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, INC.,
`Petitioners,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`612433.4
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`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA, INC.,
`Petitioners,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`612433.4
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. ARGUMENT ................................................................................................... 3
`
`A. Ham Discloses the “Generating” Step .................................................. 3
`
`1.
`
`2.
`
`3.
`
`4.
`
`Surpass’ Expert Now Agrees That
`“Generating” Does Not Need To Be Construed ......................... 5
`
`Patent Owner Mischaracterizes Petitioners’ Position ................. 7
`
`Patent Owner’s Data Modulator Arguments Are Wrong ........... 8
`
`Patent Owner Ignores Petitioners’ Claim Charts ........................ 9
`
`B.
`
`Patent Owner Cannot Redraft Claim 4 To Include Overdriving ........ 12
`
`1.
`
`2.
`
`3.
`
`4.
`
`Patent Owner’s Proposed “Claim Construction”
`Is Not The Broadest Reasonable Construction ......................... 14
`
`Patent Owner Improperly Imports A Limitation ...................... 16
`
`The ‘843 Patent Does Not Define The “Applying” Step .......... 20
`
`The ‘843 Patent Does Not Equate Controlling
`Transmission Rates With Overdriving ..................................... 22
`
`III. PATENT OWNER DOES NOT INDEPENDENTLY ARGUE THE
`DEPENDENT CLAIMS ................................................................................ 25
`
`IV. CONCLUSION .............................................................................................. 25
`
`
`
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`612433.4
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`i
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`
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`TABLE OF AUTHORITIES
`
`Cases
`
`Adobe Sys. Inc. v. Afluo, LLC, IPR2014-00153,
`Paper 8 (PTAB April 29, 2014) ............................................................................ 6
`
`Page(s)
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) .......................................................... 18
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 23
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ............................................................................ 11
`
`CAE Screenplates, Inc. v. Heinrich Fiedler GmbH,
`224 F.3d 1308 (Fed. Cir. 2000) .................................................................... 16, 21
`
`Chef Am., Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004) .......................................................................... 14
`
`Deere & Co. v. Bush Hog, LLC,
`703 F.3d 1349 (Fed. Cir. 2012) .......................................................................... 20
`
`e-Watch Inc. v. Apple, Inc.,
`No. 2:13-CV-1061-JRG-RSP, 2015 U.S. Dist. LEXIS 37216
`(E.D. Tex. Mar. 25, 2015) ..................................................................................... 6
`
`Envtl. Designs, Inc. v. Union Oil Co.,
`713 F.2d 693 (Fed. Cir. 1983) ............................................................................ 15
`
`In re Gleave,
`560 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 11
`
`Idle Free Systems, Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper 26 (PTAB June 11, 2013) ............................................. 12
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) .......................................................................... 19
`
`
`
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`612433.4
`
`ii
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`
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`
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`K-40 Electronics, LLC v. Escort, Inc.,
`IPR2013-00240, Paper 37 (PTAB Sept. 29, 2014) ............................................. 19
`
`Karsten Mfg. Corp. v. Cleveland Golf Co.,
`242 F.3d 1376 (Fed. Cir. 2001) .......................................................................... 14
`
`Microsoft Corp. v. B.E. Tech., L.L.C.,
`IPR2014-00039, Paper 43 (PTAB Mar. 31, 2015) ............................................. 11
`
`Mobotix Corp. v. E-Watch, Inc.,
`Case IPR2013-00255, Paper 11 (PTAB Oct. 25, 2013) ....................................... 6
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008) ............................................................................ 5
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) ............................................................................ 21
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 17
`
`Sony Corp. v. Surpass Tech Innovation LLC,
`IPR2015-00862, Paper 12 (PTAB Aug. 26, 2015) ......................................... 3, 14
`
`SRI Int’l v. Matsushita Elec. Corp. of Am.,
`775 F.2d 1107 (Fed.Cir.1985) ............................................................................ 15
`
`Tate Access Floors v. Interface Architectural Res.,
`279 F.3d 1357 (Fed. Cir. 2002) .................................................................... 14, 15
`
`Thorner v. Sony Computer Entm’t Am. L.L.C.,
`669 F.3d 1362 (Fed. Cir. 2012) .......................................................................... 19
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 14
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) ............................................................................ 5
`
`In re Van Geuns,
`988 F.2d 1181 (Fed. Cir. 1993) .......................................................................... 21
`
`
`612433.4
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`iii
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`
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`Westlake Services, LCC v. Credit Acceptance Corp.,
`CBM2014-00008, Paper 66 (PTAB March 24, 2015).......................................... 6
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100(b) .............................................................................................. 14
`
`37 C.F.R. § 42.121(a)-(b) ......................................................................................... 12
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`
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`612433.4
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`iv
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`UPDATED LIST OF PETITIONERS’ EXHIBITS
`
`EXHIBIT
`NO.
