UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`XILINX, INC.
`Petitioner
`
`v.
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`INTELLECTUAL VENTURES I LLC
`Patent Owner
`
`__________________
`
`Case IPR2013-00112
`Patent 5,779,334
`____________________
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`INTELLECTUAL VENTURES’ PATENT OWNER MOTION TO AMEND
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`4820-2215-6821.2
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`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`XILINX, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`
`__________________
`
`Case IPR2013-00112
`Patent 5,779,334
`____________________
`
`INTELLECTUAL VENTURES’ PATENT OWNER MOTION TO AMEND
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`4820-2215-6821.2
`
`
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`Patent Owner Motion to Amend
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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.
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`II.
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`STATEMENT OF PRECISE RELIEF REQUESTED ...................................1
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`CLAIM LISTING............................................................................................1
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`III. CLAIMS 15 AND 16 DO NOT ENLARGE THE CLAIM SCOPE………..2
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`IV. WRITTEN DESCRIPTION SUPPORT..........................................................8
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`V.
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`CLAIMS 15 AND 16 ARE PATENTABLY DISTINCT OVER THE
`ART ...............................................................................................................11
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`VI. CONCLUSION AND RELIEF REQUESTED……………………….........15
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`VII. LIST OF EXHIBITS......................................................................................16
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`4820-2215-6821.2
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`i
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`Table of Authorities
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`Cases
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`Ameranth v. Pizza Hut, Inc., U.S. Dist. Lexis 20483 (S.D. CA 2012)……………..6
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`Anthony v. Office of Personnel Management, 58 F.3d 620 (Fed. Cir. 1995)………7
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`Commissioner v. Keystone Consol. Industries, Inc., 508 U.S. 152 (1993).……..…7
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`Envtl. Def. v. Duke Energy Corp., 549 U.S. 561 (2007) …………………………..4
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`In re Freeman, 30 F.3d 1459 (Fed. Cir. 1994)……………………………………..6
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`Idle Free v. Bergstrom, IPR2012-00027 (PTAB 2013)……………………...passim
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`Novo Nordisk v. Caraco Pharmaceutical Labs., Ltd., 601 F.3d 1359 (Fed. Cir.
`2010)…………………………………………………………………………….….4
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`Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995) ……………….5, 6
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`In re Ruth, 278 F.2d 729 (CCPA 1960)…………………………………………….4
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`Taurus IP, LLC v. DaimlerChrysler Corp., No. 2008-1462 (Fed. Cir. Aug. 9,
`2013)………………………………………………………………………….…….8
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`Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033 (Fed. Cir. 1987)…………………..4
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`Thermalloy, Inc. v. Aavid Eng’g, 121 F.3d 691 (Fed. Cir. 1997)…………………..6
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`Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546 (Fed. Cir. 1989)……….2, 8
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`Statutes
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`35 U.S.C. § 112 ……………………………………………………………………2
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`35 U.S.C. § 251....……………………………………………………………passim
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`35 U.S.C. § 305………………………………………………...………………..5, 6
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`35 U.S.C. § 314………………………………………………………………….6, 7
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`35 U.S.C. § 316………………………………………………...……………..1, 3, 8
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`4820-2215-6821.2
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`ii
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`Patent Owner Motion to Amend
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`Regulations
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`37 C.F.R. § 42.22 .......................................................................................................1
`37 C.F.R. § 42.121 ............................................................................................ 1, 3, 8
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`iii
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Patent owner Intellectual Ventures I LLC moves pursuant to 35 U.S.C. § 316
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`and 37 C.F.R. §§ 42.22 and 42.121 to cancel Claim 3 and to substitute Claim 15 in
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`its place, contingent on Claim 3 being found unpatentable by the Board, and
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`similarly to cancel 12 and to substitute Claim 16 in its place, contingent on Claim
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`12 being found unpatentable by the Board. Patent owner submits that Claims 3 and
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`12 are patentable as issued. Nonetheless, if the Board rules otherwise, then patent
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`owner urges the Board to grant this motion.
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`Patent owner submits that Claims 15 and 16 do not introduce new subject
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`matter and that each of Claims 15 and 16 is fully supported by at least the
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`originally filed specification of U.S. Patent No. 5,779,334 (“the ‘334 patent”) as
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`discussed in the written description support section below. Patent owner also
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`submits that Claims 15 and 16 do not enlarge the scope of the patent claims.
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`II.
