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
`Patent 5,779,334
`____________________
`
`INTELLECTUAL VENTURES’ PATENT OWNER RESPONSE PURSUANT
`TO 37 C.F.R. § 42.120
`
`4817-2240-0789.2
`
`
`
`__________________
`
`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 RESPONSE PURSUANT
`TO 37 C.F.R. § 42.120
`
`4817-2240-0789.2
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`Table of Contents
`
`I.
`
`INTRODUCTION ..................................................................................... 1
`
`II. MATERIAL FACTS ................................................................................. 2
`
`III. OVERVIEW OF U.S. PATENT NO. 5,779,334 ....................................... 4
`IV. THE BOARD DECISION ENTERED JUNE 27, 2013............................ 7
`
`V.
`
`CLAIM CONSTRUCTION ...................................................................... 7
`A.
`Claims 1-6 and 11-14 require a “light-shutter matrix
`system” ............................................................................................. 8
`Claims 1-6 and 11-14 require a “video controller” ...................... 15
`Claims 1-6 and 11-14 require “equivalent switching
`matrices” ........................................................................................ 18
`
`B.
`C.
`
`VI. THE BOARD SHOULD FIND CLAIMS 1-6 AND 11-14
`PATENTABLE IN VIEW OF XILINX’S CHALLENGE .................... 20
`A.
`Challenge #2: Alleged obviousness in view of Takanashi
`and Lee ........................................................................................... 20
`1.
`Takanashi and Lee do not teach the claimed “light-
`shutter matrix system” ........................................................... 20
`Takanashi and Lee do not teach the claimed “video
`controller adapted for controlling the light-shutter matrix
`system” .................................................................................. 27
`Takanashi and Lee do not teach the claimed “equivalent
`switching matrices”................................................................ 29
`Xilinx Challenges Denied by the Board........................................ 37
`B.
`VII. CONCLUSION AND RELIEF REQUESTED ...................................... 38
`
`2.
`
`3.
`
`4817-2240-0789.2
`
`i
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`Table of Authorities
`
`FEDERAL CASES
`Diamond v. Diehr,
`450 U.S. 175,188-89, 209 USPQ 1 (1981).........................................................8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..........................................................................7
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)............................................................................7
`
`FEDERAL STATUTES
`35 U.S.C. § 103(a) ..........................................................................................20, 32
`
`REGULATIONS
`37 C.F.R. § 42.100(b) .........................................................................................7, 8
`
`4817-2240-0789.2
`
`ii
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`I.
`
`INTRODUCTION
`The petitioner Xilinx, Inc. has not carried its burden. Indeed, Xilinx’s own
`
`witness Dr. Buckman has expressly admitted a fundamental “mistake” he made in
`
`telling the Board about the technology, i.e., about the teachings of the reference
`
`U.S. Patent No. 5,287,131 to Lee. In its petition, Xilinx argued that the claims of
`
`U.S. Patent No. 5,779,334 (hereinafter “the ‘334 patent”) are unpatentable on three
`
`different grounds. On April 22, 2013, patent owner filed a patent owner
`
`preliminary response arguing that the references relied upon in Xilinx’s petition
`
`fail to disclose or suggest several elements required by the claims of the ‘334
`
`patent. In its decision of June 27, 2013 instituting trial, the Board granted Xilinx’s
`
`petition only in part.
`
`Both the Xilinx petition and the Board’s decision rely on the declaration of
`
`Dr. Buckman. Whatever may be Dr. Buckman’s amount of knowledge in other
`
`fields, it became apparent during Dr. Buckman’s deposition in the present case and
`
`in the inter partes review of related U.S. Patent No. 5,632,545 (hereinafter “the
`
`‘545 patent”) that he has less experience in the field of video projector systems.
`
`Several of the assertions made by Dr. Buckman in his declaration are inaccurate or
`
`simply incorrect. At the appointed time, patent owner expects to be filing a motion
`
`to exclude Dr. Buckman’s testimony; absent that testimony, there would be no
`
`adequate evidentiary basis for the petitioner to carry its burden. But even if Dr.
`
`4817-2240-0789.2
`
`1
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`Buckman’s testimony is not excluded, the Board should give his testimony no
`
`weight.
