon patents.
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`Xilinx’s petition also fails to specify where the relied-upon prior art shows a
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`“light-shutter matrix system” as required by Claims 1-6 and 11-14. Instead, the
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`petition either disregards this element entirely or points to a display structure that is
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`not a “light-shutter matrix.” Further, the cited arguments directed to “a video
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`controller adapted for controlling the light-shutter matrix system,” as required by
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`Claims 1-6 and 11-14 of the ‘334 patent, fail to show where this element is
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`disclosed in the art upon which the petition relies. The first challenge presented in
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`the petition all but admits that the cited art does not disclose the element (See Pet.
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`at 11), while the other challenges point to general control circuitry that is in no way
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`“adapted for controlling the light-shutter matrix system,” as claimed.
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`As discussed herein, there are several claim elements from the pending
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`claims that are not adequately addressed by the Xilinx petition. The petition either
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`glosses over claim elements or makes the bare assertion that the claim elements
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`would have been obvious. See, as one example, pet. at 16 which asserts with
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`respect to the claim element “focusing … to provide a dynamic color image”
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`(Claim 7) that “[o]ne of ordinary skill in the art would have understood that the
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`write light distribution of Takanashi could be dynamic, i.e., could vary with time.”
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`The petition does not deign to explain what the “write light” of Takanashi is or
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`how it could be “dynamic.” The petition does not say whether or not “write light”
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`is a term of art used in projection systems of the kind disclosed in Takanashi; if it
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`is not, then the petition should have described what it is and how it is supposedly
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`“dynamic” in the sense required by claims 7 and 9. Instead, all the petition offers
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`is a bald conclusion. Such a bare assertion, made with no adequate evidentiary
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`support, leaves the reader at a loss with respect to how Takanashi is alleged to
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`disclose “focusing … to provide a dynamic color image.”
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`The petition cites the declaration of the Xilinx expert witness, but it fares no
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`better because it too is merely conclusory. That is, the Buckman declaration at
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`page 19 merely baldly asserts that “[o]ne of ordinary skill in the art would have
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`understood that the write light distribution of Takanashi could be dynamic, i.e.,
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`could vary with time” without any rationale or reference to underlying evidence,
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`contrary to 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
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`underlying facts or data on which the opinion is based is entitled to little or no
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`weight.”). Neither the Federal Rules of Evidence nor Federal Circuit case law
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`require a fact finder to credit the unsupported assertions of an expert witness.
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`Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459,
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`1462 (Fed. Cir. 1997). Consequently, the Buckman declaration should be accorded
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`no weight on at least that portion of the opinion. Takanashi does not include the
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`phrase “dynamic color image,” and Xilinx does not allege that Takanashi includes
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`such a phrase.
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`The Xilinx petition, which proposes rejections under 35 U.S.C. § 103(a),
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`IPR2013-00112
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`also does not allege that any elements of the claims are inherently included in the
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`references.
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`It is not the job of the Board to fill in the blanks and correct such
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`inadequacies in an inter partes review petition. See, e.g., in the context of
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`interference practice, S.O. ¶ 121.5.2 which states that “[t]he Board will not take on
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`the role of advocate for a party, trying to make out a case the party has not
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`adequately stated”; see also DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir.
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`1999); Stampa v. Jackson, 78 USPQ2d 1567, 1571 (BPAI 2005); Spears v.
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`Holland, Interf. No. 104,681, Paper 30, p. 15 (BPAI 2002) (“It is not the role of
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`this board to help party Spears articulate a difference between [claims]. That is the
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`role of Spears’ counsel as an advocate, not the role of the board as an unbiased and
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`impartial decision maker. Taking sides to aid one party to the detriment of the
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`other is not what we do.”); and GN v. SW, Interf. No. 104,vvv, Paper 39, pp. 13-15
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`(BPAI 2000), which states, with emphasis added:
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`In effect what GN has asked us to do is accept Dr. RS's
`conclusions, without a sufficient underlying factual basis. For
`reasons given above, we decline to give much, if any, weight to
`Dr. RS's opinions, even though there was no cross-examination
`and even though the preliminary motion is not opposed.
`Alternatively, GN asks us to scour the record to see if somehow
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`the position urged by GN may be supported. We likewise
`decline to dig into the record to see if we might be able to
`somehow make out a case for GN; we will not take on the
`role of an advocate for GN.