`
`DESCRIPTION
`
`1001
`
`U.S. Patent No. 7,202,843 to Shen et al.
`
`1002
`
`1003
`
`1004
`
`U.S. Patent Application Publication No. 2002/0044115
`to Jinda et al.
`
`Japanese Patent Application No. H6-62355 to Miyai and
`English Translation
`
`U.S. Patent Application Publication No. 2004/0038369
`to Adachi et al.
`
`1005
`
`U.S. Patent Application No. 2004/0196229 to Ham
`
`1006
`
`Prosecution History of U.S. Appl. No. 10/707,741
`
`1007
`
`1008
`
`1009
`
`Documents from the Prosecution History of EP Patent
`Appl. No. 03029643.8
`
`Documents from the Prosecution History of JP Laid-
`Open Patent Pub. No. 4199655 and English Translation
`
`Transcript of the August 20, 2015 Deposition of
`William K. Bohannon
`
`1010
`
`Rebuttal Declaration of Michael J. Marentic
`
`1011
`
`Curriculum Vitae of Michael J. Marentic
`
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`612433.4
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`v
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`612433.4
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`EXHIBIT
`NO.
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`DESCRIPTION
`
`1012
`
`U.S. Patent No. 5,402,143
`
`1013
`
`U.S. Patent No. 6,538,647
`
`1014
`
`U.S. Patent No. 5,608,556
`
`1015
`
`Sharp LCD Application Note, Interface &
`Interconnection for 4-inch & 6-inch TFT/LCDs (1993)
`
`
`
`vi
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`I.
`
`INTRODUCTION
`The Board instituted inter partes review finding that there was a reasonable
`
`likelihood that Claims 4, 8 and 9 of U.S. Patent No. 7,202,843 (“the ‘843 Patent”)
`
`were anticipated by U.S. Patent Publication No. 2004/0196229 (“Ham”). (Paper
`
`10, Decision at 14-15). Effectively conceding that all of the other limitations of
`
`the claims are met by Ham, Patent Owner’s Response addresses only the last two
`
`limitations of Claim 4:
`
`generating1 a plurality of data impulses for each pixel within every
`frame period according to the frame data; and
`
`applying the data impulses to . . . one of the pixels within one frame
`period via the data line . . . in order to control a transmission rate of
`the liquid crystal device of the pixel.
`
`Patent Owner makes two arguments concerning the “generating” limitation.
`
`First, Patent Owner argues that because Petitioners have not offered a claim
`
`construction for “generating” beyond its ordinary and customary meaning,
`
`Petitioners have not met their burden of proof. (See, e.g., Paper 20, Response at
`
`28). This argument makes no sense. Neither Patent Owner nor its expert, Mr.
`
`Bohannon, offer any interpretation of this term, let alone explain why they believe
`
`further construction is necessary. In fact, Mr. Bohannon now admits that the term
`
`
`1 Bold and italics are used herein for emphasis.
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`612433.4
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`“generating” is “pretty clear” from the text of the ‘843 Patent. (Ex. 1009,
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`Bohannon Tr. 88:16-90:8).