`
`Claims 1-6 and11-14 of the ‘334 patent are patentable over the sole Xilinx
`
`challenge authorized by the Board. Specifically, the applied references fail to
`
`disclose or suggest at least the claimed “light-shutter matrix system comprising a
`
`number of equivalent switching matrices” or “video controller adapted for
`
`controlling the light-shutter matrix system.” For the reasons discussed herein,
`
`patent owner submits that Claims 1-6 and 11-14 of the ‘334 patent are patentable
`
`and requests that the Board issue a final decision to that effect.
`
`II. MATERIAL FACTS
`Xilinx in its petition did not include a statement of material fact. Under
`
`Board Rule 42.23, patent owner presents below its statement of material fact.
`
`1.
`
`At his deposition on August 7, 2013, petitioner’s witness Dr.
`
`Buckman admitted that he has not taught or wrote about the topic of “video
`
`projection.” (Ex. 2010, page 44, lines 2-8).
`
`2.
`
`At his deposition on August 7, 2013, petitioner’s witness Dr.
`
`Buckman admitted that none of his publications have “focused on liquid
`
`crystal displays.” (Ex. 2010, page 44, lines 9-13).
`
`4817-2240-0789.2
`
`2
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`3.
`
`At his deposition on August 7, 2013, petitioner’s witness Dr.
`
`Buckman admitted that he has never constructed a video projection system
`
`or a liquid crystal display. (Ex. 2010, page 45, lines 1-8).
`
`4.
`
`At his deposition on June 11, 2013 in related IPR2013-00029,
`
`petitioner’s witness Dr. Buckman acknowledged that his curriculum vitae
`
`nowhere mentions the terms “liquid crystal” or “video projection display”
`
`(Ex. 2011, p. 8, line 24 – p. 9, line 6) and that he has never testified in a legal
`
`proceeding about liquid crystal displays (Ex. 2011, p. 9, lines 7-10).
`
`5.
`
`In his declaration, petitioner’s witness Dr. Buckman stated that “Lee
`
`teaches using a control circuit (19) that is adapted for controlling light
`
`shutters” and asserted that “[i]n my opinion, the light shutter controlling
`
`circuit [19] of Lee is a video controller adapted to control a light shutter
`
`system.” (Ex. 1005 at 29).
`
`6.
`
`In its decision of June 27, 2013 instituting trial in the present inter
`
`partes review, the Board relied on Dr. Buckman’s assertions in his
`
`declaration that the light shutter controlling circuit 19 of Lee is a video
`
`controller. (Paper 14 at p. 22).
`
`4817-2240-0789.2
`
`3
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`7.
`
`At his deposition on August 7, 2013, petitioner’s witness Dr.
`
`Buckman admitted that, in his declaration which pointed to item 19 of Lee
`
`as the video controller, he “made an error.” Ex. 2010 at p. 38, line 8.
`
`8.
`
`At his deposition on August 7, 2013, petitioner’s witness Dr.
`
`Buckman admitted that element 19 of Lee is “[c]learly not a video
`
`controller.” (Ex. 2010 at p. 38, line 23).
`
`9.
`
`At his deposition on August 7, 2013, petitioner’s witness Dr.
`
`Buckman admitted that he is no longer of the view that using the light
`
`shutter controlling circuit 19 of Lee would be effective as a video controller
`
`in the Takanashi device. (Ex. 2010 at p. 39, lines 10-15).
`
`10.
`
`The light shutter controlling circuit of Lee, item 19, relied upon by the
`
`Board in its decision to institute trial (paper 14 at p. 22), is in fact not a video
`
`controller.
`
`III. OVERVIEW OF U.S. PATENT NO. 5,779,334
`The ‘334 patent is directed to a “color video projector system” that in one
`
`embodiment includes “separate light sources for producing separate beams of light
`
`which are passed each first through color filters to provide separate color beams
`
`before being processed by video-controlled light shutter matrices.” (Abstract.) In
`
`4817-2240-0789.2
`
`4
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`an alternative implementation, “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 beams
`
`of light are combined or recombined and “focused on a surface to produce a
`
`dynamic color image.” (Id.)
`
`The ‘334 patent has fourteen granted claims, of which Claims 1, 7, 9, and 11
`
`are independent. Independent Claims 7 and 9, and their respective dependent
`
`claims, are not involved in this proceeding. Fig. 1 of the ‘334 patent, which is
`
`reproduced below, illustrates the elements required by independent Claim 1.
