UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`
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`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 7,202,843
`
`_______________
`
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`MOTION FOR OBSERVATIONS ON CROSS-EXAMINATION OF
`MICHAEL J. MARENTIC
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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 7,202,843
`
`_______________
`
`
`
`PATENT OWNER SURPASS TECH INNOVATION LLC’S
`MOTION FOR OBSERVATIONS ON CROSS-EXAMINATION OF
`MICHAEL J. MARENTIC
`
`
`
`
`
`
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`
`
`
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`Pursuant to the Amended Scheduling Order dated April 9, 2015 (Paper 16)
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`and the parties’ stipulated modifications to the Scheduling Order, Patent Owner
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`Surpass timely moves for observations on cross-examination in light of Patent
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`Owner’s cross-examination of Petitioners’ witness, Mr. Michael J. Marentic on
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`October 6, 2015. The transcript of Mr. Marentic’s cross-examination testimony is
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`being filed as exhibit 2007 (“Ex. 2007”).
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`
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`Observations on Cross-Examination
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`1. Ex. 2007 at 12:21-13:5; 15:21-16:4; 16:18-17:5: Marentic testified that
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`he agrees with everything in the Petition and that Petitioners’ theories of
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`challenge based on Ham, as set forth in the Petition, have not changed
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`during this proceeding. This testimony is relevant to the scope of this
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`proceeding. See Petition (“Pet.”) at 45-49.
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`2. Ex. 2007 at 101:7-20: Marentic testified that “control[ling] a transmission
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`rate” by doubling the transmission rate does not “make technical sense
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`to” him. This testimony is relevant to whether the Petition’s theory that
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`Ham controls a transmission rate by “doubl[ing] the transmission rate of
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`the cell” is correct. Pet. at 48 (bottom row of claim chart). This testimony
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`is also relevant to the scope of this proceeding and whether Petitioners
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`1
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`
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`have deviated from their original theories of challenge. See Pet. at 45-49;
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`¶ 1 above.
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`3. Ex. 2007 at 103:3-7: Marentic testified that Ham’s data modulator 52
`
`does not generate analog voltages. This testimony is relevant to whether
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`the Petition’s theory that Ham’s data modulator 52 “generates two data
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`impulses (i.e., ‘modulated data’ signal and ‘normal data’ signal) for each
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`pixel within one frame period” is correct. Pet. at 46 (emphasis in
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`original). This testimony is also relevant to the scope of this proceeding
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`and whether Petitioners have deviated from their original theories of
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`challenge. See Pet. at 45-49; ¶ 1 above.
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`4. Ex. 2007 at 105:12-19: Marentic testified that Ham’s entire driving
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`circuit is necessary to generate data impulses. “There isn’t a single item
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`that generates everything.” See Ex. 2007 at 105:18-19. This testimony is
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`also relevant to the scope of this proceeding and whether Petitioners have
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`deviated from their original theories of challenge. See Pet. at 45-49; ¶¶ 1,
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`3 above.
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`5. Ex. 2007 at 38:10-41:6: Marentic confirms that the asserted level of skill
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`in the art differs between the Petition (p. 19) and in Marentic’s
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`declaration testimony (Ex. 1010 at ¶¶ 42-43). This testimony is relevant
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`to the level of skill in the art applied by the Board in this proceeding.
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`2
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`
`
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`This testimony is also relevant to the scope of this proceeding and
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`whether Petitioners have deviated from their original theories of
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`challenge. See Pet. at 45-49; ¶ 1 above.
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`6. Ex. 2007 at 19:11-20:5; 28:16-29:14; 45:13-17; 46:3-5: Marentic testified
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`that he did not construe the claims or words or phrases in the ‘843 patent.
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`“I don’t believe I’ve construed any of the phrases or any of the terms.”
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`See Ex. 2007 at 29:13-15. This testimony is relevant to the weight to be
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`given to Sharp’s claim construction rebuttal. See Reply at 14-20; Ex.