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`2. While not necessarily applicable to the case before us, we
`take this opportunity to make the follow[ing] observations with
`the hope that they may be of help to parties involved in
`interferences, as well as patent practitioners who represent
`those parties. The board's ex parte and interference backlogs
`are considerable. The board, as a whole, has had some success
`this past year in reducing both backlogs. However, as a matter
`of policy, we cannot, and should not, undertake in
`interference cases to fill gaps in proofs which are otherwise
`manifestly insufficient. In an interference, the burden is on
`a party—not the board--to establish its case. The Trial
`Section recently has experienced numerous--far too many--
`situations where a party in an interference, in essence, says:
`Here is the evidence. I do not have time to discuss the evidence
`in detail, but if you look through it, you will see the merit of my
`case. To the extent that there are parties, or patent practitioners
`representing those parties, who have a notion that we are going
`to do their job, now would be a good time for those parties and
`counsel to disabuse themselves of that notion. We simply are
`not going to expend board resources to try to "bail out" those
`who ask us to search a record to prove (or disprove) their case.
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir 1999)
`("A brief must make all arguments accessible to the judges,
`rather than ask them to play archaeologist with the record.").
`The time it would take us to "bail out" those who file sloppy
`motions is much better spent on attending to cases, both ex
`parte and interferences, where parties and their attorneys have
`presented proper motions based on proper records. There is no
`substitute for a properly filed motion which is fully supported
`by citations to a properly filed record coupled with a concise
`argument in support of a position.
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`The duty to provide an adequate petition falls squarely on the petitioner
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`Xilinx, and Xilinx has failed to perform its duty in a way that justifies proceeding
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`to trial. If, nevertheless, a decision is ultimately made to proceed to trial, the patent
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`owner requests as a matter of fundamental fairness that the Board provide detailed
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`guidance on how the applied references are being relied upon and where in the
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`references each of the claim elements is alleged to be found.
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`II. OVERVIEW OF U.S. PATENT NO. 5,779,334
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`The ‘334 patent is directed to a “color video projector system” in which light
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`is passed “first through color filters to provide separate color beams before being
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`processed by video-controlled light shutter matrices and then combined into a
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`single beam projectable to provide a full-color video display with superimposed
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`color spots rather than side-by-side color spots.” See, Abstract.
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`The ‘334 patent issued from a continuation-in-part application of the ‘545
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`patent. Portions of the ‘334 patent that are not literally present in the parent ‘545
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`patent include the last two sentences of the abstract; Fig. 2; col. 2, lines 19 – 31
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`and 38 – 40; and col. 3, line 61 to col. 4, line 16.
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`Contrary to Xilinx’s representation at page 3 of the petition, the ‘334 patent
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`has 4 (not 3) independent claims, and 14 claims total. Claims 1 and 11 are
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`independent system claims, from which claims 2 – 6 and 12 – 14 respectively
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`depend. Independent claims 7 and 9 with respective dependent claims 8 and 10 are
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`method claims.
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`Importantly, the ‘334 patent describes a system with “video-controlled light
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`shutter matrices.” See, ‘334 patent, Abstract. A “light shutter,” as the name
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`implies and as confirmed by other contemporaneously filed patents, is an element
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`that shuts or blocks out a beam of light.1 Merriam-Webster’s Collegiate
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`Dictionary, 10th ed. 1993 (“Merriam-Webster” Exhibit 2001 at 1084), defines
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`“shutter” as “a mechanical device that limits the passage of light.” The same
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`dictionary defines “matrix” to be “something resembling a mathematical matrix,
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`esp[ecially] in rectangular arrangement of elements into rows and columns .” Id. at
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`716. The Federal Circuit says that, under Phillips, dictionary definitions are
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`1 For example, U.S. Patent No. 6,002,207 (Exhibit 2003), discussed infra, defines
`“light shutter” as such.
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`“pertinent.” In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir.
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`2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en
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`banc),(“[T]he court has observed that dictionaries ... can be useful in claim
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`construction.")). A video-controlled “light shutter matrix” is a rectangular
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`arrangement of light shutters into rows and columns, in which each of the light
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`shutter elements (often called picture elements or pixels) is selectively open or
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`shut, fully or partially, in accordance with signals produced by decoding a video
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`signal. Such an element is not rendered obvious by a device that 1) does not shut
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`out light, 2) is not a matrix of light shutters, or 3) is not controlled by a video
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`controller.
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`Xilinx fails to prove any disclosure or combination of disclosures that
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`amount to a “light-shutter matrix system” or a “video controller” that is “adapted
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`for controlling” such a “light-shutter matrix system,” as in the ‘334 patent. In
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`other words, Xilinx has not carried its burden. Cf. 37 C.F.R. § 42.20(c). (“The
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`moving party has the burden of proof to establish that it is entitled to the requested
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`relief.”); Scripps Research Institute v. Nemerson, 72 USPQ2d 1122, 1123 (BPAI
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`2004) (“The responsibility for developing and explaining the record for an issue
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`rests with the movant, not with the Board.”)
