Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 14
`Entered: June 27, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`XILINX, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`____________
`
`Case IPR2013-00112 (SCM)
`Patent 5,779,334
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

`

`Case IPR2013-00112
`Patent 5,779,334
`
`
`Xilinx, Inc. filed a Petition (“Pet.”) to institute an inter partes review
`
`of claims 1-14 of Patent 5,779,334 (the “’334 patent”) pursuant to 35 U.S.C.
`
`§ 311 et seq. Patent Owner Intellectual Ventures I LLC filed a preliminary
`
`response (“Prelim. Resp.”) to the Petition. We have jurisdiction under 35
`
`U.S.C. § 314. For the reasons that follow, the Board has determined to
`
`institute an inter partes review.
`
`
`
`I. BACKGROUND
`
`The standard for instituting an inter partes review is set forth in 35
`
`U.S.C. § 314(a):
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Petitioner challenges claims 1-14 of the ’334 patent as obvious under
`
`35 U.S.C. § 103(a). Pet. 5-6. We grant the Petition as to claims 1-6 and 11-
`
`14 on certain grounds as discussed below.
`
`
`
`A. The ’334 Patent (Ex. 1001)
`
`The ’334 patent, entitled “Enhanced Video Projection System,” issued
`
`on July 14, 1998 based on Application 08/780,351, filed January 8, 1997.
`
`The ’334 patent is a continuation-in-part of Application 08/686,809, filed
`
`July 26, 1996, which issued as Patent 5,632,545 (the “’545 patent”). The
`
`’545 patent is the subject of Case IPR2013-00029.
`
`The ’334 patent relates to a “color video projector system” having
`
`“separate light sources for producing separate beams of light which are
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`Case IPR2013-00112
`Patent 5,779,334
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`passed each first through color filters to provide separate color beams before
`
`being processed by video-controlled light shutter matrices and then
`
`combined into a single beam projectable to provide a full-color video display
`
`with superimposed color spots.” Abstract. In another embodiment, “a
`
`single white-light source is used, and the beam of white light is split by a
`
`prism system into separate color beams.” Id. The patent describes how
`
`prior art video projector systems, such as color Liquid Crystal Display
`
`(LCD) projectors, were expensive and had difficulty providing adequate
`
`light levels. Col. 1, ll. 15-25. According to the patent, “using a triple
`
`monochrome LCD structure instead of a color [active matrix LCD] AM-
`
`LCD, and pre-coloring of light,” results in a less expensive projector with
`
`better light output and better image quality. Col. 2, ll. 7-19.
`
`Figure 1 of the ’334 patent is reproduced below:
`
`Figure 1 depicts an exemplary video projector system comprising, inter alia,
`
`(A) lamps 132-134, which emit light; (B) condenser lens system 115, which
`
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`Case IPR2013-00112
`Patent 5,779,334
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`focuses the three light beams emitted by the lamps; (C) red/green/blue filters
`
`112-114, through which the respective light beams pass; (D) three
`
`monochrome LCD arrays 117, 118, and 119 in LCD unit 120; (E) controller
`
`122, which controls the arrays; and (F) mirror and prism system 111, which
`
`combines the separate beams into a single beam for projection onto surface
`
`101. Col. 3, ll. 5-60.
`
`Figure 2 of the ’334 patent depicts another embodiment and is
`
`reproduced below:
`
`
`
`In the system depicted in Figure 2, a single white-light source 233 is used
`
`instead of three lamps and the single white-light beam is split into red, green,
`
`and blue beams by prism system 211. Col. 3, l. 61-col. 4, l. 1. The three
`
`light beams pass through “monochrome LCD array 120, which in this
`
`embodiment is controlled by controller 122 just as described for the first
`
`embodiment.” Col. 4, ll. 8-12.