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`Second, Patent Owner asserts that Ham’s “data modulator 52,” by itself,
`
`does not perform the “generating” step. But Petitioners never suggested that this
`
`component, standing alone, satisfies the generating step. Rather, as the Board
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`previously found, Petitioners rely on “Ham’s driving apparatus … as generating
`
`the two data impulses claimed.” (Paper 10, Order at 13). At no point does Patent
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`Owner or Mr. Bohannon meaningfully address the entire driving apparatus relied
`
`upon by Petitioner. Rather, Patent Owner and Mr. Bohannon focus on only a
`
`single component within this driving apparatus, namely data modulator 52. In all
`
`events, as Petitioners’ expert, Michael Marentic, confirms, the various components
`
`in Ham’s driving apparatus (e.g., timing controller 51, data modulator 52, line
`
`memory 59, switch 58, data driver 53 and gate driver 54) function together to
`
`generate two data impulses (i.e., modulated data voltage and normal data voltage),
`
`as required by the claim.
`
`Next, Patent Owner seeks to import “overdriving” from the specification
`
`into the “applying” step. But, in contrast to Claim 4, which does not mention
`
`overdriving, independent Claim 1 of the ‘843 Patent requires “generating a
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`plurality of overdriven pixel data within every frame period for each pixel.” The
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`Applicants explicitly recited overdriving in Claim 1 where they sought to cover
`
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`612433.4
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`2
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`this concept, and Patent Owner’s attempt to add this requirement to Claim 4 should
`
`be rejected as an improper attempt to circumvent the requirements for amending
`
`claims. See Sony Corp. v. Surpass Tech Innovation LLC, IPR2015-00862, Paper
`
`12 at 5 (PTAB Aug. 26, 2015) (Medley, J.) (“[C]ourts may not redraft claims,
`
`whether to make them operable or to sustain their validity.”) (citation omitted).
`
`For these reasons, as well as those discussed below and in the Petition,
`
`Claims 4, 8, and 9 are anticipated, and Patent Owner has not proven otherwise.
`
`II. ARGUMENT
`A. Ham Discloses the “Generating” Step
`Claim 4 requires “generating a plurality of data impulses for each pixel
`
`within every frame period according to the frame data.” As explained in the
`
`Petition, Ham teaches this step. (Paper 1, Petition at 48). In this regard, for each
`
`frame period, Ham’s driving method (and related circuit) receives one piece of
`
`information (i.e., “digital video data”) for each pixel in a frame and generates two
`
`data impulses for that pixel: (1) a modulated data voltage; and (2) a normal data
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`voltage. (Paper 10, Decision at 11-13; Ex. 1010, Marentic Decl. ¶¶52-53).
`
`Nothing more is required to establish that Ham satisfies the “generating” limitation
`
`of Claim 4. (Ex. 1010, Marentic Decl. ¶¶58).
`
`More particularly, as explained in the Petition and confirmed by Mr.
`
`Marentic, Ham’s source driver (i.e., the “data driver 53”) receives two digital
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`612433.4
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`3
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`signals (i.e., “the modulated data AMdata and the normal data RGB”) within one
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`frame interval, “convert[s]” (i.e., generates) each of these signals into two
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`corresponding analog data signals (i.e., a plurality of data impulses) and
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`“appl[ies]” these two data impulses “to the data lines 55 in each scanning period.”
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`(Paper 1, Petition at 48 citing, inter alia, Ex. 1005, Ham ¶¶ 40, 41; see also
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`Marentic Decl. ¶59; see also id. ¶¶50-54).
`
`Notably, in the ‘843 Patent, the step of “generating a plurality of data
`
`impulses” is also performed by source driver 18 in very similar manner:
`
`[W]hen the pixel data GN, GN(2) are generated, the source driver of
`the driving circuit 10 converts the pixel data GN, GN(2) into two
`corresponding data impulses and then applies them to the liquid
`crystal device 39 via the data line 32 in the frame period N ….
`(Ex. 1001, ‘843 Patent, Col. 4:8-14; see also id. at Col. 4:22-28 (“[T]he source
`
`driver 18 generates two corresponding data impulses according to the two pieces
`
`of pixel data and applies them to the pixel electrode 39 of the corresponding pixel
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`36 in order to control the transmission rate . . .of the pixel electrode 39.”).
