For: HIGH-EFFICIENCY DISPLAY SYSTEM UTILIZING AN OPTICAL
`ELEMENT TO RESHAPE LIGHT WITH COLOR AND BRIGHTNESS
`UNIFORMITY
`
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,688,347
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`United States Patent No: 7,688,347
`Inventor: Eugene Dolgoff
`Formerly Application No.: 10/115,279
`Issue Date: March 30, 2010
`Filing Date: April 3, 2002
`Former Group Art Unit: 2621
`Former Examiner: Gims S Philippe
`Patent Owner: Eugene Dolgoff
`
`
`Attorney Docket No.:
`108421-0006-652
`Customer No.: 28120
`
`Petitioner: NEC Display
`Solutions of America, Inc.
`
`
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`Inter Partes Review
`United States Patent No. 7,688,347
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`TABLE OF CONTENTS
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`V.
`
`
`INTRODUCTION AND BACKGROUND IN THE ART ............................. 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 3
`III. PETITIONER HAS STANDING .................................................................... 4
`A. Grounds for Standing Under § 42.104(a) .............................................. 4
`B.
`Claims and Statutory Grounds Under §§ 42.22 and 42.104(b) ............. 4
`IV. SUMMARY OF THE ’347 PATENT and its field ......................................... 5
`A. Overview of the ’347 Patent .................................................................. 5
`B.
`Summary of the ’347 Patent Prosecution .............................................. 7
`C. Overview of the Field of the Claimed Invention .................................. 8
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO THE CHALLENGED CLAIMS .... 9
`A.
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ......................... 10
`B.
`Level of Ordinary Skill in the Art and State of the Art ....................... 19
`C. De Vaan in View of the Knowledge of a POSITA Renders
`Obvious Claims 29, 30, 32, and 47 (Ground 1) .................................. 20
`1.
`Overview of De Vaan ............................................................... 20
`2.
`De Vaan in View of the Knowledge of a POSITA
`Renders Obvious Claims 29, 30, 32, and 47 ............................. 22
`D. De Vaan in View of Hamada (Ground 2) or Dolgoff EP ’630
`(Ground 3) Renders Obvious Claims 29, 30, and 32 .......................... 30
`1.
`Overview of the Art .................................................................. 31
`2. Motivation to Combine and Resulting Structure ...................... 32
`3.
`De Vaan in View of Hamada or Dolgoff EP ’630
`Renders Obvious Claims 29, 30, and 32 ................................... 33
`De Vaan in View of Mitsutake Renders Obvious Claims 48 and
`69 (Ground 4) ...................................................................................... 33
`1.
`Overview of Mitsutake ............................................................. 33
`2. Motivation to Combine De Vaan with Mitsutake ..................... 36
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`E.
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`Inter Partes Review
`United States Patent No. 7,688,347
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`3.
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`De Vaan in View of Mitsutake Renders Obvious Claims
`48, and 69 .................................................................................. 38
`F. Masumoto in View of the Knowledge of a POSITA Renders
`Obvious Claims 29, 30, 32, and 47 (Ground 5) .................................. 40
`1.
`Overview of Masumoto ............................................................ 40
`2. Masumoto in View of the Knowledge of a POSITA
`Renders Obvious Claims 29, 30, 32, and 47 ............................. 43
`G. Masumoto in View of Hamada (Ground 6) or Dolgoff EP ’630
`(Ground 7) Renders Obvious Claims 29, 30, and 32 ......................... 54
`H. Masumoto in View of Mitsutake Renders Obvious Claims 48
`and 69 (Ground 8) ............................................................................... 56
`1. Motivation to Combine Masumoto with Mitsutake .................. 56
`2. Masumoto in View of Mitsutake Renders Obvious
`Claims 48 and 69 (Ground 8) .................................................... 58
`VI. CONCLUSION .............................................................................................. 59
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`iii
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`Inter Partes Review
`United States Patent No. 7,688,347
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`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 7,688,347
`U.S. Patent No. 7,688,347 File History
`Expert Declaration of Prof. Jose Sasian
`European Patent Application Publication No. 0,509,630 A2
`(“Dolgoff EP ’630”)
`U.S. Patent No. 5,184,248 (“De Vaan”)
`U.S. Patent No. 3,296,923 (“Miles”)
`Japanese Publication No. JP H05-72628 (“Uehara”)
`Japanese Publication No. JP H04-310903 (“Mitsutake”)
`European Patent Application No. 0 573 905 A1 (“Weber”)
`U.S. Patent No. 5,052,783 (“Hamada”)
`U.S. Patent No. 2,991,691 (“Schering”)
`U.S. Patent No. 5,418,583 (“Masumoto”)
`Exhibit A to Plaintiff’s Amended Infringement Contentions,
`Cascades Projection LLC v. NEC Display Solutions of America,
`Inc., No. 2:15-CV-00273 (C.D. Cal. April 27, 2015)
`Plaintiff’s Amended Infringement Contentions, Cascades Pro-
`jection LLC v. NEC Display Solutions of America, Inc., No.
