`Trials@uspto.gov
`571-272-7822
`
`Date Entered: March 18, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00021
`Patent 7,202,843 B2
`____________
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. INTRODUCTION
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`Petitioner, Sharp Corporation, Sharp Electronics Corporation, and
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`
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`
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`Sharp Electronics Manufacturing Company of America, filed a Petition
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`
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`
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`IPR2015-00021
`Patent 7,202,843 B2
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`requesting an inter partes review of claims 1, 4, 8, and 9 of U.S. Patent No.
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`
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`7,202,843 B2 (Ex. 1001, “the ’843 patent”) under 35 U.S.C. §§ 311–319.
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`Paper 1 (“Petition” or “Pet.”). Patent Owner, Surpass Tech Innovation LLC,
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`filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). We have
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`jurisdiction under 35 U.S.C. § 314. Section 314 provides that an inter partes
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`review may not be instituted “unless . . . the information presented in the
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`petition . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.”
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`For the reasons that follow, we institute an inter partes review of
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`claims 4, 8, and 9 of the ’843 patent. We do not institute an inter partes
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`review of claim 1 of the ’843 patent.
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`A. Related Proceedings
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`According to Petitioner, the ’843 patent is involved in the following
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`lawsuit: Surpass Tech Innovation LLC v. Sharp Corporation et al.,
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`No. 1:14-cv-00338-LPS (D. Del.). Pet. 8.
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`B. The ’843 Patent
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`The ’843 patent relates to a method and system for driving an LCD
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`panel. The panel includes a plurality of scan lines, a plurality of data lines,
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`and a plurality of pixels. Each pixel is connected to a corresponding scan
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`line and a corresponding data line, and each pixel includes a liquid crystal
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`device and a switching device connected to the corresponding scan line, data
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`line and liquid crystal device. Ex. 1001, 2:19–26; Fig. 4. The system
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`includes a driving circuit for applying over two data impulses to a pixel
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`electrode within one frame period to avoid blurring. Id. at 1:8–12, 4:34–40.
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`2
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`C. Illustrative Claim
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`
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`Claims 1 and 4 are independent claims. Claims 1 and 4 are
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`reproduced below.
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`1. A driving circuit for driving an LCD panel, the LCD
`panel comprising:
`a plurality of scan lines;
`a plurality of data lines; and
`a plurality of pixels, each pixel being connected to a
`corresponding scan line and a corresponding data line, and each
`pixel comprising a liquid crystal device and a switching device
`connected to the corresponding scan line, the corresponding
`data line, and the liquid crystal device,
`the driving circuit comprising:
`a blur clear converter for receiving frame data every
`frame period, each frame data comprising a plurality of pixel
`data and each pixel data corresponding to a pixel, the blur clear
`converter delaying current frame data to generate delayed frame
`data and generating a plurality of overdriven pixel data within
`every frame period for each pixel;
`a source driver for generating a plurality of data impulses
`to each pixel according to the plurality of overdriven pixel data
`generated by the blur clear converter and applying the data
`impulses to the liquid crystal device of the pixel via the scan
`line connected to the pixel within one frame period in order to
`control transmission rate of the liquid crystal device; and
`a gate driver for applying a scan line voltage to the
`switch device of the pixel so that the data impulses can be
`applied to the liquid crystal device of the pixel.
`
`4. A method for driving a liquid crystal display (LCD)
`panel, the LCD panel comprising:
`a plurality of scan lines;
`a plurality of data lines; and
`a plurality of pixels, each pixel being connected to a
`corresponding scan line and a corresponding data line, and each
`pixel comprising a liquid crystal device and a switching device
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`3
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`Patent 7,202,843 B2
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`connected to the corresponding scan line, the corresponding
`data line, and the liquid crystal device, and
`the method comprising:
`receiving continuously a plurality of frame date;
`generating a plurality of data impulses for each pixel
`within every frame period according to the frame data; and
`applying the data impulses to the liquid crystal device of
`one of the pixels within one frame period via the data line
`connected to the pixel in order to control a transmission rate of
`the liquid crystal device of the pixel.