`
`Claims 1 and 11 of the ‘334 patent require, in part, “a light-shutter matrix
`
`system comprising a number of equivalent switching matrices,” which is illustrated
`
`4817-2240-0789.2
`
`5
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`in Fig. 1 as element 120. For the reasons discussed herein, patent owner submits
`
`that the claimed “light-shutter matrix system” should be interpreted as a two-
`
`dimensional array of elements that selectively admit and block light. As also
`
`discussed herein, patent owner submits that the claimed “equivalent switching
`
`matrices” should be interpreted as switching matrices that are virtually identical in
`
`function and effect.
`
`Claims 1 and 11 of the ‘334 patent also require “a video controller adapted
`
`for controlling the light-shutter matrix system.” With respect to the claimed “video
`
`controller,” the ‘334 patent states:
`
`A video signal for the system is delivered from outside
`via link 125 into a controller 122. A great variety of
`different signal formats are known and can be
`implemented, both analog and digital, or any
`combination of several signals can be used. Controller
`122 controls the three monochrome matrices 117, 118,
`and 119.
`
`(Col. 3, lines 36-40). For the reasons discussed herein, patent owner submits that
`
`the broadest reasonable interpretation of the “video controller” element, in light of
`
`the specification, is a component that controls light-shutter matrices to facilitate the
`
`display of video in accordance with a video signal.
`
`As will be shown, regardless of whether the Board’s claim interpretation or
`
`patent owner’s claim interpretation is applied, the Xilinx petition fails to prove any
`
`4817-2240-0789.2
`
`6
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`disclosure or combination of disclosures that amount to “a light-shutter matrix
`
`system comprising a number of equivalent switching matrices” and “a video
`
`controller adapted for controlling the light-shutter matrix system,” as required by
`
`Claims 1 and 11 of the ‘334 patent.
`
`IV. THE BOARD DECISION ENTERED JUNE 27, 2013
`On June 27, 2013, the Board entered a decision granting Xilinx’s petition in
`
`part and denying Xilinx’s petition in part. Specifically, Challenges #1 and #3 of
`
`Xilinx’s petition were denied, and Challenge #2 of Xilinx’s petition (i.e., that
`
`Claims 1-14 are allegedly obvious in view of U.S. Patent No. 5,264,951 to
`
`Takanashi and U.S. Patent No. 5,287,131 to Lee) was granted only with respect to
`
`Claims 1-6 and 11-14.
`
`V.
`
`CLAIM CONSTRUCTION
`The words of a claim “are generally given their ordinary and customary
`
`meaning.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
`
`1996). “[T]he ordinary and customary meaning of a claim term is the meaning that
`
`the term would have to a person of ordinary skill in the art in question at the time
`
`of the invention, i.e., as of the effective filing date of the patent application.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). The Board is
`
`required to give a claim “its broadest reasonable construction in light of the
`
`4817-2240-0789.2
`
`7
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`specification in which it appears.” 37 C.F.R. § 42.100(b). But a broadest
`
`reasonable construction does not warrant ignoring express elements in a claim.
`
`See, e.g., Diamond v. Diehr, 450 U.S. 175,188-89, 209 USPQ 1, 9 (1981) in which
`
`the court found that “claims must be considered as a whole” and that “[i]t is
`
`inappropriate to dissect the claims into old and new elements and then to ignore the
`
`presence of the old elements in the analysis.”
`
`As will be shown, several claim elements were not given their proper weight
`
`and interpretation in the Board decision entered June 27, 2013. In its final
`
`decision, the Board should construe the terms “light-shutter matrix system,”
`
`“equivalent switching matrices,” and “video controller” in accordance with the
`
`interpretations proposed here. However, even if the Board declines to adopt patent
`
`owner’s proposed claim interpretations, patent owner submits that the combination
`
`of Takanashi and Lee fails to teach or suggest at least a “light-shutter matrix
`
`system,” “equivalent switching matrices,” and a “video controller” as those terms
`
`are interpreted by the Board.
`
`A.
`
`Claims 1-6 and 11-14 require a “light-shutter matrix system”
`Independent Claim 1 requires “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 similarly recites “a light-
`
`4817-2240-0789.2
`
`8
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`shutter matrix system comprising a number of equivalent switching matrices equal
`
`to the number of beams of light of different colors and placed one each in each
`
`beam path.”
