Paper 18
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: April 27, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`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
`Request for Rehearing
`37 C.F.R. § 42.71
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`
`
`
`
`INTRODUCTION
`Petitioner, Sharp Corporation, Sharp Electronics Corporation, and
`Sharp Electronics Manufacturing Company of America filed a Request for
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`IPR2015-00021
`Patent 7,202,843 B2
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`Rehearing (Paper 12, “Req. Reh’g”) of the Decision on Institution (Paper 10,
`“Dec.”), which instituted an inter partes review of claims 4, 8, and 9, but not
`claim 1, of U.S. Patent No. 7,202,843 B2 (Ex. 1001, “the ’843 patent”).
`Petitioner argues that the Board abused its discretion when it
`misapprehended “its power to correct an obvious drafting error in Claim 1”
`of the ’843 patent, and “failed to apply the broadest reasonable construction
`in light of the specification.” Req. Reh’g 1. Petitioner additionally argues
`that if its proposed claim construction for claim 1 is adopted, the Board
`should reconsider and institute review of claim 1 based on the applied prior
`art. Req. Reh’g 3–4. Lastly, Petitioner argues that we misapprehended
`portions of the Miyai reference cited in the Petition. The Request for
`Rehearing is denied.
`
`ANALYSIS
`
`When rehearing a decision on petition, the Board will review the
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`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion occurs if a decision is based on an erroneous interpretation of law,
`if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.
`Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). For the
`reasons that follow, Petitioner has not shown that the Board abused its
`discretion.
`Claim 1 recites “applying the data impulses to the liquid crystal
`device of the pixel via the scan line.” Petitioner’s sole argument in its
`Petition with respect to the disputed claim term is as follows:
`Petitioner notes an apparent typographical error in Claim 1.
`Specifically, Claim 1 recites “a source driver for generating a
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`IPR2015-00021
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`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.” However, the ‘843 Patent explains
`that data impulses are applied via the data line, not the scan
`line. (See, e.g., Ex. 1001, ‘843 Patent, Col. 3:47-51 (“To drive
`the LCD 30, . . .data voltages are applied to the data lines 34
`and transmitted to the pixel electrodes 30 . . . .”)). As discussed
`below, the cited prior art (or combination of prior art) discloses
`the same driving circuit configuration disclosed in the ’843
`Patent. Therefore, irrespective of this error, Claim 1 is invalid.
`
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`Pet. 18–19 (emphasis in original).
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`
`
`In its Petition, Petitioner contends that the disputed term should read
`as though claim 1 recites applying data impulses to the liquid crystal device
`of the pixel via the data line; not the scan line. Other than to point to one
`place in the specification as shown above, the Petitioner made no other
`argument as to why the Board should rewrite the claim. Patent Owner, in its
`Preliminary Response, did not provide a construction for the term.
`In the Decision on Institution, we explained that Petitioner had not
`shown sufficiently that claim 1, an originally filed claim, contains an error.
`Paper 10 at 5 (emphasis added). We further explained that Petitioner had
`not directed attention to evidence in support of the argument that the claim
`contains a mistake. Id. For example, Petitioner could have provided a
`declaration of an expert to explain that a person of ordinary skill in the art at
`the time of the invention would have recognized that what was written
`originally is an error. That, Petitioner did not do. In other words, Petitioner
`did not meet its burden to show sufficiently that claim 1 contains a drafting
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`error, and we, therefore, did not adopt Petitioner’s proposed construction to
`correct claim 1 as though it contains a drafting error.
`In its Rehearing Request, Petitioner submits five pages of new
`arguments not presented previously regarding the construction of the
`disputed claim term. Req. Reh’g 5–11. The Board could not have
`overlooked or misapprehended the newly presented arguments, and,
`therefore, the rehearing request is denied on that basis alone.
`
`In addition, we are not persuaded by Petitioner’s arguments.
`Petitioner argues that the Board may correct drafting errors. Id. at 5. The
`burden, however, is not on the Board to determine if a claim contains the
`kind of error that is considered a drafting error. The burden is on Petitioner.
`37 C.F.R. § 42.20(c). While we agree that looking to the one place
`Petitioner directed us to in its Petition in the Specification of the ’843 patent
`is a start that alone is not enough. As we stated in the Institution Decision,
`the language of claim 1 is original. As such, that original claim also is part
`of the Specification. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
`1349 (Fed. Cir. 2010) (en banc) (original claims are part of the original
`specification and may themselves satisfy the written description
`requirement). Petitioner made no attempt, in its Petition, to reconcile the
`one portion in the Specification of the ’843 patent it cited with the original
`claim, which also is considered part of the original specification. Thus, we
`disagree with Petitioner that it has shown that in light of the specification,
`the claim language at issue is subject to only one interpretation. Req. Reh’g
`6. For similar reasons, we are not persuaded that we only considered the
`claim language without reading that claim in light of the specification. Id. at
`10. We considered the arguments advanced by Petitioner, but those
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`arguments were insufficient to show why we should assume claim 1 contains
`a drafting or typographical error.
`In addition Petitioner, in its Petition, did not direct us to evidence that
`one of ordinary skill in the art, for example in the form of a declaration from
`a person qualified to testify on the matter, would have recognized the
`correction to be minor; a mere typographical error, unable to be construed in
`any other way. Because we are not persuaded that we abused our discretion
`with respect to the construction of claim 1, we need not, and do not consider
`Petitioner’s arguments that claim 1 as corrected is anticipated by Adachi;
`claim 1 as corrected would have been obvious over Jinda and Miyai; or that
`the Board should include in the trial claims 1, 4, 8, and 9 as anticipated by
`Adachi. Req. Reh’g 11–12.
`Lastly, we have considered Petitioner argument that the Board
`incorrectly concluded that Miyai does not disclose a plurality of scan lines, a
`plurality of data lines, and a plurality of pixels as required by independent
`claim 4. Req. Reh’g 12–13. Petitioner makes arguments and provides
`explanations that were not presented in the Petition. Id. We could not have
`overlooked or misapprehended the newly presented arguments and
`explanation, and, therefore, the rehearing request is denied on that basis
`alone. In any event, the new arguments that Petitioner now makes—that a
`person of ordinary skill in the art would have understood Miyai to disclose a
`plurality of data lines, a plurality of scan lines, and a plurality of pixels—are
`based on attorney argument. Argument of counsel cannot take the place of
`evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782
`(CCPA 1977).
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`IPR2015-00021
`Patent 7,202,843 B2
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`For all of the above reasons, Patent Owner’s Request for Rehearing is
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`denied.
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`For Petitioner:
`Anthony F. Lo Cicero
`Brian A. Comack
`AMSTER ROTHSTEIN & EBENSTEIN LLP
`alocicero@arelaw.com
`Sharp-843IPR@arelaw.com
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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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