`2:15-CV-00273 (C.D. Cal. June 19, 2015)
`Weber, Retroreflecting Sheet Polarizer 427-429, Society for In-
`formation Display Conf. (1992).
`Kazuhiko Takeuchi et al,A 750-TV -Line-Resolution Projector
`Using 1.5-Megapixel a-Si TFT LC Modules, SID 91 Digest, pp.
`415-418.
`Hamada, H., Funada, F., Hijikigawa, M., & Awane, K. (1992).
`Brightness enhancement of an LCD projector by a planar mi-
`crolens array. In SID (Vol. 92, pp. 269-272)
`U.S. Patent No. 1,577,388 (“Twyman”)
`U.S. Patent No. 5,126,863 (“Otsuka”)
`U.S. Patent No. 5,455,694 (“Ariki”)
`Declaration of Matthew J. McDonell
`
`iv
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`Exhibit
`Ex. 1101
`Ex. 1102
`Ex. 1103
`Ex. 1104
`
`Ex. 1105
`Ex. 1106
`Ex. 1107
`Ex. 1108
`Ex. 1109
`Ex. 1110
`Ex. 1111
`Ex. 1112
`Ex. 1113
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`Ex. 1114
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`Ex. 1115
`
`Ex. 1116
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`Ex. 1117
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`Ex. 1118
`Ex. 1119
`Ex. 1120
`Ex. 1121
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`Pursuant to §§ 311-319 and Rule § 42,1 the undersigned, on behalf of and
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`acting in a representative capacity for NEC Display Solutions of America, Inc.
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`(“Petitioner”) hereby petitions for inter partes review of claims 29, 30, 32, 47, 48,
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`and 69 (“the Challenged Claims”) of U.S. Pat. 7,688,347 (“the ’347 patent”), is-
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`sued to Eugene Dolgoff, and, according to the USPTO, currently assigned to Eu-
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`gene Dolgoff (“Dolgoff” or “PO”). Petitioner hereby asserts that there is at least a
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`reasonable likelihood that at least one of the Challenged Claims is unpatentable for
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`the reasons set forth herein, and respectfully requests review of, and judgment
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`against, claims 29, 30, 32, 47, 48, and 69 as unpatentable under § 103.
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`I.
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`INTRODUCTION AND BACKGROUND IN THE ART
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`The ’347 patent specification states that it relates to “various light saving or
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`‘brightness enhancement’ techniques [that] can greatly increase the light output of
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`most displays including projection systems and direct view systems such as LCDs.”
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`Ex. 1101 54:27-30. The Challenged Claims are directed to techniques such as “put-
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`ting . . . more uniform illumination at the image-forming element,” “[s]haping the
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`beam to fit the LCD,” and “us[ing] a non-absorbing polarizer that makes use of
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`both polarizations.” Ex. 1101 34:47-48, 54:33-36.
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`But there is nothing new in the Challenged Claims of the ’347 patent. As set
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`1 All section cites herein are to 35 U.S.C. or 37 C.F.R., as the context indicates. All
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`emphasis and annotations to figures herein is added unless otherwise noted.
