`
`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 REPLY TO XILINX’S
`OPPOSITION TO MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`4841-9456-4118.3
`
`
`
`
`
`
`
`I.
`
`
`Patent Owner Reply to Opposition to Motion to Amend IPR2013-00112
`U.S. Patent No. 5,779,334
`
`Table of Contents
`
`THE MOTION COMPLIES WITH THE LAW ............................................. 1
`
`A. A Substitute Claim Can “Either Include or Narrow” Each Feature…..1
`
`B.
`
`Patent Owner’s “Ordinary Meaning” Statement Suffices…………….1
`
`II.
`
`CLAIMS 15 AND 16 ARE PATENTABLE………………………………..2
`
`A.
`
`B.
`
`Claim Construction…………………………………………………...2
`
`Takanashi, Lee, and Miyashita Fail to Disclose the Claim
`Elements………………...……………………………………..……...3
`
`III. CONCLUSION………………………………..…………………………….5
`
`
`
`
`4841-9456-4118.3
`
`i
`
`
`
`Patent Owner Reply to Opposition to Motion to Amend IPR2013-00112
`U.S. Patent No. 5,779,334
`
`Table of Authorities
`
`
`
`
`Cases
`
`Corning Inc. v. SRU Biosystems, 400 F. Supp. 2d 653, 671 (D. Del. 2005) ............. 3
`Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11,
`2013) ...................................................................................................................... 1-2
`
`
`4841-9456-4118.3
`
`ii
`
`
`
`Patent Owner Reply to Opposition to Motion to Amend IPR2013-00112
`U.S. Patent No. 5,779,334
`
`THE MOTION COMPLIES WITH THE LAW
`
`
`I.
`A. A Substitute Claim Can “Either Include or Narrow” Each Feature
`
`In Paper 31, Xilinx argues that the amendment “adds new limitations to
`
`existing claims without narrowing any of the existing limitations.” (Opp. at 3).
`
`However, Idle Free held that a substitute claim can “either include or narrow each
`
`feature of the challenged claim being replaced.” (Idle Free at 5; emphasis added).
`
`Here, Xilinx concedes that proposed “claim 15 includes the limitation of claim 3.”
`
`(Opp. at 3; emphasis added). Thus, Idle Free’s “either . . . or” requirement is
`
`satisfied because proposed claim 15 includes each element of original claim 3. As
`
`for proposed claim 16, Xilinx argues that patent owner’s motion should be denied
`
`because claim 16 “does not even include any of the limitations of claim 12.” (Opp.
`
`at 3). Nevertheless, proposed claim 16 depends from original claim 11 and is thus
`
`necessarily narrower than that independent claim. Xilinx does not argue otherwise.
`
`Claim 16 does “not enlarge the scope” of the patent claims, and thus complies with
`
`the statute, 35 U.S.C. § 316(d)(3), which non-precedential Idle Free cannot trump.
`
`B.
`
`Patent Owner’s “Ordinary Meaning” Statement Suffices
`
`Xilinx wrongly asserts that a motion to amend “must include” a claim
`
`construction for new terms. (Opp. at 6). But no Board rule so requires (see, e.g.,
`
`Bd. R. 42.20 and 22) and Idle Free states merely that a patent owner “should …
`
`includ[e] construction of new claim terms.” Idle Free at 7. The Board did not say
`
`4841-9456-4118.3
`
`1
`
`
`
`Patent Owner Reply to Opposition to Motion to Amend IPR2013-00112
`U.S. Patent No. 5,779,334
`
`
`that new terms must be construed in all cases. Indeed, the Board’s “should” stands
`
`in marked contrast to Xilinx’s “must.” The Board’s Trial Practice Guide clarifies
`
`that a party “should provide” a proposed construction “where a party believes that a
`
`specific term has meaning other than its plain meaning.” 77 Fed. Reg. 48756,
`
`48764, item 6 (Aug. 14, 2012) (Emph. added). Where, as here, a party believes that
`
`the plain meaning suffices, no claim construction is required. Rather, the focus of
`
`the Board’s inquiry is on whether a patent owner has “sufficient[ly] . . . persuade[d]
`
`the Board that the proposed substitute claim is patentable.” Idle Free at 7.
`
`Here, in Paper 27, patent owner’s motion explicitly states that “the claim
`
`elements should receive the broadest reasonable construction in accordance with
`
`their plain and ordinary meaning to a person of ordinary skill in the art, in light of
`
`the specification and prosecution history.” (Mot. at 9). In addition, patent owner
`
`cited to and quoted specific portions of the original disclosure showing how the
`
`inventor used the claim terms in the context of his invention. Id. at 9-11. These
`
`citations, along with the motion’s detailed comparison of the claims and the prior
`
`art (Mot. at 11-15), are sufficient to enable the Board to decide that the prior art
`
`fails to disclose elements from proposed claims 15 and 16.
`
`II. CLAIMS 15 AND 16 ARE PATENTABLE
`A.
`Claim Construction
`
`Xilinx’s proposed claim constructions are unsupported and overbroad – not
`
`4841-9456-4118.3
`
`2
`
`
`
`Patent Owner Reply to Opposition to Motion to Amend IPR2013-00112
`U.S. Patent No. 5,779,334
`
`
`a broadest reasonable construction. The ordinary meaning of the as-claimed
`
`“second controller …” in proposed claim 15 is a controller, other than the video
`
`controller, that controls the three white-light sources. (Ex. 2019 at ¶ 15). The
`
`ordinary meaning of the as-claimed “control link …” in proposed claim 15 is an
`
`electronic connection through which individualized variable control of each of the
`
`three white-light sources is provided, where the electronic connection connects the
`
`video controller to the second controller. (Ex. 2019 at ¶ 16). Similar constructions
`
`should apply to the similar elements in proposed claim 16. (Ex. 2019 at ¶¶ 15-16).