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`CLAIM LISTING
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`3. (Canceled)
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`12. (Canceled)
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`15. (Proposed substitute for Claim 3) The video projector system of claim
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`2, wherein the three color filters comprise one each of red, green, and blue filters,
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`and wherein the video projector system further comprises:
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`a second controller adapted to control the three white-light sources; and
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`a control link adapted to connect the video controller to the second controller
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`to provide individualized variable control of each of the three white-light sources.
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`16. (Proposed substitute for Claim 12) The video projector system of claim
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`11 wherein the splitter divides the beam of white light into three separate beams of
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`colored , one red, one green, and one blue., further comprising:
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`a second controller adapted to control the source; and
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`a control link adapted to connect the video controller to the second controller
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`to provide variable control of the source.
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`III. CLAIMS 15 AND 16 DO NOT ENLARGE THE CLAIM SCOPE
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`Claims 15 and 16 do not enlarge the scope of the claims of the patent, even
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`though new dependent Claim 16 eliminates elements present in the dependent
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`claim it replaces. Claims 15 and 16 are proper dependent claims under 35 U.S.C. §
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`112, 4th paragraph. They “specify a further limitation of the subject matter
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`claimed.” Id. By statutory mandate, each “shall be construed to incorporate by
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`reference all the limitations of the claim to which it refers.” Id. That matters
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`because, as the Federal Circuit wrote years ago, “[i]t is axiomatic that dependent
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`claims cannot be found infringed unless the claims from which they depend have
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`been found to have been infringed.” Wahpeton Canvas Co. v. Frontier, Inc., 870
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`F.2d 1546, 1553 (Fed. Cir. 1989).
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`2
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`Patent owner is aware of the Board’s decision on the motion to amend in
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`Idle Free v. Bergstrom, IPR2012-00027 (Paper 26), where on page 5 the Board
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`interpreted a regulation and stated that “under 37 C.F.R. § 42.121(a)(2)(ii), a
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`substitute claim may not enlarge the scope of the challenged claim it replaces by
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`eliminating any feature.” The cited regulation is based on a statute, 35 U.S.C. §
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`316(d). For the reasons discussed below, patent owner respectfully disagrees with
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`Idle Free’s interpretation to the extent that it forbids what the statute permits –
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`eliminating an element from a dependent claim.
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`The non-precedential Idle Free interpretation exceeds the Board’s rule,
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`which rule prohibits an amendment that “seeks to enlarge the scope of the claims
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`of the patent.” 37 C.F.R. § 42.121(a)(2)(ii). This rule is based on 35 U.S.C. §
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`316(d)(3), which states that an “[a]mendment under this subsection may not
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`enlarge the scope of the claims of the patent.” That statutory language against
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`“enlarge[ing] the scope of the claims” echoes the reissue statute.
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`In the context of a reissue application, 35 U.S.C. § 251(d) states that “[n]o
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`reissued patent shall be granted enlarging the scope of the claims of the original
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`patent unless applied for within two years from the grant of the original patent.”
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`(Emphasis added). Significantly, the statutory language in 35 U.S.C. § 251(d)
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`(“enlarging the scope of the claims of the original patent”) is effectively identical
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`4820-2215-6821.2
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`to the statutory language in 35 U.S.C. § 316(d)(3) (“enlarge the scope of the claims
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`of the patent”). Under familiar canons of statutory construction, like terms in a
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`statute should be construed alike. See, e.g., Envtl. Def. v. Duke Energy Corp., 549
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`U.S. 561, 574 (2007) (noting that the identical words used in the same act are
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`presumed to have the same meaning). See also Novo Nordisk v. Caraco
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`Pharmaceutical Labs., Ltd., 601 F.3d 1359, 1366 (Fed. Cir. 2010).
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`For more than five decades at the Federal Circuit and its predecessor, the test
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`for determining whether a reissue claim is broader in scope has been phrased in
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`terms of an infringement analysis: “A claim of a reissue application is broader in
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`scope than the original claims if it contains within its scope any conceivable
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`apparatus or process which would not have infringed the original patent.”