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`forth in this Petition, the supposed “invention” in the Challenged Claims and the
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`Inter Partes Review
`United States Patent No. 7,688,347
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`“brightness enhancement techniques” described therein were well-known and an-
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`ticipated, or at minimum obvious, prior to the claimed priority date of April 4,
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`1994.2 Indeed, the references cited herein discuss these techniques at length.
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`U.S. Pat. 5,184,248 (“De Vaan”), discloses the use of lens plates (i.e., input
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`lens arrays) to focus light with a uniform distribution onto the pixels of an LCD
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`display panel and shape the beam to fit the display panel, as well as the use of a
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`beam splitter prism (i.e., a non-absorbing polarizer that makes use of both polariza-
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`tions.). See Ex. 1105 3:57-67, 13:26-29, 17:58-63. U.S. Pat. 5,418,583 (“Masumo-
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`to”), also discloses the use of lens array plates to focus uniformly bright light onto
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`the pixels of an LCD panel and to shape the beam to fit the display panel. See Ex.
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`1112 6:39-44, 12:65-67. Japanese Pub. JP H04-310903 (“Mitsutake”), discloses
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`replacing conventional plate polarizers and beam splitter polarizers (as used in De
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`Vaan) with an improved polarizing conversion unit with a plate-like polarizing el-
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`ement that makes use of both polarizations. See Ex. 1108 ¶ 0022. U.S. Pat.
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`5,052,783 (“Hamada”) and European Patent Appl. Pub. 0,509,630 A2 (“Dolgoff
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`EP ’630”) disclose the well-known technique in the art of focusing light into pixel
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`2 As discussed further in § IV.B infra, the applicant disclaimed priority to applica-
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`tions predating April 4, 1994. See, e.g., Ex. 1102 00421, 00432.
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`2
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`holes with a lens array. See Ex. 1110 1:57-61, 3:43-46; Ex. 1104 47:58-48:2. None
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`Inter Partes Review
`United States Patent No. 7,688,347
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`of these references were cited during prosecution of the ’347 patent.
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`As demonstrated in this Petition, each and every element of the Challenged
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`Claims has been disclosed in the prior art and at most the Challenged Claims are
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`nothing more than a routine and predictable combination of these well-known ele-
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`ments. Thus, Petitioner respectfully requests that the Board institute trial and find
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`each of the Challenged Claims invalid under § 103.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
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`Real Party in Interest Under § 42.8(b)(1): The real parties-in-interest are NEC
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`Display Solutions of America, Inc. and NEC Display Solutions, Ltd.
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`Related Matters Under § 42.8(b)(2): The exclusive licensee, Cascades Projec-
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`tion LLC (“Cascades”), has alleged infringement of the ’347 patent against Peti-
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`tioner, in Cascades Projection LLC v. NEC Display Solutions of Am., Inc., No.
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`2:15-CV-00273 (C.D. Cal. Jan. 13, 2015), ECF No. 1, and against other parties in
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`the same district: Cascades Projection LLC v. Epson Am., Inc., No. 2:15-cv-00258,
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`Cascades Projection LLC v. Barco, Inc., No. 2:15-cv-00271, Cascades Projection
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`LLC v. Sony Corp. of Am., Inc., 2:15-cv-00274, and Cascades Projection LLC v.
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`Christie Digital Sys. USA, Inc., 8:15-cv-00050. Petitioner further identifies the fol-
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`lowing administrative matters, including patents and applications claiming priority
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`to the ’347 patent: App’n. Nos. 12/749,493 and 13/369,005 (both abandoned). Peti-
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`tions for inter partes review of the ’347 patent were filed by Epson (IPR2015-
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`Inter Partes Review
`United States Patent No. 7,688,347
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`01206), Christie (IPR2015-01342) and Barco (IPR2015-01827). The aforemen-
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`tioned C.D. Cal. cases have been stayed pending resolution of the Epson and
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`Christie petitions for inter partes review. Cascades Projection LLC v. NEC Dis-
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`play Solutions of Am., Inc., No. 2:15-CV-00273 (C.D. Cal. July 9, 2015), ECF
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`No. 51. Finally, Petitioner has concurrently filed another IPR petition for the ‘347
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`patent challenging different claims based on different references.
