LG Electronics, INC. (Petitioner)
`v.
`Constellation Designs, LLC (Patent Owner)
`Petitioner Demonstratives
`Case No. IPR2023-00319
`U.S. Patent No. 10,693,700
`Before Hon. Brent M. Dougal, Michael T. Cygan, Scott Raevsky
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`LGE 1033
`LG Electronics, Inc. v. Constellation Designs, LLC
`IPR2023-00319
`
`1
`
`
`v.
`Constellation Designs, LLC (Patent Owner)
`Petitioner Demonstratives
`Case No. IPR2023-00319
`U.S. Patent No. 10,693,700
`Before Hon. Brent M. Dougal, Michael T. Cygan, Scott Raevsky
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`LGE 1033
`LG Electronics, Inc. v. Constellation Designs, LLC
`IPR2023-00319
`
`1
`
`
`
`Table of Contents
`
`Overview of the Proceedings
`
`Issue 1: PO’s Reliance on Orthogonalized PAMs is inadequate
`
`Issue 2: The ’777 patent lacks written description of the claimed multidimensional symbol
`constellation characteristics even if multidimensional optimization is used
`
`Issue 3: No comparison of PDC or SNR in the ’777 Patent
`
`Issue 4: Dr. Caire’s Declaration Testimony Should be Given Minimum Weight
`
`Issue 5: PO’s New Argument Allegations are Without Merit
`
`3
`
`13
`
`25
`
`32
`
`35
`
`39
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`2
`
`2
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`
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`Overview of the
`Proceedings
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`3
`
`
`
`Overview of the Proceedings
`
`• US Patent No. 10,693,700 (“the 700 Patent”)
`• 103 Prior Art Grounds
`• Combination of U.S. Patent No. 7,978,777 (“’777 patent”) and
`ATSC Recommended Practice: Guidelines for the Physical Layer
`Protocol, Document no. A/327:2018 (“ASTC327”)
`• Patent Owner did not raise arguments against grounds —such
`arguments are waived
`• Patent Owner only argued with respect to priority claim and written
`description support of the invention.
`• Patent Owner disclaimed claims 2-3, 12-13, and 22-23
`• Claims remaining: 5, 15, 25
`
`Ground
`1A
`
`Claims
`2-3, 12-13, and 22-23
`
`1B
`
`5, 15, 25
`
`Prior Art Basis
`§103 – ‘777 patent in view of
`ATSC322
`§103 – ‘777 patent in view of
`ATSC327
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`4
`
`
`
`Indivior UK Ltd. v. Reddy's Labs. S.A.
`
`Regarding claims 7 and 12, we also agree with the Board that there is no written description support for
`the range of "about 48.2 wt % to about 58.6 wt %" in the '571 application. This range also does not
`appear in the '571 application. Indivior argues that if one looks to Tables 1 and 5, plucks out the polymer
`components and creates a range from the percentage totals (while ignoring contradictory statements in
`paragraph 65), then one has obtained the range recited in claim 7. But that amounts to cobbling together
`numbers after the fact. Indivior failed to provide persuasive evidence demonstrating that a person of
`ordinary skill would have understood from reading the '571 application that it disclosed an invention
`with a range of 48.2 wt % to 58.6 wt %. A written description sufficient to satisfy the requirement of the
`law requires a statement of an invention, not an invitation to go on a hunting expedition to patch
`together after the fact a synthetic definition of an invention. "[A] patent is not a hunting license. It is not
`a reward for the search, but compensation for its successful conclusion." Brenner v. Manson, 383 U.S.
`519, 536, 86 S. Ct. 1033, 16 L. Ed. 2d 69, 1966 Dec. Comm'r Pat. 74 (1966). The Board thus had
`substantial evidence on which to base its conclusion that the '571 application did not provide written
`description support for claims 1, 7, and 12.
`
`Indivior UK Limited v. Dr. Reddy’s Laboratories S.A., 18 F.4th 1323, 1328-29 (2021), Pet. p. 3.
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`5
`
`5
`
`
`
`Lockwood v. Am. Airlines, Inc.