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`Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987); see also
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`In re Ruth, 278 F.2d 729, 730 (CCPA 1960). The Board should apply the same
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`broadening test to claim amendments in an inter partes review. This long-settled
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`view of the law regarding enlarging the scope of the claims of a patent is reflected
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`in the agency’s own official guidance to its examiners and the patent bar. In
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`interpreting 35 U.S.C. § 251(d), section 1412.03(II) of the MPEP states:
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`As pointed out above, a claim will be considered a broadened
`reissue claim when it is greater in scope than each and every
`claim of the patent to be reissued. A corollary of this is that a
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`4820-2215-6821.2
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`IPR2013-00112
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`claim which has been broadened in a reissue as compared to
`its scope in the patent is not a broadened reissue claim if it is
`narrower than, or equal in scope to, any other claim which
`appears in the patent. A common example of this is where
`dependent claim 2 is broadened via the reissue (other than
`the addition of a process step to convert an intermediate to a
`final product), but independent claim 1 on which it is based
`is not broadened. Because a dependent claim is construed to
`contain all the limitations of the claim upon which it
`depends, claim 2 must be at least as narrow as claim 1 and is
`thus not a broadened reissue claim.
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`(Emphasis added). Thus, broadening a dependent claim (claim 2 in the example
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`quoted above) in a situation where “independent claim 1 on which it is based is not
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`broadened,” does not result in a “broadened reissue claim” (i.e., does not
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`“enlarge[e] the scope of the claims of the original patent” under 35 U.S.C. §
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`251(d)) because the “dependent claim is construed to contain all the limitations of
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`the claim upon which it depends.” Therefore, in reissue practice, eliminating an
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`element from a dependent claim complies with the statute and does not “enlarge[e]
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`the scope of the claims of the original patent.” 35 U.S.C. § 251(d).
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`The same is true for ex parte reexamination. See, e.g., 35 U.S.C. § 305,
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`which states “[n]o proposed amendment or new claim enlarging the scope of a
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`claim of the patent will be permitted in a reexamination proceeding.” In Quantum
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`4820-2215-6821.2
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`Corp. v. Rodime, PLC, 65 F.3d 1577, 1582 n.4 (Fed. Cir. 1995), the court held that
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`“[t]he test for determining whether a reexamined claim is broader than an original
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`claim under 35 U.S.C. § 305 is the same as that in 35 U.S.C. § 251, last paragraph,
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`for determining whether reissue claims filed more than two years after issuance of
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`the original patent are broader than the original claims.” See also Thermalloy, Inc.
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`v. Aavid Eng’g, 121 F.3d 691, 692 (Fed. Cir. 1997) (“[a] new claim enlarges if it
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`includes within its scope any subject matter that would not have infringed the
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`original patent.”). These holdings are reflected in MPEP § 2250, which states that
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`“[t]he test for when an amended or ‘new claim enlarges the scope of an original
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`claim under 35 U.S.C. 305 is the same as that under the 2-year limitation for
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`reissue applications adding enlarging claims under 35 U.S.C. 251, last paragraph.’”
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`Id. (quoting In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994)).
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`Similarly, with respect to inter partes reexamination, 35 U.S.C. § 314(a)
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`states in part “that no proposed amended or new claim enlarging the scope of the
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`claims of the patent shall be permitted.” With respect to what is meant by
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`“enlarging the scope of the claims of the patent” in the context of inter partes
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`reexamination, Ameranth v. Pizza Hut, Inc., U.S. Dist. Lexis 20483 (S.D. CA
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`2012) states that “‘[a] claim presented in a reexamination proceeding enlarges the
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`scope of the claims of the patent being reexamined where the claim is broader than
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`each and every claim of the patent.’” (quoting MPEP § 2658, which in turn cites
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`4820-2215-6821.2
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`6
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`MPEP § 1412.03). Thus, the case law and the MPEP make clear that the statutory
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`language of 35 U.S.C. § 314(a) with respect to inter partes reexamination (i.e.,
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`“enlarging the scope of the claims of the patent”) is to be interpreted the same as
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`the statutory language of 35 U.S.C. § 251(d) with respect to reissue practice (i.e.,
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`“enlarging the scope of the claims of the original patent”).
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`As a result, eliminating an element from a dependent claim does not
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`constitute enlarging the scope of the claims of the patent in reissue practice, ex
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`parte reexamination, and inter partes reexamination. That same result should
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`apply in an inter partes review. Indeed, Congress is presumed to know how the
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`courts have interpreted its previous statutes, and is thus presumed to have intended
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`the same interpretation when using the same phrase in a related, new statute.
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`Commissioner v. Keystone Consol. Industries, Inc., 508 U.S. 152, 159 (1993)
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`(noting presumption that Congress is aware of "settled judicial and administrative
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`interpretation[s]" of terms when it enacts a statute); Anthony v. Office of Personnel
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`Management, 58 F.3d 620, 626 (Fed. Cir. 1995).