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`Lead and Back-Up Counsel Under Rule 42.8(b)(3) and Service Information
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`under Rule 42.8(b)(4): Designated in the signature block.
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`III. PETITIONER HAS STANDING
`A. Grounds for Standing Under § 42.104(a)
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`Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the ’347 patent is
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`eligible for inter partes review and that Petitioner is not barred or estopped from
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`requesting same. Petitioner was served with a Complaint asserting infringement of
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`the ’347 patent on or after January 30, 2015, and neither Petitioner nor any other
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`real party-in-interest or privy of Petitioner was served with a complaint before that
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`date, or has initiated a civil action challenging validity of the ’347 patent.
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`B. Claims and Statutory Grounds Under §§ 42.22 and 42.104(b)
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`Petitioner requests inter partes review of claims 29, 30, 32, 47, 48, and 69
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`and asserts that these claims are unpatentable as follows under § 103: Ground 1:
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`4
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`Claims 29, 30, 32, and 47 are obvious under § 103 over De Vaan in view of the
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`Inter Partes Review
`United States Patent No. 7,688,347
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`knowledge of a POSITA; Grounds 2–3: Claims 29, 30, and 32 are obvious under
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`§ 103 over De Vaan in view of Hamada (Ground 2) or Dolgoff EP ’630 (Ground 3);
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`Ground 4: Claims 48 and 69 are obvious under § 103 over De Vaan in view of
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`Mitsutake; Ground 5: Claims 29, 30, 32, and 47 are obvious under § 103 over
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`Masumoto in view of the knowledge of a POSITA; Grounds 6–7: Claims 29, 30,
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`and 32 are obvious under § 103 over Masumoto in view of Hamada (Ground 6) or
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`Dolgoff EP ’630 (Ground 7); Ground 8: Claims 48 and 69 are obvious under
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`§ 103 over Masumoto in view of Mitsutake.
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`None of the art cited in these grounds was considered by the Office during
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`prosecution of the ’347 patent. Only Dolgoff EP ’630 is cited in another IPR peti-
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`tion (IPR2015-01206). Sections V.C.–V.H. below provide claim charts specifying
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`how the relied upon art renders obvious each of the Challenged Claims, as con-
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`firmed by the knowledge and understanding of a person of ordinary skill in the art
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`(“POSITA”), as evidenced in Ex. 1103, the Declaration of Prof. Jose Sasian.
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`IV. SUMMARY OF THE ’347 PATENT AND ITS FIELD
`A. Overview of the ’347 Patent
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`The ’347 patent states that projection systems “have brightness limitations
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`due to low efficiency at various points in the system.” Ex. 1101 32:25-29. One in-
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`efficiency is “spillover loss” that results when a circular beam illuminates a rectan-
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`5
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`gular aperture. Id. 34:52-54. Illuminating a rectangular image with a circular beam
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`Inter Partes Review
`United States Patent No. 7,688,347
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`“can result in the loss of up to approximately 40% of the light.” Id. 38:2-3.
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`Wasted light was more pronounced in projectors using “a light valve, such
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`as a liquid crystal display (LCD) device,” Ex. 1101 5:51-52, where “the light valve
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`must be illuminated with polarized light,” id. 42:52-53. According to the ’347 pa-
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`tent, systems of the day generated polarized light with sheet polarizers that ab-
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`sorbed all light except that light polarized in the desired direction – wasting more
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`than two-thirds of the light and heating the polarizer. Id. 42:53-57.
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`The ’347 patent proposes and claims previously known solutions to these
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`problems. For example, to address spillover loss the ‘347 patent describes “super-
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`impos[ing] several beams (usually nine) from different parts of the source on top of
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`one another . . . [This] folds all the light into the image without that loss.” Ex.
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`1101 37:55-57, 38:3-4. Ideally, “the different parts of a circular beam can be over-
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`laid onto a rectangular image,” which “allow[s] the light from a circular beam to
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`more evenly illuminate a rectangular aperture.” Id. 38:7-12. The ‘347 patent also
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`discloses focusing light onto the image-forming element (“IFE”) with an interme-
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`diate focusing lens(es). Id. 38:58-60.