`
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`Case IPR2013-00112
`Patent 5,779,334
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`
`B. Exemplary Claims
`
`Claims 1 and 7 of the ’334 patent are exemplary of the claims at issue:
`
`1. A video projector system comprising:
`
`a source projecting parallel beams of light of different
`colors;
`
`a light-shutter matrix system comprising a number of
`equivalent switching matrices equal to the number of beams
`and placed one each in the beam paths;
`
`a video controller adapted for controlling the light-shutter
`matrix system; and
`
`an optical combination system adapted for combining the
`separate beams after the light-shutter matrix system into a
`single composite beam for projection on a surface to provide a
`video display.
`
`7. A method for projecting a dynamic color image,
`comprising steps of:
`
`a) providing separate parallel beams of colored light;
`
`b) directing the separate color beams on separate cells of
`a monochrome LCD array;
`
`c) switching the monochrome matrix by action of a video
`signal through an LCD controller;
`
`d) recombining the beams of colored light into a single
`beam; and
`
`e) focusing the recombined beam on a surface to provide
`a dynamic color image.
`
`
`
`C. The Prior Art
`
`Petitioner relies on the following prior art:
`
`1. Patent 5,264,951, issued Nov. 23, 1993 (“Takanashi”)
`(Ex. 1002);
`
`2. Patent 5,287,131, issued Feb. 15, 1994 (“Lee”) (Ex.
`1003); and
`
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`Case IPR2013-00112
`Patent 5,779,334
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`3. Patent 5,777,796, filed July 25, 1996, issued July 7,
`1998 (“Burstyn”) (Ex. 1004).
`
`
`
`D. The Asserted Grounds
`
`Petitioner challenges claims 1-14 of the ’334 patent on the following
`
`grounds:
`
`Claims 1 and 4-14 under 35 U.S.C. § 103(a) as being unpatentable
`
`over Takanashi;
`
`Claims 1-14 under 35 U.S.C. § 103(a) as being unpatentable over
`
`Takanashi in view of Lee; and
`
`Claims 1 and 4-14 under 35 U.S.C. § 103(a) as being unpatentable
`
`over Takanashi in view of Burstyn.
`
`
`
`E. Claim Interpretation
`
`Consistent with the statute and legislative history of the America
`
`Invents Act (AIA), the Board will interpret claims using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[they] appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). There is a
`
`“heavy presumption” that a claim term carries its ordinary and customary
`
`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002). However, a “claim term will not receive its ordinary meaning if
`
`the patentee acted as his own lexicographer and clearly set forth a definition
`
`of the disputed claim term in either the specification or prosecution history.”
`
`Id. “Although an inventor is indeed free to define the specific terms used to
`
`describe his or her invention, this must be done with reasonable clarity,
`
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
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`Case IPR2013-00112
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`1994). Also, we must be careful not to read a particular embodiment
`
`appearing in the written description into the claim if the claim language is
`
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`
`(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
`
`specification.”).
`
`We construe certain claim limitations as follows:
`
`
`
`1. “Light-Shutter Matrix System” (Claims 1 and 11)
`
`Independent claim 1 recites a “light-shutter matrix system comprising
`
`a number of equivalent switching matrices equal to the number of beams and
`
`placed one each in the beam paths.” Independent claim 11 recites a similar
`
`limitation.
`
`Patent Owner argues that the plain meaning of the term “light-shutter
`
`matrix system” is “a two-dimensional array of light-shutter elements, in
`
`which each light-shutter element can be used to shut or block out portions of
`
`a beam of light.” Prelim. Resp. 11-12. As support for its proposed
`
`interpretation, Patent Owner cites Patent 6,002,207 (“Beeteson”) (Ex. 2003),
`
`which describes a “shutter 22” having “a two-dimensional array of
`
`individually addressable shutter elements for alternately admitting and
`
`blocking passage of light.” Prelim. Resp. 11-13 (citing Beeteson, col. 11, ll.
`
`43-55). Petitioner does not propose a definition for “light-shutter matrix
`
`system.”