`
`Patent Owner tries to obfuscate this straightforward issue by creating a non-
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`existent claim construction “dispute” and attacking phantom arguments that
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`Petitioners never made. These arguments are unavailing.
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`612433.4
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`4
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`1.
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`Surpass’ Expert Now Agrees That “Generating” Does Not
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`Need To Be Construed
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`Patent Owner argues that Petitioners have “offered no evidence of the proper
`
`construction of ‘generating’ as it appears in claim 4” and, therefore “they cannot
`
`show by a preponderance of the evidence that Ham discloses at least the
`
`‘generating’ step of claim 4.” (Paper 20, Response at 3, 28).
`
`Patent Owner cites no precedent requiring a party to offer a construction for
`
`every word in a patent claim, particularly for terms that are readily understood.
`
`Indeed, the Federal Circuit has held that claim construction “is not an obligatory
`
`exercise in redundancy.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554,
`
`1568 (Fed. Cir. 1997). Rather, “[c]laim construction is a matter of resolution of
`
`disputed meanings and technical scope, to clarify and when necessary to explain
`
`what the patentee covered by the claims . . . .” Id.; O2 Micro Int’l Ltd. v. Beyond
`
`Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“When the parties
`
`present a fundamental dispute regarding the scope of a claim term, it is the court’s
`
`duty to resolve it.”).
`
`Here, there is no dispute regarding the meaning and technical scope of
`
`“generating.” Indeed, neither Patent Owner, its expert, nor Petitioner proposes a
`
`construction of this term. (Ex. 1009, Bohannon Tr. 88:16-89:8). In fact, Mr.
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`612433.4
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`5
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`Bohannon now agrees that the term “generating,” as used in the ‘843 Patent, is
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`clear:
`
`Q· ·… [A]re you offering any -- any specific construction for
`“generating”?
`THE WITNESS:· No.· I think the patent is pretty clear, in that -- and
`in the figures and the description pretty much cover “generating.”
`
`
`(Id. at 89:9-15; see also id. at 89:17-90:8). Petitioners’ expert, Mr. Marentic,
`
`agrees that this term is readily understood by a person of ordinary skill in the art
`
`and requires no further construction. (Ex. 1010, Marentic Decl. ¶62-64).
`
`Not surprisingly, the Board and District Courts routinely refuse to construe
`
`this “clear” term. See, e.g., Westlake Services, LCC v. Credit Acceptance Corp.,
`
`CBM2014-00008, Paper 66 at 15 (PTAB March 24, 2015) (“The term
`
`‘generating’ requires no further construction and will be given its ordinary and
`
`customary meaning.”); e-Watch Inc. v. Apple, Inc., No. 2:13-CV-1061-JRG-RSP,
`
`2015 U.S. Dist. LEXIS 37216, at *79 (E.D. Tex. Mar. 25, 2015) (the phrase
`
`‘generating a digitized framed image’ is unambiguous, is easily understandable
`
`by a jury, and requires no construction); Adobe Sys. Inc. v. Afluo, LLC, IPR2014-
`
`00153, Paper 8 at 6 (PTAB April 29, 2014) (“[W]e decline to construe
`
`“generating a list specifying a plurality of data elements” in the manner proposed
`
`by Petitioners” because “[t]he ordinary and customary meaning is apparent from
`
`the claim language.”); Mobotix Corp. v. E-Watch, Inc., Case IPR2013-00255,
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`612433.4
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`6
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`Paper 11 at 11 (PTAB Oct. 25, 2013) (“A surveillance sensor . . . generating a
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`signal indicating a condition in the monitored area . . .” “has a plain meaning and
`
`requires no special construction.”).
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`Because there are no disputes regarding the meaning of “generating” and
`
`Patent Owner has not even proposed a construction, Patent Owner has failed to
`
`establish that “generating” requires further construction.
`
`Patent Owner Mischaracterizes Petitioners’ Position
`
`2.