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`Regarding light loss from the polarizer, the ’347 explains how prior art
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`MacNeille prisms – also referred to as “beam splitter cubes” – alleviate the ineffi-
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`ciency of sheet polarizers. Ex. 1101 42:65-66, 43:40-41. Beam splitters split inci-
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`6
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`dent light into P-polarized and S-polarized light and “[b]oth beams can actually be
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`Inter Partes Review
`United States Patent No. 7,688,347
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`used so that very little light is wasted.” Id. 43:8-18. The ’347 claims an allegedly
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`improved polarizer, dubbed a “Fresnel polarizer,” which “functions as a MacNeille
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`prism beam splitter” but “weighs much less than a prism, consumes less space, op-
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`erates over the entire visible spectrum, and costs less to produce.” Id. 44:2-8;
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`64:40-41. Each of these solutions was well-known prior to April 4, 1994, and their
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`use in combination would have been at minimum obvious to a POSITA.
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`B.
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`Summary of the ’347 Patent Prosecution
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`The ’347 patent issued from App. No. 10/115,279, filed April 3, 2002. At
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`the outset of prosecution, Applicant claimed priority to a Feb. 21, 1991 application,
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`but subsequently disclaimed priority to applications filed before the April 4, 1994
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`date of filling of App. No. 08/223,479 (“the ’479 application”). Ex. 1102 00008,
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`00421, 00432. After the priority disclaimer, the Examiner rejected pending claims
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`1, 3-12, 14-19, 22-34, 36-43, 45-47, 49-55, 61-62, 65, 67-72, and 77-79 under
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`§ 102(e) as being anticipated by Dolgoff et al. U.S. Pat. 5,602,679 (“the ’679 Dol-
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`goff patent”). Id. 00439. The ’679 Dolgoff patent also claimed priority to the ’479
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`application, and Applicant successfully argued that the ’679 patent’s § 102(e) date
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`was April 4, 1994 because the applications preceding the ’479 application in the
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`priority chain did not disclose the subject matter of the instant application’s pend-
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`ing claims. Id. 00468. Because it had the same earliest effective filing date, and be-
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`cause Applicant declared himself the sole inventor of the pertinent disclosure, Ap-
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`plicant successfully overcame the § 102(e) rejection . Id. 00467-68, 70, 72-73.
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`The Examiner did not consider any other Dolgoff patents or publications
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`predating the April 4, 1994 effective filing date. Other Dolgoff publications are
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`therefore prior art that has not been considered by the Patent Office. For example,
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`Dolgoff EP ’630, published October 21, 1992, is prior art to the ’347 patent under
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`at least pre-AIA § 102(a) and § 102(b). Ex. 1104 [43].
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`C. Overview of the Field of the Claimed Invention
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`Prior to April 4, 1994, the ’347 patent’s claimed solutions were well-known.
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`For example, U.S. Pat. 3,296,923, issued to Miles in 1967 describes a “system
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`of . . . employing a pair of lenticular lens plates which provides an illumination of
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`the projected object that is uniform in intensity and of uniform angular spread.” Ex.
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`1106 1:58-61. And before April 1994, De Vaan and Masumoto applied a series of
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`lens arrays in the context of electronic IFEs, such as LCDs. See Ex. 1105 8:44-45,
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`13:41-65; Ex. 1112 1:16-22, 3:24-28. De Vaan and Dolgoff EP ’630 recognized
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`the need to make use of both P- and S-polarized light – using a beam splitter cube
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`instead of sheet polarizers. See Ex. 1104 45:2-27; Ex. 1105 13:26-29. Moreover,
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`the need for more compact solutions was widely recognized. E.g., Ex. 1115 427
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`(“Use of this type of polarizer in a liquid crystal display requires a circuitous opti-
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`cal path with extra mirrors, prisms and lenses to recycle the rejected light without
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`expanding the beam”); see also Ex. 1108 ¶ 0013 (beam splitter “prevented [projec-
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`tor] from being made compact”) and Ex. 1109 2:29-31 (“Such systems, however,
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`are undesirably large for use in many common visual display systems . . . .”).