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`III. CLAIM CONSTRUCTION
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`Under the Board’s rules, the Xilinx petition was required to identify “[h]ow
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`the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3); see Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012). Xilinx, however,
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`did not do so. Instead, it offered a “claim analysis” said to be presented “in a
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`manner” allegedly “consistent with” the broadest reasonable interpretation. Pet. at
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`6. Regarding at least two important claim limitations, Xilinx declined to propose
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`an actual claim interpretation.
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`To the extent that the present petition provides implicit interpretations, the
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`Xilinx assertions of unpatentability effectively read out of independent Claims 1
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`and 11 both the “light-shutter” in “light-shutter matrix system” and the “video” in
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`“video controller.” Xilinx’s assertions also ignore that the claimed “video
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`controller” is “adapted for controlling the light-shutter matrix.” Emphasis added.
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`Further, Xilinx declines to offer interpretations for important elements of
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`independent Claims 7 and 9.
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`The words of a claim “are generally given their ordinary and customary
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`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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`IPR2013-00112
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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 turning a blind eye to express elements in
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`a claim.
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`The Board should confirm that the “light-shutter matrix” and “video
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`controller” are material elements recited in the claims of the ‘334 patent. Because
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`Xilinx’s petition does not show that its relied-upon art satisfies these and other
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`elements, its petition should be denied.
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`A. Claims 1-6 and 11-14 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.” Independent Claim 11 similarly requires “a light-
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`shutter matrix system ….”
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`At the pertinent time, a person of ordinary skill in the art would have
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`understood a “light-shutter matrix system” to be a two-dimensional array of light-
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`shutter elements, in which each light-shutter element can be used to shut or block
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`out portions of a beam of light. In addition to this being the plain meaning of the
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`11
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`terms “light,” “shutter,” and “matrix,” this interpretation is supported by other
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`contemporaneous patents. For example, U.S. Patent No. 6,002,207 to Beeteson et
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`al. (“Beeteson” Exhibit 2003) states:
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`Referring now to FIG. 11, in another preferred example of a
`display device embodying the present invention, a shutter 22 is
`disposed between light source 21 and photocathode 20. Shutter
`22 has a two-dimensional array of individually addressable
`shutter elements for alternately admitting and blocking
`passage of light. Each shutter element corresponds to a
`different well 70. Address circuitry 145 is connected to shutter
`22 and brightness control circuitry 146 is connected to grid 40.
`In operation, address circuitry selectively opens and closes
`shutter elements of shutter 22 to selectively admit and block
`light from light source 21 in response to an input video signal.
`A video image based on the input video signal is thus projected
`[through] shutter 22 onto photocathode 20.
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`Beeteson, col. 11, lines 43-55, emphasis added.
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`Although the specific language “light-shutter matrix” is not recited in this
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`reference, a person of ordinary skill in the art would recognize that the “two-
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`dimensional array” of “shutter elements” for “alternately admitting and blocking
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`passage of light” is an example of a “light-shutter matrix.” Accordingly, Beeteson
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`teaches that a light-shutter matrix is a “two-dimensional array of individually
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`addressable shutter elements for alternately admitting and blocking passage of
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`light” in which each element may “selectively admit and block light from light
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`source 21 in response to an input video signal.” (Beeteson, col. 11, lines 47-48 and
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`51-54.)
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`In a decision by the Patent Trial and Appeal Board entered March 12, 2013
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`in IPR 2013-00029 (“The ‘545 Decision” Ex. 2002), which decision reviews the
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`parent of the ‘334 patent, the Board cites Merriam-Webster for a definition of
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`“shutter” (the ‘545 Decision, page 7, lines 14-15) as “a mechanical device that
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`limits the passage of light, esp[ecially] a camera attachment that exposes the film
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`or plate by opening and closing an aperture.” Merriam-Webster at 1084, col. 2,
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`lines 81-83. Although this definition is especially applicable to “a camera
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`attachment,” the definition of “a mechanical device that limits the passage of light
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`… by opening and closing” is not contradictory to Beeteson’s description of a
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`shutter element as “alternately admitting and blocking passage of light.” The ‘545
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`Decision also states that “[a] ‘matrix’ is ‘something resembling a mathematical
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`matrix esp[ecially] in rectangular arrangement of elements into rows and columns.’
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`Ex. 3001 at 716.” The ‘545 Decision at 8, lines 14-16.