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`
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`
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`D. Asserted Grounds of Unpatentability
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`Petitioner asserts that claims 1, 4, 8, and 9 are unpatentable based on
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`the following grounds:
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`Reference(s)
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`Basis
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`Challenged Claims
`
`Jinda1
`Jinda in view of Miyai2
`Adachi3
`Ham4
`
`
`§ 102(b)
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`§ 103(a)
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`§ 102(b)
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`§ 102(e)
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`1, 4, 8, and 9
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`1, 4, 8, and 9
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`1, 4, 8, and 9
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`4, 8, and 9
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`II. ANALYSIS
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`A. Claim Interpretation
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`1 U.S. Patent Application Publication 2002/0044115, published Apr. 18,
`2002 (Ex. 1002) (“Jinda”).
`2 Japanese Laid-Open Publication HEI 6-62355, published Mar. 4, 1994 (Ex.
`1003) (“Miyai”).
`3 U.S. Patent Application Publication 2001/0038369, published Nov. 8, 2001
`(Ex. 1004) (“Adachi”).
`4 U.S. Patent Application Publication 2004/0196229, published Oct. 7, 2004
`(Ex. 1005) (“Ham”).
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`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
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`
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`reasonable construction standard, claim terms are given their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
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`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
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`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
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`must be set forth with reasonable clarity, deliberateness, and precision. In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Petitioner does not contend any specific claim terms need
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`construction, and submits that the challenged claims should be given their
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`plain and ordinary meaning. Pet. 18. Petitioner argues, however, that there
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`is a typographical error in claim 1. Id. Claim 1 recites “applying the data
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`impulses to the liquid crystal device of the pixel via the scan line.”
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`Petitioner argues that the ’843 patent discloses that data impulses are applied
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`via the data line, not the scan line, implying that the claim contains a
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`mistake. Pet. 18–19. For purposes of applying prior art to the claims,
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`Petitioner interprets claim 1 not as written, but rather as requiring applying
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`data impulses via the data line. See, e.g., Pet. 29–30, 35, 43. Patent Owner
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`provides no construction for the term.
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`Petitioner has not shown sufficiently that claim 1, an originally filed
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`claim, contains an error. For example, Petitioner does not direct attention to
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`evidence in support of the argument that the claim contains a mistake.
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`Accordingly, we do not construe claim 1 as suggested by Petitioner, but
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`rather construe the claim as written.
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`For purposes of this decision, we need not construe any other
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`limitations of the challenged claims.
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`B. Anticipation by Jinda
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`Petitioner contends that claims 1, 4, 8, and 9 are anticipated by Jinda.
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`Pet. 20–30. Petitioner contends that Jinda incorporates by reference Miyai, a
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`reference Petitioner relies on to teach several of the claim 1 and claim 4
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`terms. Petitioner alternatively argues that even if Jinda does not incorporate
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`by reference Miyai, that Jinda discloses, either explicitly or inherently, each
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`and every limitation of claims 1 and 4. Id.
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`Petitioner acknowledges that Jinda’s figures do not disclose explicitly
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`scan lines, data lines, pixels and switching devices, as recited in claims 1 and
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`4. Pet. 20, 27–29. Rather, Petitioner contends that the elements are
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`disclosed by Miyai, which Petitioner alleges is incorporated by reference
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`into Jinda. Id.
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`A host document may incorporate other materials by reference,
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`however, the “host document must identify with detailed particularity what
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`specific material it incorporates and clearly indicate where that material is
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`found in the various documents.” Zenon Envtl., Inc. v. U.S. Filter Corp.,
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`506 F.3d 1370, 1378 (Fed. Cir. 2007) (citing Cook Biotech Inc. v. Acell, Inc.,
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`460 F.3d 1365, 1376 (Fed. Cir. 2006)).