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`Prior to 1994, Weber, Mitsutake, and Dolgoff himself each disclosed a
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`smaller type of polarization beam splitter for use in LCD projectors. See, e.g., Ex.
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`1109 2:34-37 (“It would, therefore, be desirous . . . to devise a thin, retroreflecting
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`polarizer for a presentation system such as an overhead projector . . . .”); Ex. 1108
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`¶ 0015 (“present invention … provide[s] a plate-like polarizing element . . . and
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`according to which it is possible to achieve a more compact projector.”); Ex. 1104
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`46:32-34 (“Applicant has devised a ‘Fresnel MacNeill prism,’ which functions as a
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`MacNeill prism beam splitter . . . .”). And it was well known before 1994 to avoid
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`wasting light by focusing light into pixel holes using lens arrays placed before the
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`display panel, as described by Hamada (Ex. 1110; Ex. 1117), Dolgoff (Ex. 1104),
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`Otsuka (Ex. 1119), and Ariki (Ex. 1120). See Ex. 1103 ¶¶ 73-75.
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`V.
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`THERE IS A REASONABLE LIKELIHOOD PETITIONER WILL
`PREVAIL WITH RESPECT TO THE CHALLENGED CLAIMS
`
`Petitioner submits there is at least “a reasonable likelihood that the petition-
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`er[ ] would prevail with respect to at least 1 of the claims challenged in the peti-
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`tion.” § 314(a). Indeed, all of the Challenged Claims of the ’347 patent are obvious
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`under § 103 in light of the prior art, as explained below.
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`Inter Partes Review
`United States Patent No. 7,688,347
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`A. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
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`For this review, claim language is construed such that it is “given its broad-
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`est reasonable construction in light of the specification of the patent in which it ap-
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`pears.”3 37 C.F.R. § 42.100(b). For terms not specifically listed and construed be-
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`low, Petitioner interprets them for this purpose in accordance with their plain and
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`ordinary meaning under the required broadest reasonable interpretation (“BRI”)
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`consistent with the specification of the ’347 patent.4 Because the PTO’s standard
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`for claim construction is different than that used in litigation, see In re Am. Acad.
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`3 Cascades’ underlying litigation infringement contentions reflect its interpretation
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`of the Challenged Claims in at least the litigation context, and Cascades should not
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`be heard to argue that the BRI is any narrower. See Exs. 1013–14.
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`4 The claim term “a focused image” (claim 32) fails to inform with reasonable cer-
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`tainty those skilled in the art about the scope of the invention, Nautilus, Inc. v. Bi-
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`osig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014), and Petitioner reserves the
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`right to argue in litigation that this term is indefinite under 35 U.S.C. § 112, ¶ 2.
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`However, for purposes of applying the BRI, Petitioner submits that the Board may
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`interpret this term as “any focused image,” consistent with Cascades’ position in
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`litigation (where a narrower construction applies) accusing “an integrated beam
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`image” of meeting this claim element. See Ex. 1113 00029.
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`of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), MPEP § 2111, Peti-
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`Inter Partes Review
`United States Patent No. 7,688,347
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`tioner expressly reserves the right to argue in litigation constructions for any term
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`in the ’347 patent, as appropriate to that proceeding. Accordingly, Petitioner pro-
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`poses the following claim constructions for this proceeding under the BRI standard:
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`“means for focusing different segments of a light beam emanating from
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`said light source onto said element at proper angles such that light is focused on-
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`to the pixels of said element, comprising at least one input lens array located be-
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`tween said light source and said element” (Cl. 29): For review purposes, this
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`term should be construed in accordance with § 112, ¶ 6. See, e.g., Sage Prods., Inc.
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`v. Devon Indus., Inc., 126 F.3d 1420, 1427 (Fed. Cir. 1997).5
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`The claimed function is the BRI of “focusing different segments of a light
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`beam emanating from said light source onto said element at proper angles such that
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`light is focused onto the pixels of said element” in view of the specification and
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`prosecution history. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
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`Cir. 2015) (under BRI, “claims should always be read in light of the specification,
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`and “[t]he PTO should also consult the patent’s prosecution history” (internal cita-
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`tions and quotation omitted)). During prosecution, this function was amended by
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`Applicant from (a) focusing segments of light onto the element at proper angles to
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`5 In its litigation, Cascades agrees that § 112, ¶ 6 applies here. See Ex. 1114 00005.