`
`B.
`
`Takanashi, Lee, and Miyashita Fail to Disclose the Claim Elements
`
`Dr. Buckman’s annotations to Fig. 3 of Miyashita here (Ex. 1011 at p. 26)
`
`are very different than his annotations to the same figure in IPR2013-00029.
`
`During his deposition on November 12, 2013, Dr. Buckman acknowledged that his
`
`annotations in IPR2013-00029 are incorrect. (Ex. 2018 at 77:15-78:17). Thus, Dr.
`
`Buckman is again mistaken about a reference in this art, see Ex. 2010 at 38:8-14;
`
`his testimony reflects impermissible hindsight and should not be credited. Cf.
`
`Corning Inc. v. SRU Biosystems, 400 F. Supp. 2d 653, 671 (D. Del. 2005) (“Dr.
`
`Buckman’s approach to the obviousness inquiry treads too closely to the type of
`
`hindsight analysis that the Federal Circuit has cautioned against”).
`
`Dr. Buckman relies on Fig. 2 of Miyashita and asserts that “the functionality
`
`of a video controller is carried out by at least picture controller 42 and display
`
`4841-9456-4118.3
`
`3
`
`
`
`Patent Owner Reply to Opposition to Motion to Amend IPR2013-00112
`U.S. Patent No. 5,779,334
`
`
`controller 50,” which are included in the “control unit 32” of Miyashita’s Fig. 3.
`
`(Ex. 1011 at p. 17). The “picture controller” in Miyashita is used to set various
`
`“picture attributes” of the projector system such as “color, hue, brightness,
`
`contrast, and sharpness (peaking).” (Col. 4:61 – 5:1). Miyashita discloses that the
`
`“display controller 50” “provides a visual status” of various settings such as which
`
`“signal source” is selected, “picture attribute levels,” “sound volume level,” and
`
`“lens control information.” (Col. 5:12-16). Nowhere does Miyashita disclose that
`
`the “picture controller” or the “display controller” receives or processes a video
`
`signal to facilitate the display of video, which is what a video controller does. (Ex.
`
`2019 at ¶¶ 20-21). Miyashita also fails to disclose that its “picture controller” or
`
`“display controller” are “adapted for controlling the light-shutter matrix system” as
`
`required by the “video controller” of claims 1 and 11. (Ex. 2019 at ¶¶ 20-21). One
`
`of ordinary skill in the art would not consider Miyashita’s “control unit 32” to be a
`
`video controller. (Ex. 2019 at ¶¶ 19-22). By failing to disclose the claimed video
`
`controller, Miyashita necessarily fails to disclose or suggest “a control link adapted
`
`to connect the video controller to the second controller,” as required by proposed
`
`claims 15 and 16. (Emphasis added). (Ex. 2019 at ¶ 22).
`
`Dr. Buckman acknowledged during his November 12, 2013 deposition that
`
`Lee does not disclose the claimed “control link.” (Ex. 2018 at p. 74:23 – 75:14).
`
`Miyashita also fails to disclose the “control link,” as claimed. (Ex. 2019 at ¶ 24).
`
`4841-9456-4118.3
`
`4
`
`
`
`Patent Owner Reply to Opposition to Motion to Amend IPR2013-00112
`U.S. Patent No. 5,779,334
`
`
`One of ordinary skill in the art would understand that the claimed “control link” is
`
`not merely any “link,” but rather a “control link” through which some control is
`
`implemented (i.e., “variable control” of one or more light sources). (Ex. 2019 at ¶
`
`24). One of ordinary skill in the art would understand that the “variable control”
`
`implemented via the “control link” is a direct result of the connection between the
`
`“video controller” and the “second controller” and that the “variable control” occurs
`
`as a result of information in a video signal that is received by the video controller.
`
`(Ex. 2019 at ¶ 24). Dr. Buckman even acknowledged that the variable control
`
`originates from the video controller. (Ex. 2018 at p. 81:21 – 82:8). Alone or in
`
`combination, Takanashi, Lee, and Miyashita fail to disclose any element that
`
`“connect[s] the video controller to the second controller” for the purpose of
`
`providing “variable control” of one or more light sources. (Ex. 2019 at ¶ 24).
`
`Xilinx relies on hindsight; the claims are patentable. (Ex. 2019 at ¶ 25).
`
`III. CONCLUSION
`
`The motion complies with the rules and the statute; the claims are patentable
`
`over the art. The Board should grant the motion.
`
`Dated: November 27, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4841-9456-4118.3
`
`
`
`Respectfully submitted,
`
`
`
`/George E. Quillin/
`George E. Quillin
`Registration No. 32,792
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`5
`
`
`
`Patent Owner Reply to Opposition to Motion to Amend IPR2013-00112
`U.S. Patent No. 5,779,334
`
`
`LIST OF EXHIBITS
`
`Exhibit 2018:
`
`Transcript of Dr. Buckman’s Deposition, November 12, 2013
`
`Exhibit 2019:
`
`Second Declaration of Robert Smith-Gillespie
`
`
`
`4841-9456-4118.3
`
`6
`
`
`
`Patent Owner Reply to Opposition to 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 Reply
`
`to Opposition to Motion to Amend and Exhibits 2018 and 2019 along with an
`
`Exhibit List are being served on counsel of record by filing these documents
`
`through the Patent Review Processing 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: November 27, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/George E. Quillin/
`George E. Quillin
`Registration No. 32,792
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4841-9456-4118.3
`
`7
`
`
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