`Rather than address Petitioners’ true position, Patent Owner and Mr.
`
`Bohannon erect a strawman argument that the Petition “looks solely to [Ham’s]
`
`data modulator 52 for ‘generating a plurality of data impulses for each pixel
`
`within every frame period according to the frame data’ feature of claim 4.” (Paper
`
`20, Response at 12). This simply is not true. Petitioner relies on Ham’s entire
`
`driving circuit, including data driver 53, for the generating step. (See, e.g., Paper 1,
`
`Petition at 45-47, citing Ex. 1005, Ham, Figs. 5 and 7B; id. at 48 citing Ex. 1005,
`
`Ham ¶¶ 40, 41 and 53).
`
`In fact, Patent Owner made a very similar argument in its Preliminary
`
`Response, where Patent Owner argued that the Petition relies solely on Ham’s
`
`timing controller 51 to satisfy the “generating” limitation. (Paper 9, Prelim. Resp.
`
`at 35). The Board rejected this argument:
`
`Patent Owner . . . argues that the normal RGB data is not disclosed as
`“generated” by timing controller 51. . . . Petitioner did not rely on
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`612433.4
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`7
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`the Figure 5 timing controller 51 alone to meet the limitation. Rather,
`we understand Petitioner to rely on the driving apparatus, for
`example of Figure 5, which is not limited to the timing controller 51,
`as generating the two data impulses as claimed. See Pet. 48, citing Ex.
`1005 ¶¶ 40, 41, 53.
`(Paper 10, Order at 13) (emphasis added).
`
`Patent Owner and Mr. Bohannon pretend that the Board did not already
`
`address this issue and continue to insist that that Sharp is relying on just a single
`
`component of the driving apparatus of Figure 5―this time Ham’s “data modulator
`
`52.” But to date, Patent Owner has acknowledged that Petitioner relied on at least
`
`two components of Ham’s driving apparatus purportedly, namely, the timing
`
`circuit 51 and data modulator 52. Of course, as explained above, Petitioner has
`
`always relied upon Ham’s entire driving apparatus (e.g., timing controller 51, data
`
`modulator 52, line memory 59, switch 58, data driver 53 and gate driver 54) as
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`functioning together to generate two data impulses (i.e., modulated data voltage
`
`and normal data voltage), as required by Claim 4. (Paper 10, Order at 13; Ex. 1010,
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`Marentic Decl. ¶67).
`
`Patent Owner’s Data Modulator Arguments Are Wrong
`
`3.
`Patent Owner further mischaracterizes the facts by asserting that Petitioners’
`
`“universe of theories of unpatentability is limited to one: that Ham’s Data
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`Modulator 52 generates the normal data RGB that is received by timing
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`controller 51.” (Paper 20, Response at 13; see also id. at 27). This is a total
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`612433.4
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`8
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`
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`fabrication. The Petition never contends that “normal data RGB” is “generated”
`
`by data modulator 52. Rather, the Petition clearly explains that Ham’s driving
`
`apparatus generates “two data impulses” (i.e., modulated data voltage and normal
`
`data voltage). (Paper 1, Petition at 48).
`
`Patent Owner’s argument regarding “normal RGB data” (a digital signal)
`
`appears to be based on a single sentence on Page 46 of the Petition that merely
`
`explains that Ham’s apparatus generates two data impulses for each pixel in one
`
`frame period. The “data impulses” referred to in this sentence are the two analog
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`voltages applied to the pixels over the data lines (i.e., the output of the driving
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`circuit to the LCD Panel). (Ex. 1010, Marentic Decl. ¶70). Both experts agree that
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`these voltages are analog signals, and therefore, cannot possibly be the same as the
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`digital “normal data RGB” signals. (Id.; Ex. 1009, Bohannon Tr. 114:3-12).
`
`Accordingly, Patent Owner’s arguments regarding Ham’s “data modulator
`
`52” and “normal data RGB” are irrelevant.
`
`Patent Owner Ignores Petitioners’ Claim Charts
`
`4.