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`Conversely, in the context of inter partes review, the Board in Idle Free
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`appears to be applying a different interpretation to essentially the same statutory
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`language. Patent owner submits that this is an improper departure from the
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`standard accepted interpretation that the scope of the claims of a patent is enlarged
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`4820-2215-6821.2
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`7
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`if a proposed amendment results in a claim that is greater in scope than each and
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`every claim of the patent being considered.
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`Patent owner respectfully disagrees with the Board’s interpretation in the
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`Idle Free dicta, and submits that the phrase “enlarge the scope of the claims of the
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`patent” in 35 U.S.C. § 316(d)(3) should have the same meaning as the similar
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`statutory language that governs reissue practice, ex parte reexamination practice,
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`and inter partes reexamination practice.
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`Patent owner submits that no apparatus within the scope of new substitute
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`Claims 15 and 16 is outside the scope of the original patent claim from which each
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`respectively depends. (Ex. 2008 at 34). Indeed, that condition is “axiomatic.”
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`Taurus IP, LLC v. DaimlerChrysler Corp., No. 2008-1462, slip op. at 26 n.11
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`(Fed. Cir. Aug. 9, 2013) (quoting Wahpeton Canvas). For at least these reasons,
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`patent owner submits that substitute Claims 15 and 16 do not enlarge the scope of
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`the claims of the ‘334 patent.
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`IV. WRITTEN DESCRIPTION SUPPORT
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`A motion to amend must set forth “[t]he support in the original disclosure of
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`the patent for each claim that is added or amended.” 37 C.F.R. § 42.121(b)(1).
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`The originally filed specification of the ‘334 patent is included in Ex. 1007, and the
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`originally filed specification of the parent U.S. Patent No. 5,632,545 (“the ‘545
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`patent”) is included in Ex. 2007. With respect to claim construction, patent owner
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`submits that the claim elements should receive the broadest reasonable
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`construction in accordance with their plain and ordinary meaning to a person of
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`ordinary skill in the art, in light of the specification and prosecution history.
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`Claim 15 requires “[t]he video projector system of claim 2, wherein the three
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`color filters comprise one each of red, green, and blue filters.” The element is
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`supported in the originally filed specification of the ‘334 patent at least by page 4,
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`line 29 – page 5, line 2 (Ex. 1007 at 10-11), elements 112-114 of Fig. 1 (Ex. 1007
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`at 19), and as well as original Claim 3 (Ex. 1007 at 13). This element is also
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`supported in the originally filed specification of the parent ‘545 patent at least by
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`page 4, lines 12-15 (Ex. 2007 at 10) and elements 112-114 of Fig. 1 (Ex. 2007 at
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`17). See Ex. 2008 at ¶ 35.
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`Claim 15 also requires that the video projector system further comprises “a
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`second controller adapted to control the three white-light sources.” Claim 16
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`similarly requires “a second controller adapted to control the source.” These
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`elements are supported in the originally filed specification of the ‘334 patent at
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`least by page 4, lines 23-25 (Ex. 1007 at 10), page 5, lines 28-30 (Ex. 1007 at 11),
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`element 130 in Fig. 1 (Ex. 1007 at 19), and element 130 in Fig. 2 (Ex. 1007 at 20).
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`These elements are also supported in the originally filed specification of the parent
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`9
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`‘545 patent at least by page 4, lines 5-8 (Ex. 2007 at 10), page 5, lines 12-14 (Ex.
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`2007 at 11), and element 130 in Fig. 1 (Ex. 2007 at 17). See Ex. 2008 at ¶ 36.
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`Claim 15 further requires “a control link adapted to connect the video
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`controller to the second controller to provide individualized variable control of
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`each of the three white-light sources.” Claim 16 similarly requires “a control link
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`adapted to connect the video controller to the second controller to provide variable
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`control of the source.” These elements are supported in the originally filed
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`specification of the ‘334 patent at least by page 5, lines 28-30 (Ex. 1007 at 11),
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`element 124 in Fig. 1 (Ex. 1007 at 19), and element 124 in Fig. 2 (Ex. 1007 at 20).
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`These elements are also supported in the originally filed specification of the parent
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`‘545 patent at least by page 5, lines 12-14 (Ex. 2007 at 11) and element 124 in Fig.
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`1 (Ex. 2007 at 17). See Ex. 2008 at ¶ 37.