`
`In the patent owner preliminary response filed on April 22, 2013, patent
`
`owner proposed that the term “light-shutter matrix” should be interpreted as a two-
`
`dimensional array of elements that are able to selectively admit and block light. In
`
`its decision of June 27, 2013, the Board declined to adopt patent owner’s proposed
`
`interpretation and instead interpreted the phrase “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.” (Paper 14 at 10). Patent
`
`owner does not concede the propriety of the Board’s interpretation. However,
`
`regardless of whether the Board’s interpretation or patent owner’s interpretation is
`
`used, patent owner submits that the applied references fail to teach or suggest the
`
`claimed “light-shutter matrix system.”
`
`The Board’s definition references “cells of a monochrome LCD array.”
`
`When asked during his deposition “what is an LCD cell,” Dr. Buckman responded:
`
`An LCD cell is -- I interpret that as being a -- another
`way to describe pixels. It's a -- it's a part of the spatial
`
`4817-2240-0789.2
`
`9
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`light modulator that corresponds to a particular position
`on a two-dimensional surface that corresponds to, in the
`case of a color projector, the transmissivity at a
`particular color.
`
`(Ex. 2011, p. 12, line 24 – p. 13, line 6). Patent owner disagrees with Dr.
`
`Buckman’s definition of “LCD cell.” See Robert Smith-Gillespie’s declaration
`
`(Ex. 2008) at ¶ 15, which states, with respect to Dr. Buckman’s definition, that:
`
`I disagree with this definition. In fact, Dr. Buckman, in
`having to “interpret” what an LCD cell is, provides an
`opinion and not what is universally understood in the
`industry by the term LCD cell. One of ordinary skill in
`the art would readily appreciate that an LCD cell refers
`to a physical structure comprising a sealed assembly
`containing liquid crystal fluid between a pair of glass
`plates spaced apart from each other by a few microns
`(i.e., cell gap), the glass plates containing the
`transparent electrodes which form the pixel array (or
`matrix), and color filters if present. In an active-matrix
`LCD array, the cell would further include thin-film
`transistors used to hold the applied signal for each
`pixel. As an example of the universally understood
`meaning of LCD cell, see U.S. Patent No. 3,871,746
`(issued March 18, 1975) (Ex. 2013), which defines a
`liquid crystal cell in the abstract and throughout the
`
`4817-2240-0789.2
`
`10
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`specification. Specifically, the abstract of U.S. Patent
`No. 3,871,746 discloses “[a] liquid crystal cell which is
`formed from a pair of plates, at least one of which is
`transparent, and wherein the space between said plates
`is filled with a liquid crystal material and wherein said
`plates are sealed with a sealant made of
`tetrafluoroethylene-ethylene-copolymer or a
`chlorotrifluoroethylene-ethylene-copolymer.” See also
`U.S. Patent No. 4,647,157 (Ex. 2014) at, for example,
`col. 1, lines 11-26. This usage of the term LCD cell is
`consistent with usage of the term “cell” in the ‘334
`patent.
`
`The Board’s interpretation of “light-shutter matrix system” properly
`
`specifies that the “matrix system” includes “a set of matrices.” (Paper 14 at 10).
`
`This is in accordance with the plain language used in the claims (e.g., Claims 1 and
`
`11 require “a light-shutter matrix system comprising a number of equivalent
`
`switching matrices”). (Emphasis added). Thus, in accordance with the Board’s
`
`proposed interpretation, patent owner submits that the claim language requires “a
`
`set of matrices” or a plurality of matrices as opposed to a single matrix.
`
`It follows from the discussion above that, using the embodiment of Fig. 1 of
`
`the ‘334 patent as an example, the “LCD unit 120” represents the claimed “matrix
`
`system” and each of “LCD arrays 117, 118, and 119” represent the individual
`
`4817-2240-0789.2
`
`11
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`matrices that form the claimed “matrix system.” With respect to the interpretation
`
`of each individual matrix that comprises the “set of matrices,” the Board decision
`
`states that “each matrix comprises a rectangular arrangement of elements capable
`
`of limiting the passage of light.” (Paper 14 at 10).