`
`It is the disclosures of the applications that count. Entitlement to a filing date does not extend to subject
`matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to
`that which is disclosed. While the meaning of terms, phrases, or diagrams in a disclosure is to be
`explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear
`in the specification. The question is not whether a claimed invention is an obvious variant of that which
`is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so
`in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed
`invention as of the filing date sought. See Martin v. Mayer, 823 F.2d 500, 504, 3 U.S.P.Q.2D (BNA)
`1333, 1337 (Fed. Cir. 1987) (stating that it is "not a question of whether one skilled in the art might be
`able to construct the patentee's device from the teachings of the disclosure . . . . Rather, it is a question
`whether the application necessarily discloses that particular device.") (quoting Jepson v. Coleman, 50
`C.C.P.A. 1051, 314 F.2d 533, 536, 136 U.S.P.Q. (BNA) 647, 649-50 (CCPA 1963)).
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 564, 1571-72 (Fed. Cir. 1997), Pet. p. 3.
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`6
`
`6
`
`
`
`Claim 1
`
`A communication system, comprising:
`a receiver capable of receiving signals via a communication channel having a channel signal-to-
`noise ratio (SNR), wherein the receiver comprises:
`a demodulator capable of demodulating a received signal into a demodulated signal;
`a demapper, coupled to the demodulator, capable of determining likelihoods using the
`demodulated signal and a multidimensional symbol constellation selected from a plurality of
`multidimensional symbol constellations; and
`a decoder, coupled to the demapper, capable of using the likelihoods determined by the demapper
`to provide a sequence of received bits based upon a low density parity check (LDPC) code;
`wherein the plurality of multidimensional symbol constellations comprises a plurality of different
`non-uniform multidimensional symbol constellations having the same number of constellation points,
`where the constellation points are non-uniformly spaced in each degree of freedom available to the
`multidimensional symbol constellations;
`wherein the receiver is capable of selecting an LDPC code rate and multidimensional symbol
`constellation pair from a plurality of predetermined LDPC code rate and multidimensional symbol
`constellation pairs, where each of the plurality of different nonuniform multidimensional symbol
`constellations is only included in one of the plurality of predetermined LDPC code rate and
`multidimensional symbol constellation pairs.
`
`LGE1001, claim 1; Pet. pp. 39-51.
`
`7
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`7
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`
`
`Claim 5
`
`The communication system of claim 1, wherein each of the plurality of different non-
`uniform multidimensional symbol constellations is capable of providing a greater
`parallel decoding capacity at a specific SNR than the other symbol constellations in
`the plurality of multidimensional symbol constellations at the same SNR.
`
`LGE1001, claim 5; Pet. pp. 75-79.
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`8
`
`8
`
`
`
`Brief Overview of the ’700/’777 Patent
`
`Communication Systems
`
`Petition (Pet.), p. 19.
`
`LGE1015, FIG. 2-3; Pet., p. 22.
`
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`LGE1015, FIG. 11a; Pet., p. 27.
`
`9
`
`9
`
`
`
`Brief Overview of the ’700/’777 Patent
`
`Pet., pp. 19-20.
`
`LGE1015, FIG. 8a; Pet., p. 26.
`
`Pet., p. 25.
`
`10
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`
`10
`
`
`
`The ’777 Patent Describes 1D-Constellations and
`Orthogonalized 2D constellations
`
`POR, pp 25-26; POPR, p. 23; PR, p. 2-3, 19-20; LGE1001 3:25-34; LGE1015 3:9-19.
`
`POR, pp 25-27; Pet. Rep., pp. 2-3, 19-20.
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`11
`
`11
`
`
`
`The Board previously determined that FIGS. 11B, 13B,
`15B, and 17B provide written description support
`
`“[one-dimensional PAM]
`constellations”
`
`Institution Decision, p. 15.
`
`12
`
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`
`12
`
`
`
`The ’777 Disclosure Fails to Support Claims 5, 15, and 25
`
`The ’777 Disclosure provides capacity characteristics on a
`per-dimension basis, i.e., one dimension basis
`
`LGE1029 (2nd Hochwald
`Dec.), ¶6; Pet. Rep., pp.
`2-3. See also LGE1029
`(2nd Hochwald Dec.), ¶9;
`Petitioner Sur-Reply (Pet.
`SR.), p. 3.
`
`LGE1029 (2nd Hochwald
`Dec.), ¶9.
`
`13
`
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`
`13
`
`
`
`The ’777 patent repeatedly describes capacity
`characteristics on a per dimension basis
`
`LGE1015, 7:26-33, Pet. p. 66.
`
`LGE1015, 2:56-63, Pet. pp.14, 23.
`
`LGE1015, 9:52-10:3, Pet. pp. 34, 71.
`
`LGE1015, 12:11-37, Pet. SR. p. 3.
`
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`
`LGE1015, 12:11-37, Pet. SR. p. 3.