`
`The Specification of the ’334 patent does not explicitly define “light-
`
`shutter matrix system,” but provides some guidance as to the meaning of the
`
`term. The patent states that “[i]n a preferred embodiment the light-shutter
`
`matrices are monochrome LCD arrays” where “[r]ed, green, and blue filters
`
`
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`Case IPR2013-00112
`Patent 5,779,334
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`are used to provide red, green, and blue beams to an LCD matrix system.”
`
`’334 patent, col. 2, ll. 3-6. The patent further discloses that in the
`
`embodiment shown in Figure 1, light passes through “three monochrome
`
`LCD arrays 117, 118, and 119” of “LCD unit 120,” but does not describe the
`
`function or operation of the arrays. Id., col. 3, ll. 20-29; see also id., col. 4,
`
`ll. 20-21 (“there are many ways to implement light shutter devices besides
`
`LCD’s”). In the embodiment shown in Figure 2, three color light beams
`
`pass through “cells of a monochrome LCD array.” Id., col. 2, ll. 20-24. In
`
`this embodiment, reference numeral 120 denotes a single “monochrome
`
`LCD array 120” rather than an “LCD unit 120” comprising three
`
`monochrome LCD arrays as shown in Figure 1. Id., col. 3, ll. 20-29; col. 4,
`
`ll. 1-12. Thus, based on the claim language and Specification of the ’334
`
`patent, a light-shutter matrix system is simply a set of light-shutter matrices,
`
`examples of which are a monochrome LCD array and a cell of a
`
`monochrome LCD array. This is further confirmed by claims 6 and 14,
`
`which depend from claims 1 and 11, respectively, and recite that “the light-
`
`shutter matrix system comprises a monochrome LCD array.”
`
`Other than giving examples of a monochrome LCD array and cell of a
`
`monochrome LCD array, however, the Specification does not explain what
`
`is meant by a “light-shutter matrix.” We therefore look to the term’s
`
`ordinary and customary meaning as it would be understood by a person of
`
`ordinary skill in the art. A “shutter” is a “mechanical device that limits the
`
`passage of light.” See Merriam-Webster’s Collegiate Dictionary at 1084
`
`(10th ed. 1993) (Ex. 3001).1 A liquid crystal display (LCD) is something
`
`
`1 Copies of the dictionary definitions cited herein have been entered as
`Exhibits 3001 and 3002.
`
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`Case IPR2013-00112
`Patent 5,779,334
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`that limits the passage of light. One dictionary, for example, describes the
`
`operation of an LCD as follows:
`
`A display system consisting essentially of a very thin layer of
`liquid sandwiched between two conducting glass plates
`between which the control voltage is applied. One way in
`which the applied voltage controls the light transmission of the
`device is by varying the light scattering in the liquid which is
`specially chosen because of its long-molecule construction.
`The conducting areas of the plates are such that, by applying
`voltages to certain of the leads, specified areas of the display
`can be illuminated by light transmitted through the device or
`reflected at the rear glass plate. Thus a seven-segment pattern
`can be used to give a numerical display.
`
`Newnes Dictionary of Electronics at 186 (1999) (Ex. 3002) (emphasis
`
`added). A “matrix” is “something resembling a mathematical matrix
`
`esp[ecially] in rectangular arrangement of elements into rows and columns.”
`
`Ex. 3001 at 716. Thus, applying the broadest reasonable interpretation in
`
`light of the Specification, “light-shutter matrix system” in the context of the
`
`’334 patent means a set of matrices, such as monochrome LCD arrays or
`
`cells of a monochrome LCD array, where each matrix comprises a
`
`rectangular arrangement of elements capable of limiting the passage of light.