`
`In the context of the claims and specification of the ‘334 patent, a person of
`
`ordinary skill in the art at the pertinent time would interpret a “matrix” that
`
`“comprises a rectangular arrangement of elements capable of limiting the passage
`
`of light” (paper 14 at 10) to mean something quite specific. First, patent owner
`
`submits that one of ordinary skill in the art at the pertinent time would appreciate
`
`that the claimed system of the ‘334 patent is an electrically addressed system. (Ex.
`
`2008 at ¶ 16). See also, page 27, lines 9-19 of Dr. Buckman’s deposition
`
`transcript, Ex. 2010. Second, one of ordinary skill in the art at the pertinent time
`
`would also understand that, in an electrically addressed system, “a rectangular
`
`arrangement of elements capable of limiting the passage of light” (paper 14 at 10)
`
`refers to a matrix in which each of the elements that form the matrix corresponds to
`
`an individual pixel of a display. (Ex. 2008 at ¶ 16).
`
`Figure 1.10 from page 19 of the book Flat-Panel Displays and CRTs, by
`
`Tannas (Van Nostrand Reinhold 1985) (Ex. 2012), which is reproduced below,
`
`4817-2240-0789.2
`
`12
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`illustrates an example portion of a pixel display having individually addressable
`
`pixels:
`
`With respect to Figure 1-10, Tannas states on page 21 that:
`
`The array is normally organized in rows and columns.
`The address of a pixel is defined by its row number and
`column number, normally counting from the upper left-
`hand corner as shown in Fig. 1-10. The electronic drive
`controls the state of the pixels according to their
`address.
`
`If the example display from Fig. 1-10 of Tannas were used in the claimed
`
`system of the ‘334 patent, one of ordinary skill in the art at the pertinent time
`
`would understand that each matrix of the claimed “matrix system” would include a
`
`4817-2240-0789.2
`
`13
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`rectangular arrangement of 12 elements corresponding to the 12 depicted pixels.
`
`(Ex. 2008 at ¶ 16).
`
`As another example of what this would mean to a person of ordinary skill in
`
`the art at the pertinent time, the well-known video graphics array (VGA) displays
`
`have a resolution of 640 X 480, for a total of 307,200 pixels. (Ex. 2008 at ¶ 17). If
`
`the claimed system of the ‘334 patent were implemented with VGA resolution, one
`
`of ordinary skill in the art would understand this to mean that each matrix in the
`
`“set of matrices” would form a “rectangular arrangement” of 307,200 elements,
`
`where each of the 307,200 elements is individually electrically addressable and
`
`corresponds to a single pixel. (Ex. 2008 at ¶ 17). In other words, the “red” matrix
`
`would have 307,200 elements corresponding to the 307,200 pixels such that each
`
`of the pixels can transmit a red color corresponding to the applied pixel signal.
`
`(Ex. 2008 at ¶ 17). Similarly, the “green” matrix would have 307,200 elements
`
`corresponding to the 307,200 pixels such that each of the pixels can transmit a
`
`green color corresponding to the applied pixel signal, and the “blue” matrix would
`
`have 307,200 elements corresponding to the 307,200 pixels such that each of the
`
`pixels can transmit a blue color corresponding to the applied pixel signal. (Ex.
`
`2008 at ¶ 17).
`
`4817-2240-0789.2
`
`14
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`Given the above-discussed understanding of what is meant by “a set of
`
`matrices…, where each matrix comprises a rectangular arrangement of elements
`
`capable of limiting the passage light” to a person of ordinary skill in the art in the
`
`context of the ‘334 patent, the person of ordinary skill in the art would not interpret
`
`the combination of Takanashi and Lee as disclosing such a configuration, as
`
`discussed in detail below.
`
`B.
`
`Claims 1-6 and 11-14 require a “video controller”
`Independent Claims 1 and 11 require “a video controller adapted for
`
`controlling the light-shutter matrix system.” Patent owner submits that, at the
`
`pertinent time, a person of ordinary skill in the art would have understood the
`
`“video controller” element to be a component that controls light-shutter matrices to
`
`facilitate the display of video in accordance with a video signal. (See Mr. Smith-
`
`Gillespie’s declaration, Ex. 2008 at ¶ 18).
`
`In its decision, the Board stated that:
`
`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.
`
`(Paper 14 at 11.)