`14
`
`14
`
`
`
`1D Characteristics are not the Same as 2D Characteristics
`
`Both Experts Agree that the Capacity Characteristics of 2D
`Constellations (Optimized in 2D) are Different than the Capacity
`Characteristics of 2D Constellations (Optimized in 1D)
`
`LGE1029 (2nd Hochwald Dec.), ¶12.
`
`Pet., p.43 (citing to LGE1015, 4:29-31).
`
`Pet. SR., pp. 6-7.
`
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`
`15
`
`15
`
`
`
`FIG. 21 is directed to orthogonalized 1D constellations that
`yield a 2D constellation
`
`LGE1015, 12:11-37, Pet. SR. p. 3.
`
`LGE1015, FIG. 21, Pet. p. 43.
`
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`
`16
`
`16
`
`
`
`Orthogonalized Constellations may also have Different Characteristics
`than their 1D Counterparts”
`
`Issue 5
`
`LGE1029 (2nd Hochwald Dec.), ¶13; Pet.
`Rep., pp. 5-11.
`
`LGE1029 (2nd Hochwald Dec.), ¶14;
`Pet. Rep., pp. 5-11.
`
`LGE1029 (2nd Hochwald Dec.), ¶¶13-14;
`Pet. Rep., pp. 5-11.
`
`17
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`17
`
`
`
`PO relies on orthogonalized constellations for support
`of claims 5, 15, and 25
`
`POR, pp 25-26; POPR, p. 23; PR, p. 2-3, 19-20; LGE1001 3:25-34; LGE1015 3:9-19.
`
`POR, pp 25-27;
`Pet. Rep., pp. 2-3,
`19-20.
`
`• Fuentes demonstrates this method:
`
`POSR, p. 22; LGE1030 FIG. 1.2.
`
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`
`18
`
`18
`
`
`
`PO relies on PAM (1D) constellations for support of
`multidimensional symbol constellations
`
`POR, p. 43.
`
`LGE1001, FIG. 11b; LGE1015, FIG. 11b; POR, p. 43.
`
`LGE1001, FIG. 13b; LGE1015, FIG. 13b; POR, p. 43.
`
`LGE1001, FIG. 15b; LGE1015, FIG. 15b; POR, p. 43.
`
`LGE1001, FIG. 17b; LGE1015, FIG. 17b; POR, p. 43.
`
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`
`19
`
`
`
`PO’s alleged support incorrectly relies on PAMs
`
`LGE1001, FIG. 11b, 13b, 15b, 17b; LGE1015, FIG. 11b, 13b, 15b, 17b; POR, p. 43.
`
`20
`
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`
`20
`
`
`
`Patent owner assumes without evidence that QAMs will
`have the same capacity characteristics as PAMs
`
`Patent Owner erroneously assumes
`that the PAM and QAM
`constellations are interchangeable.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Pet. Rep., p.18 (citing POR, pp. 44-45.)
`
`21
`
`
`
`Patent owner omits essential claim terms in its analysis
`
`Patent Owner specifically omits
`the word “multidimensional” in
`its analysis of the claims.
`
`Pet. Rep., p. 18 (citing POR, p. 40).
`
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`
`22
`
`
`
`’777 Patent has no disclosure of multidimensional capacities
`
`EX1029, ¶[39]; Pet. Rep., p.19.
`
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`
`23
`
`23
`
`
`
`Issue 2
`
`The ’777 patent lacks written description of the
`claimed multidimensional symbol constellation
`characteristics even if multidimensional
`optimization is used
`
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`
`24
`
`24
`
`
`
`The ’777 Patent Provides Limited Description of
`Optimization over Multiple Dimensions
`
`LGE1001, 13:7-10; LGE1015, 12:33-37; Petitioner Response (Pet. Rep.), pp. 2-3, 19-20.
`
`Pet. Rep., pp. 3, 19-20.
`
`Pet. Sur-Reply, p. 5 (citing to LGE1015, 12:38-48); Pet. Rep., p. 3.
`
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`
`25
`
`25
`
`
`
`PO’s Expert’s Testimony Confirms that the ’777 Patent lacks
`sufficient details
`
`Pet. SR., pp. 5-6.
`
`LGE1032, 143:8-14.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`26
`
`26
`
`
`
`The ’700 Patent explains that increasing the dimensionality modifies the
`constellation characteristics
`
`LGE1029 (2nd Hochwald Dec.)
`(citing LGE1001, 1:45-52, ¶29;
`Pet. Rep., pp. 13-14.