`
`We disagree with Patent Owner’s proposed interpretation of “light-
`
`shutter matrix system,” as we do not see how the disclosure of Beeteson is
`
`relevant to interpreting “light-shutter matrix system” in the context of the
`
`claims of the ’334 patent. Beeteson does not use the term “light-shutter
`
`matrix system.” Moreover, Beeteson describes a specific “shutter 22,” not a
`
`“shutter” in general. Patent Owner has not shown that Beeteson’s
`
`description of its shutter is indicative of how a person skilled in the art
`
`would understand the term generically or specifically as it pertains to the
`
`’334 patent. See Beeteson, col. 11, ll. 43-55.
`
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`Case IPR2013-00112
`Patent 5,779,334
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`
`For purposes of this decision, we interpret “light-shutter matrix
`
`system” to mean a set of matrices, such as monochrome LCD arrays or cells
`
`of a monochrome LCD array, where each matrix comprises a rectangular
`
`arrangement of elements capable of limiting the passage of light.2
`
`
`
`2. “Video Controller Adapted for Controlling the
`Light-Shutter Matrix System” (Claims 1 and 11)
`
`Independent claims 1 and 11 recite a “video controller adapted for
`
`controlling the light-shutter matrix system.” Patent Owner argues that the
`
`phrase means “a component that controls light-shutter matrices to facilitate
`
`the display of video in accordance with a video signal.” Prelim. Resp. 14-
`
`18.3 Petitioner does not propose a definition for “video controller” or the
`
`full phrase in which it appears.
`
`The Specification of the ’334 patent does not explicitly define “video
`
`controller adapted for controlling the light-shutter matrix system,” but rather
`
`describes controller 122 in broad terms. A “video signal for the system is
`
`delivered from outside via link 125 into a controller 122,” controller 122
`
`then “controls the three monochrome matrices 117, 118, and 119,” and the
`
`three beams exiting the monochrome LCD matrices are combined into a
`
`
`2 In Case IPR2013-00029, we interpreted “light-shutter matrix system” in
`the claims of the ’545 patent similarly to mean “a set of matrices, such as
`monochrome LCD arrays, where each matrix comprises a rectangular
`arrangement of elements capable of limiting the passage of light.” See
`IPR2013-00029, Paper 11 at 6-9.
`3 In Case IPR2013-00029, Patent Owner argued that a similar phrase “video
`controller adapted for controlling the light-shutter matrices” means
`“something that directs or regulates display of video images at least in part
`by controlling matrices of light shutters.” See IPR2013-00029, Paper 8 at 6-
`8.
`
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`single composite beam “for projection on a surface to provide a video
`
`display.” ’334 patent, col. 3, ll. 36-41; col. 1, ll. 65-67; see also id., Figs. 1,
`
`2 (“LCD Controller with Live Video Capability”); col. 2, ll. 15-18 (“three
`
`video-controlled color beams”); col. 4, ll. 24-25 (“[t]here are many ways
`
`adequate controllers may be implemented”). Also, in the embodiment
`
`shown in Figure 2, LCD array 120 is “controlled by controller 122 just as
`
`described for the first embodiment” shown in Figure 1. Id., col. 4, ll. 8-12.
`
`Applying the broadest reasonable interpretation of the phrase based on the
`
`Specification, “video controller adapted for controlling the light-shutter
`
`matrix system” means a component that controls the light-shutter matrix
`
`system to facilitate the display of video.
`
`Patent Owner’s proposed interpretation is similar, but specifies that
`
`the control must be “in accordance with a video signal.” Prelim. Resp. 15-
`
`16. As support, Patent Owner cites the Abstract of the ’334 patent, which
`
`states that “[t]he LCD array is switched by a controller driven in accordance
`
`with a video signal,” and column 2, lines 24-25, which state that “[t]he LCD
`
`array is switched by a controller following a video signal.” Id. Patent
`
`Owner, however, has not explained sufficiently why these excerpts indicate
`
`that the “video controller adapted for controlling the light-shutter matrix
`
`system” recited in the claims must be defined to control in accordance with a
`
`video signal. The excerpts instead appear to describe merely exemplary
`
`embodiments. We also note that other claims, such as claims 7 and 9, recite
`
`a “video signal,” but independent claims 1 and 11 do not.
