Paper No.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`___________________
`
`
`
`XILINX, INC, Petitioner
`
`v.
`
`Patent of INTELLECTUAL VENTURES MANAGEMENT, LLC,
`Patent Owner.
`
`Inter Partes Review No. IPR2013-00112
`Patent No. 5,779,334
`
`
`
`
`
`__________________________________________________________________
`
`
`
`PETITIONER XILINX’S REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`___________________
`
`
`
`XILINX, INC, Petitioner
`
`v.
`
`Patent of INTELLECTUAL VENTURES MANAGEMENT, LLC,
`Patent Owner.
`
`Inter Partes Review No. IPR2013-00112
`Patent No. 5,779,334
`
`
`
`
`
`__________________________________________________________________
`
`
`
`PETITIONER XILINX’S REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`
`Petitioner Xilinx’s Request For Oral Argument
`
`Petitioner Xilinx, Inc. (“Xilinx”) hereby requests oral argument pursuant to
`
`37 CFR § 42.70. Oral argument is presently scheduled for January 24, 2013.
`
`Petitioner requests 60 minutes of argument per side.
`
`ISSUES TO BE ARGUED
`
`I. Claim Construction
`
`A. The Board’s Decision to Institute adopted constructions of “light
`
`shutter matrix,” “video controller adapted for controlling the light-shutter
`
`matrices,” and “equivalent switching matrices.” IV challenges the correctness of
`
`the Board’s constructions. Has IV shown that the Board should change the
`
`constructions in the decision to institute?
`
`II. Obviousness of Claims 1-3 in View of Takanashi and Lee
`
`A. Xilinx’s Petition and Reply briefing explain that Takanashi discloses
`
`an optically addressed spatial light modulator (“OASLM”) as a “light shutter
`
`matrix system.” An OASLM creates a pixelated image for display based on image
`
`information from an input light beam. IV contends that an OALSM is not a “light
`
`shutter matrix system” because it does not create the pixelated images using a
`
`preexisting grid of electrical addressing components (an “EASLM”). The
`
`construction the Board adopted does not require an EASLM. The construction
`
`urged by IV also does not require an EASLM. Does Takanashi disclose the
`
`claimed light-shutter matrix system?
`
`
`
`–1–
`
`
`
`
`
`Petitioner Xilinx’s Request For Oral Argument
`
`B. IV does not dispute that Lee discloses a video controller for
`
`controlling light shutter matrices and that any practical light-shutter matrix video
`
`projection system in 1995 would have had a video controller for controlling the
`
`light shutter matrices. Nevertheless, IV contends that the Board should find in its
`
`favor because the Petition misidentifies the video controller in Lee. Xilinx’s expert
`
`corrected this mistake at his deposition and identified the correct video controller
`
`in Lee. This correction occurred on August 7, 2013, almost three weeks before IV
`
`filed its August 27, 2013 Opposition. Has Xilinx shown that Lee discloses the
`
`claimed video controller?
`
`C. Xilinx’s Petition explains that the three spatial light modulators
`
`(“SLMs”) in Takanashi are equivalent because they each encode pixelated light
`
`images onto output light beams. IV argues that the Takanashi SLMs are not
`
`equivalent because the ’334 patent specifically distinguishes the claimed system
`
`from systems like Takanashi. But IV’s expert admits that IV’s argument is
`
`mistaken and that the ’334 patent does not specifically distinguish systems like
`
`Takanashi. Does Takanashi disclose equivalent switching matrices?
`
`D. The remaining claim elements are undisputed. Has Xilinx proven that
`
`claims 1-6 and 11-14 would have been obvious to a person of ordinary skill in the
`
`art in 1995 in view of Takanashi and Lee?
`
`
`
`–2–
`
`
`
`
`
`III. Patent Owner’s Motion To Substitute Claims
`
`Petitioner Xilinx’s Request For Oral Argument
`
`A. Proposed substitute claims 15 and 16 includes entirely new features
`
`that are not linked to the existing claim elements and thus inject new issues in the
`
`case and seek a new claiming strategy. IV argues that substitute claims 15 and 16
`
`are nevertheless responsive to the grounds of the petition because they are
`
`narrower than independent claim 1 and because some claim elements are not
`
`included in Takanashi or Lee. Should Patent Owner’s Motion to Amend be denied
`
`for failure to respond to the grounds raised in the petition?
`
`B. IV admits that proposed substitute claim 16 violates the Idle Free
`
`requirements because it is broader than original claim 12. Nevertheless, IV
`
`contends that Idle Free was wrongly decided and that the Board should permit
`
`narrowing amendments on the same standards permitted in reexamination and
`
`narrowing reissue proceedings. Has IV shown that Idle Free was wrongly decided,
`
`such that the Board in this matter should decline to follow it? If so, has IV shown
`
`that proposed substitute claim 16 complies with the remaining requirements of Idle
`
`Free?
`
`C. Xilinx provides element-by element analysis for claims 15 and 16
`
`with respect to Takanashi Lee, and Miyashita, with appropriate explanations and
`
`evidence showing reasons to combine. IV argues that this combination does not
`
`teach the claims because Miyashita does not have a video controller and becauase
`
`
`
`–3–
`
`
`
`
`
`Petitioner Xilinx’s Request For Oral Argument
`
`Miyashita cannot have the claimed “control link” element unless it teaches a video
`
`controller that communicates with the second controller to exercise variable
`
`control over multiple light sources. Xilinx has presented evidence that Miyashita
`
`teaches a video controller, including the “picture controller” and “display
`
`controller” elements, and a control link that coordinates the entire Miyashita
`
`system including the video and lamp controllers, and further that the Lee “lamp
`
`voltage controlling circuit” provides variable control over multiple light sources.
`
`Has IV carried its burden to show that Claims 15 and 16 are patentably distinct
`
`over Takanashi, Lee, and Miyashita?
`
`
`
`Respectfully submitted,
`
`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
`HAYNES AND BOONE, LLP
`Customer No. 27683
`Telephone: 214/651-5533
`Facsimile: 214/200-0853
`Attorney Docket No.: 42299.41
`
`
`Dated: December 18, 2013
`
`
`
`
`
`–4–
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service December 18 , 2013
`
`Manner of service FEDERAL EXPRESS
`
`Documents served Petitioner Xilinx’s Request for Oral Argument
`
`Persons served GEORGE E. QUILLIN
`FOLEY & LARDNER LLP
`3000 K STREET, N.W., SUITE 600
`WASHINGTON DC 20007-5109
`gquillin@foley.com
`
`
`
`
`
`
`
`
`
`
`
`
`/David L. McCombs/
`David L. McCombs
`Registration No. 32,271
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