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`1010 at ¶¶ 78-95. This testimony is also relevant to whether Sharp has
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`rebutted Patent Owner’s claim construction analysis. See Response at 20-
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`28; Ex. 2005 at ¶¶ 14-30.
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`7. Ex. 2007 at 32:12-20: Marentic testified that he was not asked to provide
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`an opinion regarding whether a claim was invalid or not. This testimony
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`is relevant to whether Sharp possesses evidence sufficient to carry its
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`burden in the challenge of claims 4, 8, and 9 of the ‘843 patent. See Pet.
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`at 45-49.
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`8. Ex. 2007 at 33:8-33:22; 42:9-15: Marentic testified that Patent Owner
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`Surpass’s testifying witness of Ex. 2005, William Bohannon, is an expert
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`in the field of LCD driving. This testimony is relevant to Marentic’s
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`3
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`
`
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`declaration testimony on the level of skill in the art, Ex. 1010 at ¶¶ 42-43,
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`and to the weight to be given to Bohannon’s testimony. See Ex. 2005.
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`9. Ex. 2007 at 49:6-21; 129:16-21; 151:7-14: Marentic testified on his
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`standard procedure for understanding a claim term. Marentic also
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`testified that he agrees that a term at issue in claim 4, “control a
`
`transmission rate,” does not appear in the ‘843 patent’s background
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`disclosure. Marentic also testified that he based his understand of that
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`term’s meaning on his background experience, not from a reading of the
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`‘843 patent’s use of that term. This testimony is relevant to whether
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`Sharp has rebutted Patent Owner’s claim construction analysis. See
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`Response at 20-28; Ex. 2005 at ¶¶ 14-30.
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`10. Ex. 2007 at 54:2-7: Marentic agrees that a patent abstract will not
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`necessarily contain or disclose all the elements or all the nuances of an
`
`invention. This testimony is relevant to Marentic’s declaration testimony
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`and Petitioners’ argument that the ‘843 patent Abstract teaches a driving
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`method including “outputting multiple data impulses without
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`overdriving.” See Reply at 17 (emphasis added); Ex. 1010 at ¶ 84.
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`11. Ex. 2007 at 61:13-62:2: Marentic testified that he did not draw upon his
`
`network of experienced people in the field of LCD technology to check
`
`or compare his interpretations of ‘843 patent claim terms. This testimony
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`4
`
`
`
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`is relevant to the weight to be given to Marentic’s declaration testimony
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`on what he believes to be the “correct understanding” of the term,
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`“control a transmission rate.” See Ex. 1010 at ¶ 93.
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`12. Ex. 2007 at 66:8-69:13; 78:1-81:9; 83:12-86:4; 86:18-87:7: Marentic
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`testified that has no knowledge about the inventors, patent attorneys, or
`
`drafting procedures of Ex. 1012, Ex. 1013, or Ex. 1014, and he did not
`
`review the file histories of those exhibits when evaluating the meaning of
`
`terms appearing in those disclosures. This testimony is relevant to the
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`probative weight to be given to Ex. 1012, Ex. 1013, and Ex. 1014 in
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`Petitioners’ Reply and Marentic’s declaration testimony on those
`
`exhibits. See Reply at 23-24; Ex. 1010 at ¶¶ 92-93.
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`13. Ex. 2007 at 73:20-74:5; 77:7-21: Marentic testified that he does not know
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`the procedures or scope of the search that was conducted to find Ex.
`
`1012, Ex. 1013, or Ex. 1014; he does not know how many other ways
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`“transmission rate” is used in other patents, and does not know whether
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`other patents use the term differently from his understanding because he
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`did not review all the search results, only those three patents given to him
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`by litigation counsel. This testimony is relevant to the probative weight to
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`be given to Ex. 1012, Ex. 1013, and Ex. 1014 in Petitioners’ Reply and
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`5
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`
`
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`Marentic’s declaration testimony on those exhibits. See Reply at 23-24;
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`Ex. 1010 at ¶¶ 92-93.