`Patent Owner also asserts that “Petitioners are improperly looking to the
`
`same data being received by the timing controller 51 to satisfy both of the separate
`
`elements of ‘receiving’ and ‘generating’ of claim 4.” (Paper 20, Response at 30).
`
`This simply is not true, as Petitioners’ claim charts (reproduced in relevant part
`
`below) demonstrate:
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`612433.4
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`9
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`
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`the method comprising:
`receiving continuously a
`plurality of frame data;
`generating a plurality of data
`impulses for each pixel
`within every frame period
`according to the frame data;
`and
`
`The method includes continuously “receiv[ing]
`digital video data.” (E.g., Ex. 1005, Ham, ¶¶
`[0003], [0037], Fig. 5).
`The method includes generating two data impulses
`(i.e., “modulated data” and “normal data”) for each
`pixel “within one frame period.” (E.g., ¶¶ [0040]-
`[0041], ¶ [0053] (“[T]he LCD drive apparatus and
`method according to the present invention appl[ies]
`the normal data to the liquid crystal panel at the
`initial half period of the frame after supplying of
`the modulated data to the liquid crystal panel
`during the later half period of the frame . . . . “).
`
`(Paper 1, Petition at 48).
`
`With respect to the “receiving” step, the chart identifies the “digital video
`
`data” input to Ham’s driving circuit (see Paragraph 37 and Figure 5 (item 51) of
`
`Ham, both cited in the claim chart). In connection with the “generating” step, the
`
`chart refers to completely different data—“two data impulses,” which, as discussed
`
`above, are the analog signals output from Ham’s driving circuit. (Paper 20,
`
`Response at 14; Ex. 1005, Ham, ¶ 41; see also Ex. 1010, Marentic Decl. ¶72).
`
`Mr. Bohannon has since agreed that Ham teaches the use of different data
`
`for the receiving and generating steps:
`
`Q· · Okay.· So is it correct that the initial data coming into timing
`controller 51 is digital?
`A It says . . . it was from a digital video -- digital video card.
`Q And the output into data lines 55 is analog; correct?
`A Yeah. So let’s be clear.· Yeah, converted into analog data and
`applied to the data lines, yep.
`
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`612433.4
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`10
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`(Ex. 1009, Bohannon Tr. 114:3-12).
`
`With respect to the portions of Ham cited in Petitioners’ claim charts in
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`connection with the “generating” limitation (i.e., ¶¶ 40, 41 and 53), Patent Owner
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`and Mr. Bohannon admit that they only conducted a perfunctory search for the
`
`word “generating” in these paragraphs. (See, e.g., Ex. 1009, Bohannon Tr.
`
`101:16-102:4 (“hardly anywhere in the Ham patent is the word ‘generating’
`
`used.”); see also Paper 20, Response at 12 (“[T]he only instance of Ham using the
`
`term ‘generating’ in [Paragraphs 40, 41 and 53] appears in a discussion related to
`
`the gate driver 54.”); id. at 37-38 n.5). The fact that the word “generating” appears
`
`only once in the cited paragraphs of Ham is of no moment—“a prior art reference
`
`need not disclose the exact terminology used in the claim.” See Microsoft Corp. v.
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`B.E. Tech., L.L.C., IPR2014-00039, Paper 43 at 13 (PTAB Mar. 31, 2015); see
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`also In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (holding that anticipation is “is
`
`not an ipsissimis verbis test”); In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)
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`(same).
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`Furthermore, Ham’s explicit teaching of gate driver 54 for “generating a
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`scanning pulse” (See Ex. 1005, Ham ¶40) cannot be ignored (as Patent Owner
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`does). This scanning pulse is critical to the operation of Ham’s driving circuit. As
`
`Mr. Marentic explains, Ham’s driving circuit would not function at all without
`
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`612433.4
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`11
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`
`
`
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`“generating a scanning pulse,” let alone generate two data impulses in a frame.
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`(Ex. 1010, Marentic Decl. ¶76).