`
`4817-2240-0789.2
`
`15
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`Accordingly, the Board recognized that a “video controller adapted for
`
`controlling the light shutter matrix system,” must “control[] the light-shutter matrix
`
`system ….” However, the language “to facilitate the display of video” makes the
`
`Board’s definition overly broad. Given the Board’s definition, one could argue
`
`that an on/off switch of a video projector system is a component that, by providing
`
`power to the light-shutter matrix system, controls the light-shutter matrix system to
`
`“facilitate[s] the display of video.” Even though it arguably satisfies the Board’s
`
`definition, one of ordinary skill in the art would not consider such an on/off switch
`
`to be a video controller. (See Robert Smith-Gillespie’s declaration, Ex. 2008 at ¶
`
`18). Rather, in the context of the ‘334 patent, one of ordinary skill in the art would
`
`understand that an LCD video controller is a complex device that interprets and
`
`electronically formats a video signal to control the light-shutter matrix system such
`
`that a desired intensity and color of light is achieved for each of the pixels of the
`
`video display. (See Robert Smith-Gillespie’s declaration, Ex. 2008 at ¶ 18). This
`
`view is supported by the specification of the ‘334 patent, which states (emphasis
`
`added):
`
`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.
`
`4817-2240-0789.2
`
`16
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`Abstract. See also col. 2, lines 24-25 (“The LCD array is switched by a controller
`
`following a video signal ….”). The ‘334 patent further goes on to state:
`
`A video signal for the system is delivered from outside
`via link 125 into a controller 122. A great variety of
`different signal formats are known and can be
`implemented, both analog and digital, or any
`combination of several signals can be used. Controller
`122 controls the three monochrome matrices 117, 118,
`and 119.
`
`(Col. 3, lines 36-40; emphasis added). Accordingly, the broadest reasonable
`
`interpretation of the “video controller” element, in light of the specification, is a
`
`component that controls light-shutter matrices to facilitate the display of video in
`
`accordance with a video signal. (See Mr. Smith-Gillespie’s declaration, Ex. 2008
`
`at ¶ 18).
`
`Regardless of whether the Board maintains its interpretation as set forth in
`
`the decision or adopts patent owner’s interpretation, patent owner submits, as
`
`discussed in more detail below, that the combination of Takanashi and Lee fails to
`
`disclose or suggest “a video controller adapted for controlling the light-shutter
`
`matrix system,” as required by Claims 1 and 11.
`
`4817-2240-0789.2
`
`17
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`C.
`
`Claims 1-6 and 11-14 require “equivalent switching matrices”
`Independent Claim 1 requires “a number of equivalent switching matrices
`
`equal to the number of beams and placed one each in the beam paths.”
`
`Independent Claim 11 similarly recites “a number of equivalent switching matrices
`
`equal to the number of beams of light of different colors and placed one each in
`
`each beam path.” The phrase “equivalent switching matrices” should also be given
`
`its plain and ordinary meaning in light of the specification. At the pertinent time,
`
`the plain and ordinary meaning of “equivalent switching matrices” was switching
`
`matrices that are virtually identical in effect or function. (See Robert Smith-
`
`Gillespie’s declaration, Ex. 2008 at ¶ 19).
`
`This definition is supported in the specification of the ‘334 patent. For
`
`example, at column 2, lines 7-15, the ‘334 patent states:
`
`assuming projectors of
`In various embodiments,
`relatively equal cost, by using a triple monochrome
`LCD structure instead of a color AM-LCD, and pre-
`coloring of light, more light output can be achieved
`than in conventional systems. Systems according to
`embodiments of the invention are also less expensive
`than conventional color LCD systems, because the
`monochrome LCDs used are less expensive than color
`
`4817-2240-0789.2
`
`18
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`LCDs, and because alignment of components is less
`critical than in conventional LCD projection systems.
`
`Accordingly, the ‘334 patent distinguishes between equivalent monochrome
`
`LCDs versus conventional color LCD systems in which a unique LCD is used for
`
`each color. Therefore, the “equivalent switching matrices” are not the same as
`
`conventional color-specific switching matrices. (See Robert Smith-Gillespie’s
`
`declaration, Ex. 2008 at ¶ 19).