`
`LGE1001, 1:45-52;
`Pet. 19; Pet. Rep., pp.
`13-14.
`
`LGE1029 (2nd Hochwald Dec.), ¶30;
`Pet. Rep., pp. 13-14.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`27
`
`27
`
`
`
`Dr. Caire admits that increasing dimensionality can change a
`constellation’s characteristics
`
`Pet. SR., pp. 6-7.
`
`LGE1032 (Dr. Caire Deposition), 122:7-25;
`Pet. SR., pp. 6-7.
`
`LGE1032 (Dr. Caire Deposition), 122:7-25; Pet. SR., pp. 6-7.
`
`28
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`28
`
`
`
`Fuentes demonstrates the difference between the ’777
`Patent specification and the claimed invention
`
`’777 Patent Spec.
`
`Claim 5
`
`Pet. SR., pp. 2-4 (citing to LGE1030, FIG. 1.2).
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`29
`
`29
`
`
`
`Fuentes demonstrates that optimizations in 1D and multidimensions can
`have different results.
`
`Pet. SR., pp. 6-7.
`
`LGE1028 ¶9; Pet. Rep., pp. 6-7.
`
`30
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`30
`
`
`
`Issue 3
`
`There is no comparison of parallel decoding
`capacity or SNR between different non-uniform
`multidimensional symbol constellations
`
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`
`31
`
`
`
`Both Experts agree that claim 5 involves comparing operations
`
`Pet. SR., pp. 1-2.
`
`LGE1015, 2:56-63, Pet. pp.14, 23.
`
`LGE1003, ¶73; Pet., pp. 13-14; Pet. SR., pp. 1-2.
`
`32
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`32
`
`
`
`Both Experts agree that claim 5 involves comparing operations
`
`LGE1032 (Dr. Caire Deposition), 163:6-165:21; Pet.
`SR., pp. 1-2.
`
`Pet. SR., pp. 1-2.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`33
`
`33
`
`
`
`Issue 4
`
`Dr. Caire’s declaration testimony should be
`given minimum weight
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`34
`
`34
`
`
`
`Dr. Caire did not review the ’777 Patent
`
`LGE1032 (Dr. Caire
`Deposition) 13:2-8; Pet.
`SR., pp. 9-10.
`
`Yet, EX1015 is repeatedly
`cited in his declaration
`unbeknownst to him.
`
`EX2025 (Dr. Caire 2nd declaration), ¶9.
`
`35
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`35
`
`
`
`Dr. Caire did not understand the claim being challenged
`
`Pet. SR., pp. 9-10.
`
`LGE1032 (Dr. Caire Deposition)
`153:14-156:9; Pet. SR., pp. 9-
`10.
`
`LGE1032 (Dr. Caire Deposition)
`153:14-156:9; Pet. SR., pp. 9-
`10.
`
`LGE1032 (Dr. Caire Deposition)
`153:14-156:9; Pet. SR., pp. 9-
`10.
`
`LGE1032 (Dr. Caire Deposition)
`168:1-25; Pet. SR., pp. 9-10.
`
`LGE1032 (Dr. Caire Deposition)
`168:1-25; Pet. SR., pp. 9-10.
`
`36
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`36
`
`
`
`Dr. Caire did not apply the proper POSITA standard
`
`Institution Decision, p. 9.
`
`Pet. Sur-Rep., 10; LGE1032, 22:20-23:19
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`37
`
`37
`
`
`
`Issue 5
`
`Patent Owner’s “new argument” allegations are
`without merit
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`38
`
`38
`
`
`
`Petitioner responds to PO’s assertions
`Issue 5
`
`Pet. SR., p. 14.
`
`Pet. SR., p. 16.
`
`Pet. SR., p. 15.
`
`Pet. SR., pp. 2-4.
`
`Pet. SR., p. 17.
`
`39
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`39
`
`
`
`PO’s assertion of “new arguments” lacks merit
`Issue 5
`
`Pet. SR., pp. 7-8.
`
`Pet. SR., pp. 7-8.
`
`40
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`40
`
`
`
`Appendix
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`41
`
`41
`
`
`
`The ’777 Disclosure - Orthogonalization
`
`“Orthogonalizing [a] PAM . . . to form the QAM”
`
`POR, pp25-26;POPR, p. 23; PR, p. 2-3, 19-20; LGE1001 3:25-34; LGE1015 3:9-19.
`
`POR, pp. 25-27; Pet. Rep., pp. 2-3, 19-20.
`
`POR, pp 25-27; Pet.