`
`For purposes of this decision, we interpret “video controller adapted
`
`for controlling the light-shutter matrix system” to mean a component that
`
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`Case IPR2013-00112
`Patent 5,779,334
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`controls the light-shutter matrix system to facilitate the display of video.4
`
`
`
`3. “Equivalent Switching Matrices” (Claims 1 and 11)
`
`Independent claim 1 recites that the light-shutter matrix system
`
`comprises “a number of equivalent switching matrices equal to the number
`
`of beams and placed one each in the beam paths.” Independent claim 11
`
`recites a similar limitation. Patent Owner argues that “equivalent switching
`
`matrices” means “switching matrices that are virtually identical in effect or
`
`function.” Prelim. Resp. 18-19. In support of its interpretation, Patent
`
`Owner cites a dictionary definition of “equivalent” as “corresponding or
`
`virtually identical esp[ecially] in effect or function.” Id. (citing Ex. 2001 at
`
`392-93). Petitioner does not propose a definition for “equivalent switching
`
`matrices.”
`
`We agree with Patent Owner that the dictionary definition of
`
`“equivalent” is indicative of its ordinary and customary meaning. The
`
`definition is also consistent with the Specification of the ’334 patent, which
`
`describes “three monochrome LCD arrays 117, 118, and 119” for the colors
`
`red, green, and blue. ’334 patent, col. 3, ll. 20-23. We disagree with Patent
`
`Owner’s proposed interpretation, however, because it removes the word
`
`“corresponding” from the dictionary definition.
`
`For purposes of this decision, we interpret “equivalent switching
`
`matrices” to mean switching matrices that are corresponding or virtually
`
`identical in effect or function.
`
`
`4 In Case IPR2013-00029, we interpreted “video controller adapted for
`controlling the light-shutter matrices” in the claims of the ’545 patent
`similarly to mean “a component that controls light-shutter matrices to
`facilitate the display of video.” See IPR2013-00029, Paper 11 at 9-10.
`
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`Patent 5,779,334
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`4. Other Terms
`
`All other terms in claims 1-14 are given their ordinary and customary
`
`meaning and need not be construed further at this time.
`
`
`
`II. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability and
`
`Patent Owner’s arguments in its preliminary response to determine whether
`
`Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`
`
`
`A. Grounds Based on Takanashi (Ex. 1002)
`
`Petitioner contends that under 35 U.S.C. § 103(a), claims 1 and 4-14
`
`are unpatentable over Takanashi, claims 1-14 are unpatentable over
`
`Takanashi in view of Lee, and claims 1 and 4-14 are unpatentable over
`
`Takanashi in view of Burstyn. Pet. 5-37. We conclude that Petitioner has
`
`established a reasonable likelihood of prevailing on its assertion that claims
`
`1-6 and 11-14 are unpatentable over Takanashi in view of Lee for the
`
`reasons explained below.
`
`Takanashi discloses a “spatial light modulator and a display unit in
`
`which the spatial light modulator is applied.” Takanashi, col. 1, ll. 8-10.
`
`Figure 17 of Takanashi is reproduced below:
`
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`Case IPR2013-00112
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`
`
`As shown in Figure 17, light source LS emits light, which is linearly
`
`polarized by polarizer PL1 and separated into red, green, and blue
`
`components by three-color separation optical system 11. Id., col. 16, ll. 1-
`
`14. Each respective light beam then passes through a liquid crystal element
`
`(e.g., ECBtr for red light), polarizer (e.g., PL2r for red light), and spatial
`
`light modulator (e.g., SLMtr for red light), which “modulate[s]” the
`
`respective light beam through the use of incoming “write light WL.” Id.,
`
`col. 16, ll. 6-28; col. 1, l. 18-col. 5, l. 25; Figs. 1-3. The light beams are then
`
`recombined by three-color combination optical system 12 and the combined
`
`light passes through another polarizer PL3 and projection lens PJL, which
`
`projects it onto a screen (not shown). Id., col. 16, ll. 29-42.