`
`As established in the Petition and confirmed by Petitioners’ expert, it is
`
`beyond reasonable dispute that Ham discloses the “generating” step of Claim 4.
`
`B.
`Patent Owner Cannot Redraft Claim 4 To Include Overdriving
`Claim 4 requires “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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`In its Response, Patent Owner attempts to amend this limitation to further
`
`require the application of “two or more overdriven data impulses in order to
`
`control a transmission rate of the liquid crystal device, or overdriving.” But
`
`“overdriven” data impulses and “overdriving” are not in Claim 4, and therefore,
`
`the only way to add these limitations was via the procedures for amending claims,
`
`including: (1) conferring with the Board regarding the proposed amendment; and
`
`(2) filing a motion to amend that complies with 37 C.F.R. § 42.121(a)-(b); and (3)
`
`in the motion to amend, “show[ing a] patentable distinction over the prior art of
`
`record and also prior art known to the patent owner.” Idle Free Systems, Inc. v.
`
`Bergstrom, Inc., IPR2012-00027, Paper 26 at 7 (PTAB June 11, 2013).2 Patent
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`2 Patent Owner has not and cannot show that the addition of overdriving is
`
`patentably distinct over the prior art of record. In fact, the Petitioner relied upon
`
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`612433.4
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`12
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`
`
`
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`Owner failed to take these steps and now seeks to introduce this amendment for the
`
`first time under the guise of claim construction. Patent Owner’s proposed
`
`amendment is improper and should be rejected on this basis alone.
`
`Notwithstanding Patent Owner’s failures, there simply is no legal basis for
`
`its so-called “claim construction.” Patent Owner argues that the broadest
`
`reasonable construction of the “applying” step requires the inclusion of
`
`“overdriving.” But Patent Owner’s proposed “construction” is based on the desire
`
`to avoid Ham, rather than the broadest reasonable construction of this term.
`
`More particularly, Ham teaches applying one overdriven (i.e., “modulated”)
`
`data impulse in the first half of a frame and a non-overdriven data impulse in the
`
`second half of the frame. (See Paper 10, Decision at 11-13). Patent Owner
`
`attempts to escape invalidity by re-drafting Claim 4 to require applying two
`
`overdriven data in each portion of a frame (e.g., both halves of a frame), even
`
`though the claim does not refer to overdriven data. This is improper. “[T]he role
`
`of claim construction is to describe the claim scope as it was intended when
`
`other prior art (e.g., Adachi), which teaches applying two or more overdriven data
`
`impulses in a single frame, which is exactly what Patent Owner now seeks to add
`
`to Claim 4. (See Paper 1, Petition at 37-40). The Board exercised its discretion to
`
`institute review of Claims 4, 8 and 9 based on Ham, rather than Adachi. (Paper 10,
`
`Decision at 14).
`
`
`612433.4
`
`13
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`
`
`
`
`examined and obtained by the applicant, not as it might have been limited upon a
`
`different record of prosecution and prior art.” Karsten Mfg. Corp. v. Cleveland
`
`Golf Co., 242 F.3d 1376, 1384 (Fed. Cir. 2001); see also Sony Corp., IPR2015-
`
`00862, Paper 12 at 5 (“[C]ourts may not redraft claims, whether to make them
`
`operable or to sustain their validity.”), quoting Chef Am., Inc. v. Lamb-Weston,
`
`Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004).
`
`1.
`
`Patent Owner’s Proposed “Claim Construction” Is Not The
`
`Broadest Reasonable Construction
`
`In an inter partes review, a claim in an unexpired patent shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`it appears. See 37 C.F.R. § 42.100(b). Under the broadest reasonable construction
`
`standard, claim terms are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`
`See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “[W]here
`
`claim language is clear we must accord it full breadth even if the result is a claim
`
`that is clearly invalid.” Tate Access Floors v. Interface Architectural Res., 279
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`F.3d 1357, 1372 (Fed. Cir. 2002).
`
`Here, Claim 4 is crystal clear; it does not refer to “overdriven” data impulses
`
`or the “overdriving” step included in Patent Owner’s proposed claim construction.