`Rep., pp. 2-3, 19-20.
`
`42
`
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`
`42
`
`
`
`The ’777 Patent’s Optimization
`Multidimensional optimization also lacks sufficient description in the
`’777 Patent
`
`Pet. Rep., pp. 2-3.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`POSR, p. 15.
`
`43
`
`43
`
`
`
`“Per-dimension basis” v. overall characteristics
`
`LGE1029 (2nd Hochwald Dec.), ¶¶9-10; LGE1030, FIG. 3.16 Pet. Rep., pp. 6-7.
`
`44
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`44
`
`
`
`Patent owner attempts to link optimization of 1D and 2D
`constellations
`
`LGE1029 (2nd Hochwald Dec.), ¶¶26-27;
`Pet. Rep. pp. 5-11.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`45
`
`45
`
`
`
`The ’777 Patent is silent regarding Comparisons
`
`Pet. Rep., pp. 20-21.
`
`LGE1001, 3:25-34; LGE1015, 3:9-19;
`Pet. pp. 35, 45, 55-58.
`
`46
`
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`
`46
`
`
`
`Purdue Pharma
`
`As Ruschig makes clear, one cannot disclose a forest in the original application, and then later pick a
`tree out of the forest and say here is my invention. In order to satisfy the written description
`requirement, the blaze marks directing the skilled artisan to that tree must be in the originally filed
`disclosure. See id. at 994-95, 54 C.C.P.A. 1551, 379 F.2d 990, 154 USPQ at 122; Fujikawa, 93 F.3d at
`1570-71, 39 USPQ2d at 1905; Martin v. Mayer, 823 F.2d 500, 505, 3 USPQ2d 1333, 1337 (Fed. Cir.
`1987) (It is "not a question of whether one skilled in the art might be able to construct the patentee's
`device from the teachings of the disclosure. . . . Rather, it is a question whether the application
`necessarily discloses that particular device.") (quoting Jepson v. Coleman, 50 C.C.P.A. 1051, 314 F.2d
`533, 536, 136 USPQ 647, 649-50 (1963)). Under that standard, we conclude that the district court did
`not commit clear error in finding that nothing in the '688 application "necessarily" . . . described the
`later claimed subject matter of the '360 patent. In re Daniels, 144 F.3d 1452, 1456, 46 USPQ2d 1788,
`1790 (Fed. Cir. 1998).
`
`Purdue Pharma, 230 F.3d at 1326-1327, Pet. pp. 3, 10-11.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`47
`
`47
`
`
`
`Indivior UK Ltd. v. Reddy's Labs. S.A.
`
`What is needed to satisfy written description in patent law is highly fact-dependent, but the contours are
`well-known. Under 35 U.S.C. § 112, "[t]he specification shall contain a written description of the
`invention." The test for adequate written description "is whether the disclosure of the application relied
`upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed
`subject matter as of the filing date." Ariad Pharms., 598 F.3d at 1351. We have said that it is not
`necessary that the limitations of a claim be set forth in haec verba, id. at 1352, or, presumably, in the
`case where numbers, not words, are at issue, in haec numera. But the specification must indicate with
`some clarity what the claim recites. In the case of a claimed range, a skilled artisan must be able to
`reasonably discern a disclosure of that range. No range of "about 40 wt % to about 60 wt %" appears in
`the '571 application. Moreover, various other indications of the polymeric content of the film are present
`in the '571 application, rendering it even less clear that an invention of "about 40 wt % to about 60 wt
`%" was contemplated as an aspect of the invention.
`
`Indivior UK Limited v. Dr. Reddy’s Laboratories S.A., 18 F.4th 1323, 1328-29 (2021), Pet. pp. 3.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`48
`
`48
`
`
`
`Lizardtech, Inc. v. Earth Res. Mapping Inc
`
`That is, a recitation of how to make and use the invention across the full breadth of the claim is
`ordinarily sufficient to demonstrate that the inventor possesses the full scope of the invention, and vice
`versa. This case is no exception. Whether the flaw in the specification is regarded as a failure to
`demonstrate that the patentee possessed the full scope of the invention recited in claim 21 or a failure to
`enable the full breadth of that claim, the specification provides inadequate support for the claim
`under section 112, paragraph one.