`
`Takanashi also discloses a slightly different arrangement shown in
`
`Figure 16 reproduced below:
`
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`
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`In Figure 16, light emitted by light source LS is incident on dichroic prism
`
`DP, which separates the light into red, green, and blue components before
`
`being transmitted to the ECB, PL, and SLM elements. Id., col. 15, ll. 30-43.
`
`For example, green light “is transmitted through the liquid crystal element
`
`ECBtg and the polarizer PLg and incident on the modulator element
`
`SLMrg.” Id. Similarly, Figure 26 depicts an exemplary display unit
`
`comprising reflection optical modulator elements SLMrr, SLMrg and
`
`SLMrb; wavelength selection filters 4a, 4b and 4c; and dichroic mirror 70.
`
`Id., col. 18, l. 35-col. 19, l. 2. Figure 26 is reproduced below:
`
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`In Figure 26, incoming white light from light source K is separated into red,
`
`green, and blue components where each light beam goes through a
`
`wavelength selection filter 4, is modulated by modulator element SLM and
`
`reflected, and eventually reaches screen 19. Id., col. 18, l. 55-col. 19, l. 2.
`
`
`
`
`
`1. Obviousness Based on Takanashi Alone
`
`Claims 1, 4-6, and 11-14
`
`Patent Owner argues that Takanashi does not teach a “video controller
`
`adapted for controlling the light-shutter matrix system” as recited in
`
`independent claims 1 and 11, and that it would not have been obvious to
`
`include such a feature in the Takanashi system based on the reference alone.
`
`Prelim. Resp. 23-25. Patent Owner’s argument is persuasive. As explained
`
`above, we interpret “video controller adapted for controlling the light-shutter
`
`matrix system” to mean a component that controls the light-shutter matrix
`
`system to facilitate the display of video. Petitioner identifies “write light
`
`WL” that “causes the spatial light modulator to change the read light RL
`
`according to the intensity distribution of the write light WL” as the claimed
`
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`video controller. Pet. 11, 19. Write light WL, however, is merely an input
`
`in the Takanashi system, not a component capable of controlling a system.
`
`See, e.g., Takanashi, col. 3, ll. 39-52; col. 16, ll. 6-28. Petitioner further
`
`argues that to the extent Takanashi does not teach a video controller, “it
`
`would have been obvious to one of ordinary skill in the art that, in view of
`
`Takanashi teaching transmitting write light information to cause[] the spatial
`
`light modulator to encode the three light beams, a video controller would
`
`control the write light information sent to the light-shutter matrix system,”
`
`relying on the Declaration of A. Bruce Buckman, Ph.D., who testifies as to
`
`the same. Pet. 11 (citing Ex. 1005 at 13). Beyond the bare assertion that the
`
`feature would have been obvious, however, Petitioner does not explain why
`
`a person of ordinary skill in the art would include a “video controller
`
`adapted for controlling the light-shutter matrix system” in the specific
`
`system disclosed in Takanashi based on the teachings of the reference alone.
`
`Thus, we agree with Patent Owner that Petitioner has not demonstrated a
`
`reasonable likelihood that independent claims 1 and 11, as well as dependent
`
`claims 4-6 and 12-14, are obvious based on Takanashi.
`
`
`
`Claims 7-10
`
`Independent claim 7 recites “directing the separate color beams on
`
`separate cells of a monochrome LCD array” and “switching the
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`monochrome matrix by action of a video signal through an LCD controller.”
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`Independent claim 9 recites similar “directing” and “switching” steps.