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`We agree with Patent Owner (Prelim. Resp. 25) that Petitioner has not
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`shown that Jinda identifies with detailed particularity what, if any, specific
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`material Jinda incorporates, or where such material is found in Miyai. Miyai
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`is described in Jinda’s background of the invention section, where Jinda
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`describes Miyai as disclosing an “improvement in the step response
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`characteristic of liquid crystals by superimposing a difference component by
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`comparison with the previous image signal.” Ex. 1002 ¶ 4. Jinda also
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`describes problems with Miyai. Id. at ¶¶ 5, 6. Jinda does not, however,
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`identify Miyai as being incorporated by reference, let alone that Miyai is
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`incorporated by reference for its disclosure of scan lines, data lines, pixels
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`connected to a corresponding scan line and data line, where each pixel
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`comprises a liquid crystal device and a switching device as recited in claims
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`1 and 4. Moreover, we are not persuaded by Petitioner’s arguments
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`regarding the examination of the European Patent Office (“EPO”)
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`counterpart application by the EPO in support of the theory that Jinda
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`incorporates Miyai by reference. Pet. 24–27. Petitioner has not shown how
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`the conclusions made during the EPO proceeding, presumably based on
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`different laws and regulations, are relevant to showing incorporation by
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`reference under U.S. law in this proceeding.
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`Petitioner alternatively argues that Jinda inherently discloses scan
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`lines, data lines, pixels, and switching devices as recited in claims 1 and 4.
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`Pet. 28–31. In particular, Petitioner directs attention to Jinda’s disclosure
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`that “the voltage of the data value is applied to the pixel electrode of the
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`desired pixel by the image signal thus transferred to the liquid crystal display
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`device 5.” Pet. 28 (citing Ex. 1002 ¶ 38). Petitioner contends that based on
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`such disclosure, it would be impossible to perform the function of applying a
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`desired voltage to a pixel without a scan line, a data line, and a switching
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`device connected to each pixel, and that one of ordinary skill in the art
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`would appreciate that such known elements necessarily are disclosed by
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`Jinda. Id.
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`“To establish inherency, the extrinsic evidence ‘must make clear that
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`the missing descriptive matter is necessarily present in the thing described in
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`the reference, and that it would be so recognized by persons of ordinary
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`skill.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis
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`
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`added) (citation and internal quotation marks omitted).
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`In its Preliminary Response, Patent Owner argues that the Petitioner
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`has failed to establish that Jinda inherently discloses scan lines, data lines,
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`pixels, and switching devices as recited in claims 1 and 4. Prelim. Resp. 16–
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`18. In particular, Patent Owner asserts that the Petition lacks factual support
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`(such as by expert declaration) that the missing features necessarily must be
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`present in Jinda and would be so recognized by one with ordinary skill in the
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`art. Id. 17. We agree with Patent Owner. Petitioner’s assertion as to what
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`one of ordinary skill in the art would appreciate with respect to Jinda is
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`based on attorney argument. Argument of counsel cannot take the place of
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`evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782
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`(CCPA 1977). Based on the record before us, Petitioner has not provided a
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`factual basis that Jinda necessarily includes scan lines, data lines, switching
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`devices, and pixels as required by independent claim 1 and independent
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`claim 4.
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`Moreover, we are not persuaded by Petitioner’s arguments regarding
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`the examination of the EPO counterpart application by the EPO in support of
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`the theory that Jinda inherently describes the missing elements. Pet. 24–27.
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`Petitioner has not shown how the conclusions made by the EPO, presumably
`
`based on different laws and regulations, are relevant to demonstrate
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`inherency under U.S. law in this proceeding.
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`For these reasons, the information presented does not show a
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`reasonable likelihood that Petitioner would prevail in establishing that
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`claims 1, 4, 8, and 9 are anticipated by Jinda.
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`C. Obviousness based on Jinda and Miyai
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`Petitioner contends that claims 1, 4, 8, and 9 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over Jinda and Miyai. Pet. 32–37. Petitioner
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`relies on Miyai to teach scan lines, data lines, pixels connected to a
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`corresponding scan line and data line, where each pixel comprises a liquid
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`crystal device and a switching device as recited in claims 1 and 4, and relies
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`on Jinda to teach the remaining claim elements. Id.
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`As explained above in the claim construction section, we interpret
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`claim 1 as written and not as “corrected” as Petitioner proposes. As a result,
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`Petitioner has not shown how Miyai or Jinda disclose applying data
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`impulses via the scan line as claimed. Petitioner’s reliance on Miyai’s
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`disclosure of a data line connected to each pixel for applying data impulses
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`via the data line is misplaced, as that is not what is claimed.