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`The originally filed specification of the ‘334 patent supports the combination
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`of elements of Claims 15 and 16 as well. With respect to Claim 15, as-filed Fig. 1
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`of the ‘334 patent illustrates a system that includes a second controller (130) and a
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`control link (124) in addition to the elements recited in Claim 1 (i.e., a source (132-
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`134), a light-shutter matrix system (120), a video controller (122), and an optical
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`combination system (111)) and the elements recited in Claim 2 (i.e., three white-
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`light sources (132-134) producing three parallel beams of white light through three
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`10
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`color filters (112-114)). (Ex. 1007 at 19). With respect to Claim 16, as-filed Fig. 2
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`of the ‘334 patent illustrates a system that includes a second controller (130) and a
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`control link (124) in addition to the elements recited in Claim 11 (i.e., a source
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`(233), a splitter (211), a light-shutter matrix system (120), a video controller (122),
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`and an optical combination system (111)). (Ex. 1007 at 20). See Ex. 2008 at ¶ 38.
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`The originally filed specification of the parent ‘545 patent also supports the
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`combination of elements of Claim 15. With respect to Claim 15, as-filed Fig. 1 of
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`the parent ‘545 patent illustrates a system that includes a second controller (130)
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`and a control link (124) in addition to the elements recited in Claim 1 (i.e., a source
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`(132-134), a light-shutter matrix system (120), a video controller (122), and an
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`optical combination system (111)) and the elements recited in Claim 2 (i.e., three
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`white-light sources (132-134) producing three parallel beams of white light
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`through three color filters (112-114)). (Ex. 2007 at 17). See Ex. 2008 at ¶ 39. The
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`originally filed specification of the parent ‘545 patent arguably does not support
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`the combination of elements of Claim 16 because one or more elements from
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`independent Claim 11 are not explicitly disclosed in the parent ‘545 patent.
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`V.
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`CLAIMS 15 AND 16 ARE PATENTABLY DISTINCT OVER THE
`ART
`In its decision on the motion to amend in Idle Free, the Board stated that
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`“[f]or each proposed substitute claim, we expect a patent owner: (1) in all
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`11
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`circumstances, to make a showing of patentable distinction over the prior art.”
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`Paper 26 at 6. As demonstrated by the declaration of Mr. Smith-Gillespie, Ex.
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`2008, an expert in the field, Ex. 2009, patent owner submits that Claims 15 and 16
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`are patentably distinct over both the prior art of record and the prior art known to
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`patent owner. Pages 6-7 of the Idle Free decision identify two additional scenarios
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`in which a showing of patentable distinction is required. Patent owner submits that
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`scenario (2) does not apply because the present motion requests a one-for-one
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`claim substitution. With respect to scenario (3), page 9 of Idle Free states
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`(emphasis added) that "if the substitute claim is presented as patentable over prior
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`art on the same basis that another substitute claim on which it depends is
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`patentable over prior art, then the patent owner should provide meaningful reasons
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`…." Claims 15 and 16 do not depend on one another; rather, Claim 15 depends
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`from Claim 2 (which depends from Claim 1) and Claim 16 depends from
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`independent Claim 11. Thus, scenario (3) also does not apply.
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`Claim 15 requires “a second controller adapted to control the three white-
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`light sources” and “a control link adapted to connect the video controller to the
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`second controller to provide individualized variable control of each of the three
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`white-light sources.” Claim 16 similarly requires “a second controller adapted to
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`12
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`control the source” and “a control link adapted to connect the video controller to
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`the second controller to provide variable control of the source.”
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`The “individualized variable control of each of the individual light sources”
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`(Claim 15) and “variable control of the source” (Claim 16) allow for, as one non-
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`limiting example, adjustment of light source intensity based on varying video
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`requirements such as Average Picture Level. (Ex. 2008 at ¶ 40). This variable
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`control results in less heat generation, in addition to lower power consumption.
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`(Ex. 2008 at ¶ 40).
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`The combination of U.S. Patent No. 5,264,951 to Takanashi (Ex. 1002) and
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`U.S. Patent No. 5,287,131 to Lee (Ex. 1003), which forms the basis for Petitioner’s
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`challenge, fails to disclose or suggest “a second controller” and “control link,” as
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`claimed. In addition, Takanashi, which does not include the term “heat,” makes no
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`mention of any problems associated with generated heat or solutions to such
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`problems. (See Ex. 2008 at ¶ 41). In its background section, Lee states that “in the
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`case of a conventional projection system, due to the close distance between the
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`sources 7 and the LC panels 4, 5 and 6, in order to raise the brightness, a cooling
`
`device is needed because heat generated from the source 7 has an influence over
`
`the LCD characteristics.” (Col. 1, lines 50-55). The system of Lee purportedly
`
`4820-2215-6821.2
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`13
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`
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`Patent Owner Motion to Amend
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`eliminates the need for such a cooling device as discussed at col. 3, line 67 – col. 4,
`
`line 7 (“a cooling device for cooling the LC panel is not necessary any more”).