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`(Ex. 1010, Marentic Decl. ¶79). Rather, Claim 4 simply requires applying “data
`
`
`612433.4
`
`14
`
`
`
`
`
`impulses” in order to “control a transmission rate.” (Id.). Thus, Claim 4, by its
`
`plain words cannot be limited to overdriving, as the Patent Owner sought to cover
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`broader methods that do not use overdriven data and overdriving. See Tate Access
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`Floors, 279 F.3d at 1372.
`
`Moreover, in contrast to Claim 4, independent Claim 1 (which is not under
`
`review) explicitly requires overdriving:
`
`Claim 1
`
`Claim 4
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`. . . generating a plurality of overdriven
`
`generating a plurality of data impulses
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`pixel data within every frame period for
`
`for each pixel within every frame
`
`each pixel;
`
`period according to the frame data; . . .
`
`Because Claim 4 does not refer to overdriving and Claim 1 explicitly refers
`
`to this concept, limiting Claim 4 to overdriving simply cannot be the broadest
`
`reasonable construction. SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d
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`1107, 1122 (Fed.Cir.1985) (“It is settled law that when a patent claim does not
`
`contain a certain limitation and another claim does, that limitation cannot be read
`
`into the former claim . . . .”); Envtl. Designs, Inc. v. Union Oil Co., 713 F.2d 693,
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`699 (Fed. Cir. 1983) (“It is improper for courts to read into an independent claim a
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`limitation explicitly set forth in another claim.”).
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`Applicants explicitly recited “overdriving” in Claim 1 to cover this concept,
`
`and omitted overdriving from Claim 4 to cover broader concepts. In view of these
`
`
`612433.4
`
`15
`
`
`
`
`
`differences, it simply is not reasonable to narrow Claim 4 to include overdriving.
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`Moreover, Patent Owner’s proposed construction would improperly render the
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`“overdriving” term in Claim 1 superfluous. See CAE Screenplates, Inc. v.
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`Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of
`
`evidence to the contrary, we must presume that the use of these different terms in
`
`the claims connotes different meanings.”).
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`Remarkably, Mr. Bohannon admitted that the support for his construction
`
`was the language of Claim 1, and not Claim 4: “If I read Column 6, Line 15 [i.e.,
`
`Claim 1] . . . it says, generating a plurality of data impulses according to a plurality
`
`of overdriven pixel data.” (Bohannon Tr. 81:5-82:10; see also id. at 82:23-83:11
`
`(relying on the same language); id at. 127:2-22 (relying on Column 2:33-48 of the
`
`‘843 Patent); id. at 73:7-15 (relying on Col. 2:40 of the ‘843 Patent); see also id
`
`36:5-19, 37:4-18, 61:18-63:5, 86:22-88:1 (relying on similar passages in the ‘843
`
`Patent ). All of the passages that Mr. Bohannon cites merely parrot the text of
`
`Claim 1. (Compare Ex. 1001, ‘843 Patent, Col. 2:33-48, with id. at Col. 6:7-24).
`
`He never cited the other portions of the patent that parrot Claim 4, which portions
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`do not refer to overdriving. (Compare id. at Col. 2:19-32, with id. at Col. 7:1-19).
`
`2.
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`Patent Owner Improperly Imports A Limitation
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`Patent Owner and Mr. Bohannon ask the Board to commit the “cardinal sin”
`
`of claim construction, namely importing a limitation (i.e., overdriven data and the
`
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`612433.4
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`16
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`
`
`
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`step of overdriving) into Claim 4 from the ‘843 Patent specification. Phillips v.
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`AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005).
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`Patent Owner argues that the applying step in Claim 4 “recalls the
`
`discussion of ‘overdriven’ according to the ‘843 specification,” and that there is
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`some “correlation” between overdriving and controlling the transmission rate.
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`(Paper 20, Response at 21, 25; see also Ex. 2005, Bohannon Decl. ¶12). There are
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`many problems with these arguments, the first of which is that the ‘843 Patent
`
`teaches outputting multiple data impulse
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