`
`Lizardtech, Inc. v. Earth Res. Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Pet. pp. 3.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`49
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`49
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`
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`Lizardtech, Inc. v. Earth Res. Mapping Inc
`
`Claim 21 is directed to creating a seamless array of DWT coefficients generically. The specification,
`however, is directed at describing a particular method for creating a seamless DWT, as opposed to using
`the disfavored, nonseamless prior art, and it teaches only that method of creating a seamless
`array. While the embodiment in LizardTech's specification covers only one way of creating a seamless
`DWT, claim 21 is not invalid simply for that reason. A claim will not be invalidated on section
`112 grounds simply because the embodiments of the specification do not contain examples explicitly
`covering the full scope of the claim language. See Union Oil Co. v. Atl. Richfield Co., 208 F.3d 989, 997
`(Fed. Cir. 2000). That is because the patent specification is written for a person of skill in the art, and
`such a person comes to the patent with the knowledge of what has come before. In re GPAC Inc., 57
`F.3d 1573, 1579 (Fed. Cir. 1995). Placed in that context, it is unnecessary to spell out every detail of the
`invention in the specification; only enough must be included to convince a person of skill in the art that
`the inventor possessed the invention and to enable such a person to make and use the invention without
`undue experimentation. In this case, however, LizardTech has failed to meet either requirement. After
`reading the patent, a person of skill in the art would not understand how to make a seamless DWT
`generically and would not understand LizardTech to have invented a method for making a seamless
`DWT, except by "maintaining updating sums of DWT coefficients."
`
`Lizardtech, Inc. v. Earth Res. Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Pet. pp. 3.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`50
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`Lockwood v. Am. Airlines, Inc.
`
`One shows that one is "in possession" of the invention by describing the invention, with all its claimed
`limitations, not that which makes it obvious. Id. ("The applicant must also convey to those skilled in the
`art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for
`purposes of the 'written description' inquiry, whatever is now claimed.") (emphasis in original). One
`does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set
`forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v.
`Frank, 52 F.3d 1035, 1038, 34 U.S.P.Q.2D (BNA) 1467, 1470 (Fed. Cir. 1995) ("The prior application
`need not describe the claimed subject matter in exactly the same terms as used in the claims . . . ."), the
`specification must contain an equivalent description of the claimed subject matter. A description which
`renders obvious the invention for which an earlier filing date is sought is not sufficient.
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 564, 1571-72 (Fed. Cir. 1997), Pet. pp. 3.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`51
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`51
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`
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`Lockwood v. Am. Airlines, Inc.
`
`One shows that one is "in possession" of the invention by describing the invention, with all its claimed
`limitations, not that which makes it obvious. Id. ("The applicant must also convey to those skilled in the
`art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for
`purposes of the 'written description' inquiry, whatever is now claimed.") (emphasis in original). One
`does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set
`forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v.
`Frank, 52 F.3d 1035, 1038, 34 U.S.P.Q.2D (BNA) 1467, 1470 (Fed. Cir. 1995) ("The prior application
`need not describe the claimed subject matter in exactly the same terms as used in the claims . . . ."), the
`specification must contain an equivalent description of the claimed subject matter. A description which
`renders obvious the invention for which an earlier filing date is sought is not sufficient.
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 564, 1571-72 (Fed. Cir. 1997), Pet. pp. 3.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`52
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`Lockwood v. Am. Airlines, Inc.
`
`Lockwood further argues that his expert's declaration was sufficient to raise a genuine issue of material
`fact regarding what the intervening applications disclosed to one skilled in the art. However,
`as American argues, one intervening application failed to disclose a computer system connected to
`multiple vendors and another, while disclosing a central computer with a video disk player, failed to
`disclose individual merchandising apparatus that contained video disk players or other equivalent
`storage means. Lockwood's expert averred that the disclosed terminal in the former application "can be
`connected" to multiple vendors and that, although the latter application only "discusses the use of a
`television set and a keypad at a consumer's home," it would have been apparent to one skilled in the art
`that "Lockwood also envisioned the use of a terminal" containing a video disk player. That does not
`solve Lockwood's problem. Lockwood claimed a distinct invention from that disclosed in the
`specification. It is not sufficient for purposes of the written description requirement of § 112 that the
`disclosure, when combined with the knowledge in the art, would lead one to speculate as to
`modifications that the inventor might have envisioned, but failed to disclose. Each application in the
`chain must describe the claimed features. It is undisputed that one of the intervening applications
`does not describe an individual terminal containing a video disk player. Therefore, the declaration by
`Lockwood's expert does not raise a genuine issue of material fact. The district court correctly held that
`the '355 patent was invalid as anticipated by the '359 patent.
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 564, 1571-72 (Fed. Cir. 1997), Pet. pp. 3.
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`53
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