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`Moreover, we agree with Patent Owner (Prelim. Resp. 22–23) that the
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`Petition fails to show or explain how Miyai discloses a plurality of scan
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`lines, a plurality of data lines, and a plurality of pixels as claimed in both
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`claim 1 and claim 4. Under 37 C.F.R. § 42.104(b)(4), the petition must
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`specify where each element of a challenged claim is found in the prior art
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`patents or printed publications. The relevance of the evidence supporting
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`the challenge must be provided including identification of specific portions
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`of the evidence that support the challenge. 37 C.F.R. § 42.104(b)(5). Here,
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`the Petition directs attention to Fig. 3(a) and paragraph 3 of Miyai as
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`allegedly showing a plurality of scan lines, a plurality of data lines, and a
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`plurality of pixels as claimed. Pet. 34–36. Figure 3(a) of Miyai is
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`reproduced below and shows only one scan line, one data line, and one
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`pixel.
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`Figure 3(a) of Miyai shows one scan line, one data line, and one pixel.
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`The Petition provides no explanation as to how or why the single scan
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`line, single data line, or single pixel shown and described in Miyai should be
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`considered as multiples of those components as required by all of the
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`challenged claims.
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`For these reasons, we determine that the information presented by
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`Petitioner fails to establish a reasonable likelihood of prevailing on the
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`ground that claims 1, 4, 8, and 9 are unpatentable under 35 U.S.C. § 103(a)
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`as obvious over Jinda and Miyai.
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`D. Anticipation by Adachi for Claim 1
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`Petitioner contends that claim 1 is anticipated by Adachi. Pet. 37–43.
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`Petitioner relies on Adachi to teach, among other elements, scan lines, data
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`lines, pixels connected to a corresponding scan line and data line, where
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`each pixel comprises a liquid crystal device and a switching device as
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`recited in claims 1 and 4. Id.
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`As explained above in the claim construction section, we interpret
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`claim 1 as written and not as “corrected” as Petitioner proposes. As a result,
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`Petitioner has not shown how Adachi discloses applying data impulses via
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`the scan line as claimed. Petitioner’s reliance on Adachi’s disclosure of a
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`data line (signal line) connected to each pixel for applying data impulses via
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`the data line (Pet. 42–43) is misplaced, as that is not what is claimed.
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`For these reasons, the information presented does not show a
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`reasonable likelihood that Petitioner would prevail in establishing that
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`claim 1 is anticipated by Adachi.
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`E. Anticipation by Ham
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`Petitioner contends that claims 4, 8, and 9 are anticipated by Ham.
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`Pet. 45–49. To support its contention, Petitioner provides a showing
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`mapping limitations of claims 4, 8, and 9 to structures described by Ham.
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`Id.
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`Ham describes a method of driving a liquid crystal display including
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`modulating a source data and supplying the modulated data to a liquid
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`crystal panel at an initial period of one frame period, and applying a data
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`different from the modulated data to the liquid crystal panel at a later period
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`of the one frame period. Ex. 1005 ¶ 22. Figure 5 of Ham is reproduced
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`below.
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`Figure 5 is a block diagram showing a driving apparatus for a liquid
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`crystal display.
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`Liquid crystal display panel 57 is connected to data lines 55 and gate
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`lines 56 crossing each other and having thin film transistors (TFT) provided
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`at each intersection to drive the liquid crystal cells Clc. Id. at ¶ 37. Data
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`driver 53 supplies data to data lines 55 and gate driver 54 applies a scanning
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`pulse to gate lines 56. Id. Timing controller 51 receives digital video data
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`and synchronizes signals H and V. Data modulator 52 is connected between
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`timing controller 51 and data driver 53 to modulate input data RGB. Switch
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`58 is utilized to select any one of modulated data AMdata and normal input
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`RGB. Id. Line memory 59 is connected between timing controller 51 and
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`switch 58.
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`Timing controller 51 rearranges digital video data supplied from a
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`digital card. The RGB data rearranged by controller 51 is supplied to data
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`modulator 52 and line memory 59. Id. at ¶ 39. Timing controller 51 also
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`provides a switching control signal SW, allowing switch 58 to be switched
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`twice within one frame interval.