`
`On page 12 of its decision (paper 14), the Board interpreted “equivalent
`
`switching matrices” to mean “switching matrices that are corresponding or
`
`virtually identical in effect or function.” The Board also indicated that it declined
`
`to adopt patent owner’s proposed interpretation because said interpretation
`
`“removes the word ‘corresponding’ from the dictionary definition.” (Paper 14 at
`
`12). Broken down into its two alternatives, the Board’s definition implies that
`
`“equivalent” can mean: i) corresponding in effect or function, OR ii) virtually
`
`identical in effect or function. The first prong of the Board’s definition of
`
`“equivalent” (i.e., corresponding in effect or function) is too broad in that it
`
`arguably encompasses “substantially equivalent” in addition to the claim term
`
`“equivalent.”
`
`4817-2240-0789.2
`
`19
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`For at least these reasons, patent owner does not concede the propriety of the
`
`Board’s interpretation. However, as discussed in more detail below, patent owner
`
`submits that regardless of whether the Board maintains its interpretation as set
`
`forth in the decision or adopts patent owner’s interpretation, the combination of
`
`Takanashi and Lee fails to disclose or suggest “equivalent switching matrices,” as
`
`required by Claims 1 and 11.
`
`VI. THE BOARD SHOULD FIND CLAIMS 1-6 AND 11-14
`PATENTABLE IN VIEW OF XILINX’S CHALLENGE
`
`A.
`
`Challenge #2: Alleged obviousness in view of Takanashi and
`Lee
`Pages 23-24 of the Board decision granted Xilinx’s Challenge #2 in part.
`
`Specifically, the Board stated “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 under 35 U.S.C. § 103(a)….” For the
`
`reasons discussed below, patent owner respectfully disagrees and submits that the
`
`combination of Takanashi and Lee fails to teach or suggest several elements
`
`required by Claims 1-6 and 11-14.
`
`1.
`
`Takanashi and Lee do not teach the claimed “light-shutter matrix system”
`
`On pages 23-24 of its petition, Xilinx provides a claim chart alleging that
`
`Takanashi, at col. 16, lines 6-19 and 28-33, discloses the “light-shutter matrix
`
`4817-2240-0789.2
`
`20
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`system” required by Claims 1 and 11 of the ‘334 patent. In its decision at page 21,
`
`the Board stated that “[p]etitioner has made a threshold showing with respect to the
`
`‘matrix’ aspect of the ‘light-shutter matrix system’ in claims 1 and 11.” Patent
`
`owner disagrees and submits that one of ordinary skill in the art at the pertinent
`
`time would not consider the system of Takanashi to include a “matrix” or a “matrix
`
`system.”
`
`On page 24 of the petition, Xilinx alleges that “Takanashi’s combination of
`
`ECB elements, polarizers PL, and SLM elements is a ‘light-shutter matrix
`
`system.’” However, a proper reading of Takanashi shows that the combination of
`
`the elements indicated in the petition may not be construed as a “light-shutter
`
`matrix system,” as required by Claims 1 and 11. In particular, none of the
`
`elements of Takanashi can be reasonably construed as a “matrix system” of any
`
`kind, much less a “light-shutter matrix system.”
`
`On page 14 of its decision, the Board interpreted “light-shutter matrix
`
`system” as “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.” (Paper 14 at 10). As
`
`discussed above in section V.A, one of ordinary skill in the art at the pertinent time
`
`would understand that, in an electrically addressed system such as the system
`
`4817-2240-0789.2
`
`21
`
`
`
`Patent Owner Response
`
`IPR2013-00112
`U.S. Patent No. 5,779,334
`
`depicted in the Tannas book and the system described in the ‘334 patent, “a
`
`rectangular arrangement of elements capable of limiting the passage of light”
`
`(paper 14 at 10) refers to a matrix in which each of the elements that form the
`
`matrix corresponds to an individually addressable pixel of a display. (Ex. 2008 at
`
`¶ 21). Takanashi fails to disclose such a configuration.
`
`In its discussion of whether Takanashi discloses a “matrix,” the Board stated
`
`that Takanashi “discloses a two dimensional ‘color image of the object of display’
`
`projected onto a screen as a result of the operation of the ECB, PL2, and SLM
`
`elements cited by Dr. Buckman.” (Paper 14 at 20). However, the mere generation
`
`of a “two-dimensional color image” in no way implies that a matrix is involved
`
`and does not amount to a prima facie teaching or suggestion of a “light-shutter
`
`matrix system.” For example, a continuous layer of optical material (e.g., a
`
`photographic slide, film frame, overhead projector sheet with
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