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`Patent Owner argues that Petitioner fails to make a threshold showing that
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`Takanashi teaches these limitations. Prelim. Resp. 2, 33-34. We agree.
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`In its Petition, Petitioner includes a claim chart mapping the elements
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`of the claims to the disclosure of Takanashi. Pet. 9-21. As to the “directing”
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`steps of claims 7 and 9, Petitioner refers to its earlier analysis of the
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`following limitation of claim 6: “wherein the light-shutter matrix system
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`comprises a monochrome LCD array.” Id. at 15-17; Ex. 1005 at 17-18, 20
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`(same). Claim 6, however, does not recite directing beams of colored light
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`onto “cells” of a monochrome LCD array or matrix as required by claims 7
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`and 9, and Petitioner’s analysis of claim 6 does not identify what structures
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`Petitioner believes are the required “cells” in Takanashi. Similarly, as to the
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`“switching” steps of claims 7 and 9, Petitioner refers to its earlier analysis of
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`the following limitation of claim 1: “a video controller adapted for
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`controlling the light-shutter matrix system.” Pet. at 11, 16, 18; Ex. 1005 at
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`12-13, 18, 20 (same). Claim 1, however, does not recite any “switching” of
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`a matrix by action of a “video signal” through an “LCD controller” as
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`required by claims 7 and 9. Petitioner does not identify a “video signal” or
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`“LCD controller” in Takanashi or explain how Takanashi performs the
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`claimed “switching.” Petitioner also does not explain why a person of
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`ordinary skill in the art would have found the claimed subject matter,
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`including the additional limitations, obvious based on Takanashi alone.
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`When claims include materially different limitations as compared to
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`other claims (e.g., the “video signal” in claims 7 and 9), it is not sufficient to
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`refer merely to the analysis of the other claims. Petitioner fails to provide a
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`sufficient and credible explanation as to how Takanashi teaches the
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`limitations of claims 7 and 9, and therefore has not demonstrated a
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`reasonable likelihood of prevailing.
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`Based on the information presented in the Petition and accompanying
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`declaration, we conclude that Petitioner has not established a reasonable
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`likelihood of prevailing on its assertion that claims 1 and 4-14 are
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`unpatentable over Takanashi under 35 U.S.C. § 103(a).5
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`2. Obviousness Based on Takanashi in View of Lee
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`Claims 1-6 and 11-14
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`Petitioner relies on Takanashi as teaching the majority of elements of
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`independent claims 1 and 11. Pet. 21-37. For example, Petitioner argues
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`that “Takanashi’s combination of ECB elements, polarizers PL, and SLM
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`elements” is a “light-shutter matrix system” as recited in independent claims
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`1 and 11. Pet. 23-24, 35 (citing Ex. 1005 at 28). Dr. Buckman also testifies
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`that “[o]ne of ordinary skill in the art would have recognized that the ECBtr,
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`PL2r, and SLMtr elements combined are a switching matrix used to process
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`only red beams,” and likewise would have understood the ECB, PL2, and
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`SLM elements for green and blue to be switching matrices for green and
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`blue beams. Ex. 1005 ¶ 18. Petitioner relies on Lee for the feature of a
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`“video controller adapted for controlling the light-shutter matrix system”
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`recited in claims 1 and 11. Pet. 21-26, 35-36. Petitioner argues that a person
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`of ordinary skill in the art would have had reason to combine the teachings
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`of Takanashi with those of Lee to arrive at the claimed systems, citing the
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`analysis of Dr. Buckman. Id. at 21-24; Ex. 1005 at 24-26, 29. For instance,
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`Dr. Buckman testifies that “the use of a video controller in a projector
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`5 Because Petitioner has not met its burden for the reasons explained above,
`we need not address Patent Owner’s arguments regarding other aspects of
`Petitioner’s proposed ground of unpatentability based on Takanashi alone.
`See Prelim. Resp. 25-32, 34-36.