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`In operation, data driver 53 is supplied sequentially with modulated
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`data AMdata and the normal data RGB from switch 58 within one frame
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`interval, resulting in each of modulated data AMdata and normal data RGB
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`being applied to each liquid crystal cell Clc within one frame interval. Id. at
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`¶ 41.
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`Patent Owner argues that Ham does not disclose “generating a
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`plurality of data impulses for each pixel within every frame period” as
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`recited in claim 4. Prelim. Resp. 35. Patent Owner contends that Ham
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`applies modulated data AMdata and normal RGB data within one frame
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`period, but argues that the normal RGB data is not disclosed as “generated”
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`by timing controller 51. Patent Owner implicitly argues that Ham’s
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`description of timing controller 51 rearranging digital video data supplied
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`from a digital video card and producing (outputting) the signal, does not
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`teach “generating” the normal RGB data. Id. at 35–36. Patent Owner’s
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`argument is misplaced. Petitioner did not rely on the Figure 5 timing
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`controller 51 alone to meet the limitation. Rather, we understand Petitioner
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`to rely on the driving apparatus, for example of Figure 5, which is not
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`limited to the timing controller 51, as generating the two data impulses as
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`claimed. See Pet. 48, citing Ex. 1005 ¶¶ 40, 41, 53.
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`Patent Owner argues that Ham was considered during prosecution of
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`the application that issued as the ’843 patent by an examiner who
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`determined the claims to be patentable over Ham. Patent Owner argues that
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`we should exercise discretion under 35 U.S.C. § 325(d) to not institute
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`review based on Ham. Prelim. Resp. 36–37. The statutory language of
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`35 U.S.C. § 325(d) does not require rejection of a petition simply because
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`certain art was considered previously by the Office. See 35 U.S.C. § 325(d).
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`Here, unlike the case in ex parte prosecution of the application that issued as
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`the ’843 patent, Petitioner is a party to the proceeding. Petitioner presents
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`different arguments that were not before the Examiner. Here, where new
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`arguments are presented, shedding a different light on the Ham reference, we
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`decline to deny the instant petition under 35 U.S.C. § 325(d).
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`We have reviewed the proposed ground of anticipation based on Ham
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`against claims 4, 8, and 9, and we are persuaded that Petitioner has
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`established a reasonable likelihood that Petitioner would prevail in its
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`challenge to claims 4, 8, and 9 on this ground. See Pet. 45–49.
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`F. Anticipation by Adachi for Claims 4, 8, and 9
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`Based on the record before us, we exercise our discretion and decline
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`to institute review based on the asserted ground that claims 4, 8, and 9 are
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`unpatentable under 35 U.S.C. § 102 based on Adachi. See 37 C.F.R. §
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`42.108(a).
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`III. CONCLUSION
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`For the foregoing reasons, we determine that the information
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`presented establishes a reasonable likelihood that Petitioner would prevail in
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`showing that claims 4, 8, and 9 of the ’843 patent are unpatentable, but does
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`not establish a reasonable likelihood that Petitioner would prevail in
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`showing that claim 1 of the ’843 patent is unpatentable. At this stage of the
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`proceeding, the Board has not made a final determination with respect to the
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`patentability of the challenged claims.
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`In consideration of the foregoing, it is
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`IV. ORDER
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`ORDERED that an inter partes review is instituted as to claims 4, 8,
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`and 9 of the ’843 patent on the anticipation ground based on Ham;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’843 patent is instituted with trial commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is given of the institution of the trial; and
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`FURTHER ORDERED that the trial is limited to the grounds
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`identified immediately above, and no other ground is authorized.
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`For Petitioner:
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`Anthony F. Lo Cicero
`Brian A. Comack
`AMSTER ROTHSTEIN & EBENSTEIN LLP
`alocicero@arelaw.com
`Sharp-843IPR@arelaw.com
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`
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`For Patent Owner:
`
`Wayne M. Helge
`Donald L. Jackson
`Michael R. Casey
`DAVIDSON BERQUIST JACKSON & GOWDY LLP
`whelge@dbjg.com
`djackson@dbjg.com
`mcasey@dbjg.com
`
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`16