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`focus light “into pixel holes of said element” to (b) focusing segments of light onto
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`United States Patent No. 7,688,347
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`the element at proper angles to focus light “onto the pixels of said element.” How-
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`ever, in a subsequent response, Applicant argued that the amended claim required
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`“focusing light at proper angles into pixel holes” to overcome a rejection – even
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`though “into pixel holes” was no longer part of the claim. Ex. 1102 00426. There-
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`fore, Petitioner reserves the right to argue during litigation that this function should
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`be limited to focusing light at proper angles such that light is focused into pixel
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`holes. Petitioner’s litigation argument is supported by: (i) the consistent discussion
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`in the specification of focusing light at proper angles such that light is focused “in-
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`to the pixel holes,” “through the pixel holes,” or “into the pixels” (see, e.g., Ex.
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`1101 38:65-39:2 (“This method provides even illumination of the IFE 6530 with
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`no spillover light, while still illuminating the IFE 6530 at the proper angles to be
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`focussed by input lens array(s) 6580 into pixel holes . . . .”); see also id. 36:54-59,
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`37:36-42, 50:35-38); (ii) the lack of explicit reference to “onto the pixels” in the
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`specification, and (iii) PO’s remarks during prosecution (see above).
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`Petitioner acknowledges, however, that the BRI may not be so limited. In
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`claim construction, the language of the claims is paramount, and Applicant amend-
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`ed the words of the claim to say “onto the pixels” instead of “into pixel holes.”
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`Moreover, the specification provides some context for construing “focused onto.”
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`For example, the specification describes focusing “onto the image-forming ele-
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`ment,” which is made up of pixels. Ex. 1101 34:44-48 (“[T]he output of the tunnel
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`can be focussed onto [sic] the image-forming element putting this more uniform il-
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`lumination at the image-forming element.”); see also id. 38:61-63; 39:22-24. Final-
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`ly, Applicant’s self-serving statement during prosecution is not binding on the
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`PTO’s claim construction in a post-issuance action. Tempo Lighting Inc. v. Tivoli
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`LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (“[T]he PTO is under no obligation to ac-
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`cept a claim construction proffered as a prosecution history disclaimer, which gen-
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`erally only binds the patent owner.”). Thus, under BRI, the Board may find the
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`claimed function, as expressly amended, requires only focusing segments of light
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`onto the element at proper angles such that light is focused onto the pixels making
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`up the element. Indeed, PO took such a view in the underlying litigation – indicat-
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`ing that the corresponding structure need only “focus different segments of a light
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`beam onto the LCDs” or “cause the focusing of light on the LCDs.”6
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`And, this claim element expressly comprises “at least one input lens array
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`located between said light source and said element.” Because a single input lens
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`array is not disclosed to alone perform this function, the specification must identify
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`6 In litigation, PO alleges that “The 2nd lens array focuses and steers different seg-
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`ments of a light beam onto the LCDs via intervening optical elements” and identi-
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`fies “the focusing of light on the LCDs” as infringing. Ex. 1013 00028.
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`clearly linked structure for performing the claimed function. Below, Petitioner
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`United States Patent No. 7,688,347
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`identifies structure in the prior art linked to the BRI identified above (applied in
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`Grounds 1 and 5). However, because the Board may ultimately limit the claimed
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`function as explained above, Petitioner also identifies structure consistent with the
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`construction it may pursue in litigation (addressed in Grounds 2–3; 6–7).
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`A. Disclosed Structure for BRI construction (Grounds 1 and 5)
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`The ’347 patent discloses multiple embodiments for performing the claimed
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`function. See, e.g., Ex. 1101 34:56-35:11, 35:29-43, 38:58-39:4, 39-5-21, 51:42-67,
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`53:1-6. For purposes of Grounds 1 and 5, Petitioner relies upon the Fig. 65 embod-
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`iment identifying an array of focusing lenses and “mirrors, prisms, etc.” as cor-
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`responding structure clearly linked to the claimed function.7 See Ex. 1103 ¶ 37.