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`system was basic, standard practice and would have been abundantly evident
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`to even beginners in the art as a way to control a light-shutter matrix or other
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`matrix to output spatially and temporally modulated light.” Ex. 1005 ¶ 22.
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`Patent Owner makes three arguments. First, Patent Owner argues that
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`Takanashi does not teach a “light-shutter matrix system.” Prelim. Resp. 25-
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`29, 40. As explained above, we interpret “light-shutter matrix system” to
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`mean a set of matrices, such as monochrome LCD arrays or cells of a
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`monochrome LCD array, where each matrix comprises a rectangular
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`arrangement of elements capable of limiting the passage of light.
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`According to Patent Owner, Takanashi does not teach the “light-
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`shutter” aspect of a “light-shutter matrix system” because each combination
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`of ECB, PL2, and SLM elements forms a “wavelength selection filter,”
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`which is not a “light-shutter” according to Patent Owner. Id. at 29. We do
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`not find this argument persuasive. Takanashi discloses in each combination
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`a liquid crystal element ECB, and an LCD array is an example of a light-
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`shutter matrix according to the ’334 patent. See Takanashi, col. 16, ll. 6-20;
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`’334 patent, col. 2, ll. 3-6; col. 3, ll. 20-29. Petitioner therefore has made a
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`threshold showing with respect to the “light-shutter” aspect of the “light-
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`shutter matrix system” in claims 1 and 11.
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`Patent Owner also argues that Takanashi does not teach the “matrix”
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`aspect of a “light-shutter matrix system” because the ECB, PL2, and SLM
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`components are single elements rather than rectangular arrangements of
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`elements. Prelim. Resp. at 13-14, 25-29. Takanashi, however, discloses a
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`two-dimensional “color image of the object of display” projected onto a
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`screen as a result of the operation of the ECB, PL2, and SLM elements cited
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`by Dr. Buckman. See Takanashi, col. 16, ll. 38-42; Figs. 17, 20. Patent
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`Owner contends that a two-dimensional image display does not indicate
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`necessarily a rectangular arrangement of elements because “a continuous
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`layer of optical material (e.g., a photographic slide, film frame, overhead
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`projector sheet with writing) may also produce a two-dimensional image
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`when a light is projected therethrough.” Prelim. Resp. 26-28. Patent Owner,
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`however, does not provide sufficient support for its contention that
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`Takanashi produces two-dimensional images in that manner (i.e., like a
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`frame of film) as opposed to using light-shutter “matrices.” Based on the
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`disclosure of Takanashi and the information presented in the Petition and
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`accompanying declaration, we conclude that Petitioner has made a threshold
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`showing with respect to the “matrix” aspect of the “light-shutter matrix
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`system” in claims 1 and 11.
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`Second, Patent Owner argues that the combinations of ECB, PL2, and
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`SLM elements identified by Petitioner are not “equivalent switching
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`matrices” because each passes through only one specific color of light (red,
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`green, or blue) and is a different “kind” of wavelength selection filter. Id. at
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`29-32, 40-41 (citing Takanashi, col. 18, ll. 34-44). As explained above, we
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`interpret “equivalent switching matrices” to mean switching matrices that
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`are corresponding or virtually identical in effect or function. Petitioner has
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`made a threshold showing with respect to the alleged switching matrices,
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`which correspond to each other and, apart from allowing different colors of
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`light (red, green, or blue) to pass through, appear to function in the same
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`manner. See Pet. 23-26, 35.
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`Third, Patent Owner argues that light shutter controlling circuit 19 in
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`Lee, which Petitioner identifies as the claimed video controller, is not a
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`“video controller adapted for controlling the light-shutter matrix system.”
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`Prelim. Resp. 36-40; see Pet. 24-25, 35-36; Ex. 1005 at 24-26, 29, 40.
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`According to Patent Owner, light shutter controlling circuit 19 functions as a
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`“color wheel” successively permitting colored light to