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`14. Ex. 2007 at 72:11-18: Marentic testified that different terms can have the
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`same meaning within a patent disclosure. This testimony is relevant to
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`Petitioners’ argument and Marentic’s testimony that claim 4 does not
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`require overdriving because the term “overdriven” does not appear in the
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`claim. See Reply at 14-15; Ex. 1010 at ¶¶ 79-88.
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`15. Ex. 2007 at 99:20-100:5: Marentic testified that Ham (Ex. 1005) does not
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`disclose overdriving the LCD panel in each subframe. This testimony is
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`relevant to whether Ham discloses all features of claim 4 as claim 4 is
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`interpreted by Patent Owner. See Response at 20-27.
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`16. Ex. 2007 at 112:4-14: Marentic testified that the driving circuits
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`disclosed by the ‘843 patent are disclosed in Figs. 3, 7, and 8, and
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`components thereof are shown in Fig. 4. See also Ex. 2007 at 116:4-10.
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`Marentic also testified that the ‘843 patent’s disclosed driving circuits all
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`output two overdriven data per frame. This testimony is relevant to
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`whether the ‘843 patent discloses a driving circuit embodiment that does
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`not output two overdriven data per frame. See Reply at 17-18. This issue
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`is relevant to the proper construction of “control a transmission rate” as
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`that term appears in claim 4 of the ‘843 patent. See Response at 20-27.
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`6
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`
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`17. Ex. 2007 at 120:7-122:7: Marentic testified that in order for Shen’s
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`driving circuit to output non-overdriven data, the “circuits require some
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`tuning,” and Marentic agrees this modified tuning is not actually
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`disclosed as an embodiment in Shen. See Ex. 2007 at 122:12. This
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`testimony is relevant to whether the ‘843 patent discloses a driving
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`circuit embodiment that does not output two overdriven data per frame.
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`See Reply at 17-18; ¶ 16 above. This issue is relevant to the proper
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`construction of “control a transmission rate” as that term appears in claim
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`4 of the ‘843 patent. See Response at 20-27.
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`18. Ex. 2007 at 141:2-13; 143:9-144:1: Marentic testified that the “primary
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`object of the claimed invention” according to the ‘843 patent’s Summary
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`of the Invention is to “provide a driving circuit of an LCD panel and its
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`relating driving method … .” Marentic also testified that it is his
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`understanding that “its” in “its related driving method” refers the driving
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`method back to the driving circuit of the LCD panel. See Ex. 2007 at
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`143:19-144:1. This testimony is relevant to whether the ‘843 patent
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`discloses a driving circuit embodiment performing a driving method that
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`does not output two overdriven data per frame. See Reply at 17-18; ¶¶
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`16-17 above. This issue is relevant to the proper construction of “control
`
`7
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`
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`a transmission rate” as that term appears in claim 4 of the ‘843 patent.
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`Respectfully submitted,
`
`By: /s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Donald L. Jackson (Reg. No. 41,090)
`Michael R. Casey (Reg. No. 40,294)
`Davidson Berquist Jackson & Gowdey,
`LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`Email: djackson@dbjg.com
`Email: mcasey@dbjg.com
` Counsel for Patent Owner
`
`
`
`See Response at 20-27.
`
`
`
`Dated: October 15, 2015
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`
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`
`
`8
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`CERTIFICATE OF SERVICE
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`
`
`
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`I hereby certify that on October 15, 2015, a true and correct copy of the
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`foregoing MOTION FOR OBSERVATIONS ON CROSS-EXAMINATION OF
`
`MICHAEL J. MARENTIC is being served via email by consent to the Petitioners at
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`the correspondence addresses of record as follows:
`
`Anthony F. Lo Cicero
`Reg. No. 29,403
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8110
`Facsimile: (212) 336–8001
`E-mail: alocicero@arelaw.com
`
`Brian A. Comack
`Reg. No. 45,343
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8098
`Facsimile: (212) 336–8001
`E-mail: Sharp-843IPR@arelaw.com
`
`By: /s/ Wayne M. Helge
` USPTO Reg. No. 56,905
` Counsel for Patent Owner
`
`
`
`9
`
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