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`Figure 65 (right) is “a preferred variation
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`of [the] arrangement” of Figure 62.” Ex. 1101
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`38:59-60. In this embodiment, each lens 6560
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`of an intermediate array of focusing lenses
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`“focuses an image of a portion (with the same
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`7 In its Infringement Contentions, PO accuses a “2nd lens array (in a fly-eye lens in-
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`tegrator), with built-in prism functionality” as meeting this claim element.
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`Ex. 1013 28.
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`shape as the IFE) of collimating lens 6570 onto the IFE 6530.” Ex. 1101 38:61-63.
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`Before reaching the IFE, the light focused by the array of focusing lenses 6560 is
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`reflected by or passes through “mirrors, prisms, etc.,” which “properly place[ ]”
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`light onto the IFE. See Ex. 1101 38:49-56. The “mirrors, prisms, etc.” are de-
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`scribed in relation to Figure 62 and are not marked in either Fig. Ex. 1101 38:58-61
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`(“FIG. 65 shows the addition of focusing lenses 6560.”). As noted by the ’347 pa-
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`tent, “[t]his method provides even illumination of the IFE 6530 with no spillover
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`light, while still illuminating the IFE 6530 at the proper angles.” See Ex. 1101
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`38:65-39:1. The array of focusing lenses is an input lens array as required by the
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`claim, as it is located between the light source 6510 and the IFE 6530.
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`B. Additional Structure for Litigation Construction (Grounds 2–3; 6–7)
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`If the BRI is construed to require light to be focused into pixel holes, Peti-
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`tioner alternatively identifies the additional structure disclosed by the ‘347 patent
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`to perform such a function. Exemplary structure for focusing light “into pixel holes”
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`is disclosed in the ’347 patent as “a lens to squeeze the light through the pixel hole,”
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`“prisms,” or “a fiber optic bundle.” See, e.g., Ex. 1101 50:11-16; 48:10-12; 36:24-
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`30; 53:54-57. For example, in Fig. 65 an additional input lens array 6580 focuses
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`light “into pixel holes.” Ex. 1101 39:1-2. Thus, should the Board take a narrower
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`view, Petitioner identifies the foregoing additional corresponding structure to per-
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`form this claim function, which was also well-known in the prior art.
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`“means for bringing light from different sections of the light beam ema-
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`nating from said light source to foci” (Cl. 30): This limitation should be con-
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`strued under 35 U.S.C. § 112, ¶ 6, “to cover the corresponding structure … de-
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`scribed in the specification and equivalents thereof” for performing the recited
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`function of “bringing light from different sections of the light beam emanating
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`from said light source to foci.” (35 U.S.C. § 112, ¶ 6.)8
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`The corresponding structure clearly linked to this function is an array of
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`lenses, such as the array of lenses marked 6270 in Fig. 62, and the corresponding
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`array of lenses 6570 in Fig. 65. See Ex. 1103 ¶¶ 39-43. Light from the source 6210
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`passes through lens 6270, “after which different parts of the collimated beam can
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`be brought to foci (6250).”9 See Ex. 1101 38:49-57; Ex. 1103 ¶ 42.
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`“means for enhancing brightness of an image by shaping a beam illumi-
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`nating said [electronic] image-forming element such that the shape of the beam
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`substantially matches the shape of said [electronic] image-forming element.”
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`(Cls. 47,10 69): This limitation should be construed under 35 U.S.C. § 112, ¶ 6, “to
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`8 In its litigation, Cascades agrees that § 112, ¶ 6 applies here. See Ex. 1114 00005.
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`9 Consistent with this BRI, Cascades in its litigation accuses “the 1st lens array in
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`the fly-eye lens integrator” of meeting this element. See, e.g., Ex. 1113 00028.
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`10 The bracketed text appears in Claim 47 only. Ex. 1101 64:32-39, 66:66-67:6.
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`cover the corresponding structure … described in the specification and equivalents
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`thereof” for performing the recited function of “enhancing brightness of an image
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`by shaping a beam illuminating said [