`
`Thus, Lee recognizes that heat can influence LCD characteristics, resulting
`
`in the need for a cooling device. (Ex. 2008 at ¶ 41). Lee’s solution is to form the
`
`LC panel remote from the light source. Lee, however, fails to disclose or suggest
`
`“a second controller” or “a control link” generally or as a way to reduce the
`
`generated heat that affects characteristics of the LCD panel. (Ex. 2008 at ¶ 41).
`
`The remaining prior art of record and the prior art known to patent owner also fails
`
`to disclose or suggest such elements. See also paragraph 41 of Mr. Smith-
`
`Gillespie’s declaration, Ex. 2008, which states that “I am not aware of any video
`
`projector prior art that discloses the combination of a ‘second controller’ and ‘a
`
`control link,’ as required by proposed Claims 15 and 16.”
`
`The embodiments of Claims 15 and 16 therefore address the problems
`
`identified in Lee with respect to generated heat but does so in a way that differs
`
`from the solutions disclosed in Lee. (Ex. 2008 at ¶ 42). Patent owner submits that
`
`the “second controller” and “control link” of Claims 15 and 16, and indeed those
`
`claims as a whole, would not have been obvious to one of ordinary skill in the art
`
`at the relevant time. (Ex. 2008 at ¶ 42). This is evidenced by the fact that Lee
`
`identifies problems caused by generated heat but does not discuss or contemplate
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`4820-2215-6821.2
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`14
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`
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`Patent Owner Motion to Amend
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`IPR2013-00112
`U.S. Patent No. 5,779,334
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`using “individualized variable control of each of the individual light sources” or
`
`“variable control of the source” to mitigate the problem. (Ex. 2008 at ¶ 42).
`
`Claims 15 and 16 are patentably distinct from the prior art at least because of the
`
`required combination of the “second controller” and “control link.” See also
`
`paragraph 42 of Mr. Smith-Gillespie’s declaration, Ex. 2008, which states that
`
`“[b]ased on my understanding of the prior art at the time of filing the ‘334 patent, I
`
`do not believe that the ‘second controller’ and ‘control link’ as recited in proposed
`
`Claims 15 and 16 would have been obvious to one of ordinary skill in the art.”
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`For at least these reasons, Claims 15 and 16 are patentable over the prior art.
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`VI. CONCLUSION AND RELIEF REQUESTED
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`Patent owner submits that the issued ‘334 claims are patentable. If the
`
`Board agrees, then it need not reach this motion. However, if Claim 3 is found
`
`unpatentable, the Board should grant this motion and find Claim 15 patentable; and
`
`if Claim 12 is found unpatentable, the Board should grant this motion and find
`
`Claim 16 patentable.
`
`Dated: August 27, 2013
`
`Respectfully submitted,
`
`/George E. Quillin/
`George E. Quillin
`Registration No. 32,792
`Counsel for Patent Owner
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`4820-2215-6821.2
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`15
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`
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`Patent Owner Motion to Amend
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`VII. LIST OF EXHIBITS
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
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`Exhibit 1002:
`
`U.S. Patent No. 5,264,951 to Takanashi
`
`Exhibit 1003:
`
`U.S. Patent No. 5,287,131 to Lee
`
`Exhibit 1007:
`
`File history of U.S. Patent No. 5,779,334 to Kikinis
`
`Exhibit 2007:
`
`File history of U.S. Patent No. 5,632,545 to Kikinis
`
`Exhibit 2008:
`
`Declaration of Robert Smith-Gillespie
`
`Exhibit 2009:
`
`CV of Robert Smith-Gillespie
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`4820-2215-6821.2
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`16
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`
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`Patent Owner Motion to Amend
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Patent Owner Motion
`
`to Amend and Exhibits 2007-2009 along with an Exhibit List are being served on
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`counsel of record by filing these documents through the Patent Review Processing
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`System as well as delivering a copy via commercial overnight courier directed to
`
`the counsel of record for the Petitioner at the following address:
`
`David L. McCombs, Esq.
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`
`Dated: August 27, 2013
`
`Respectfully submitted,
`
`/George E. Quillin/
`George E. Quillin
`Registration No. 32,792
`Counsel for Patent Owner
`
`4820-2215-6821.2
`
`17
`
`
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