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`Notably, as an alleged disclosure of “a light-shutter matrix system,” the
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`Xilinx petition cites components that are not a “matrix” of light shutters or
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`anything else, but singular elements in continuous sheets. In the ‘545 Decision, the
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`Board indicated that the elements in U.S. Patent 5,264,951 (“Takanashi”) must be
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`a two-dimensional matrix because Takanashi “discloses the two-dimensional
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`‘color image of the object of display’ projected onto a screen as a result of the
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`operation of the ECB, PL2, and SLM elements.” This statement relies on the
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`unfounded assumption that a projection system which produces a two-dimensional
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`image must have done so through the actions of a two-dimensional matrix of
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`shuttering elements. However, this assumption is not correct. In particular, many
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`conventional projection systems use continuous layers of optical material (e.g.,
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`each frame of a movie film roll, a slide for a slide projector, an overhead projector
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`sheet with writing on it) to produce a two-dimensional image without including
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`any “matrix” of elements, much less a “light shutter matrix system comprising a
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`number of equivalent switching matrices,” as required by Claims 1-6 and 11-14.
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`Accordingly, the ordinary and customary meaning of a “light-shutter matrix”
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`is a two-dimensional array of elements that are able to selectively admit and block
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`light.
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`B. Claims 1-6 and 11-14 require a “video controller” and Claims 7-
`10 require “a video signal through an LCD controller”
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`Independent Claims 1 and 11 require “a video controller adapted for
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`controlling the light-shutter matrices.” That limitation too should be given its
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`ordinary and customary meaning. At the pertinent time, a person of ordinary skill
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`in the art would have understood the “video controller” element to be a component
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`that controls light-shutter matrices to facilitate the display of video in accordance
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`with a video signal.
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`In the ‘545 Decision, the Board wrote:
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`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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`Ex. 2002, page 10, lines 3-7.
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`Accordingly, the Board recognizes that a “video controller adapted for
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`controlling the light shutter matrices,” must “control[] light-shutter matrices to
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`facilitate the display of video.”
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`However, such an interpretation is too broad in view of the specification,
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`which states (emphasis added):
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`The LCD array is switched by a controller driven in
`accordance with a video signal, and the emerging beams are
`recombined and focused on a surface to produce a dynamic
`color image.
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`Abstract, (emphasis added); See also col. 2, lines 24-25 (“The LCD array is
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`switched by a controller following a video signal ….”).
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`The panel of the Board hearing this inter partes review is not bound by the
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`claim construction of the panel in the ‘545 Decision. That decision was not a
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`binding, precedential decision, and indeed is not even unalterably fixed in the ‘545
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`proceeding – that panel has clearly stated that the patent owner “is not precluded
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`from arguing claim interpretation in its patent owner response, and IV’s patent
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`owner response may include affidavits or additional factual evidence pertaining to
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`claim interpretation.” Paper 15 at 3. In other words, on a different factual record
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`in that proceeding, that panel can come to a different claim interpretation. A
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`fortiori, in this proceeding with its different factual record, this panel can come and
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`should come to a different claim interpretation.
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`Accordingly, the broadest reasonable interpretation of the “video controller”
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`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.
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`Again, “a video controller adapted for controlling the light-shutter matrices”
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`must be adapted for controlling a matrix of light-shutter elements. Critically, a
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`light-shutter matrix is not the same as a single optical element or shutter.
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`Likewise, a circuit or component that is designed to control a single optical
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`element or shutter is not the same as a “video controller” that is “adapted for
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`controlling the light-shutter matrices.”
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`Independent method Claims 7 and 9 require “switching the monochrome
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`matrix by action of a video signal through an LCD controller.” At the pertinent
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`time, a person of ordinary skill in the art would have understood the ordinary and
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`customary meaning of this phrase to be an LCD controller that switches some or
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`all of the cells in a monochrome LCD matrix in accordance with a video signal.
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`Therefore, this technique must be a process in which (1) an LCD controller
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`switches a monochrome matrix and (2) such switching is by action of the video
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`signal through the controller.
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`To recap, a “video controller adapted for controlling the light-shutter
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`matrices” as required by Claims 1 and 11 may not be interpreted as something that
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`either does not control the light-shutter matrices or does not control light shutter
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`matrices in accordance with a video signal. Additionally, “switching the
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`monochrome matrix by action of a video signal through an LCD controller” as
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`required by Claims 7 and 9 may not be interpreted as a process in which either an
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`LCD controller does not switch a monochrome matrix or such switching is not by
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`action of the video signal through the controller. The Xilinx petition, however,
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`either relies on such misinterpretations to support the asserted challenges against
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`the ‘334 patent, or ignores the claim elements altogether.
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`C. Claims 1-6 and 11-14 require “equivalent
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