Paper Entered: March 10, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 Paper Entered: March 10, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD XILINX, INC. Petitioner v. INTELLECTUAL VENTURES I LLC Patent Owner Case IPR Before SALLY C. MEDLEY, KARL D. EASTHOM, and JUSTIN T. ARBES, Administrative Patent Judges. ARBES, Administrative Patent Judge. FINAL WRITTEN DECISION 35 U.S.C. 318(a) and 37 C.F.R

2 I. BACKGROUND Petitioner Xilinx, Inc. ( Xilinx ) filed a Petition (Paper 2) ( Pet. ) seeking inter partes review of claims 1-3 of U.S. Patent No. 5,632,545 ( the 545 patent ) pursuant to 35 U.S.C On March 12, 2013, the Board granted the Petition and instituted an inter partes review of all claims on two grounds of unpatentability (Paper 11) ( Dec. on Inst. ). Subsequent to institution, Patent Owner Intellectual Ventures I LLC ( IV ) filed a Patent Owner Response (Paper 22) ( PO Resp. ), and Xilinx filed a Reply (Paper 27) ( Pet. Reply ). Along with its Patent Owner Response, IV filed a Motion to Amend (Paper 23) ( Mot. to Amend ), proposing substitute claim 4 if the Board determines claim 2 to be unpatentable, and substitute claim 5 if the Board determines claim 3 to be unpatentable. Xilinx filed an Opposition to the Motion to Amend (Paper 26) ( Pet. Opp. ), and IV filed a Reply (Paper 33) ( PO Reply ). IV also filed a Motion to Exclude (Paper 35) ( Mot. to Exclude ) certain testimony of Xilinx s declarant, A. Bruce Buckman, Ph.D. Xilinx filed an Opposition to the Motion to Exclude (Paper 42) ( Exclude Opp. ), and IV filed a Reply (Paper 43) ( Exclude Reply ). An oral hearing was held on December 9, 2013, and a transcript of the hearing is included in the record (Paper 48) ( Tr. ). The Board has jurisdiction under 35 U.S.C. 6(c). This final written decision is issued pursuant to 35 U.S.C. 318(a) and 37 C.F.R For the reasons that follow, we determine that Xilinx has shown by a preponderance of the evidence that claims 1-3 of the 545 patent are unpatentable, and we deny IV s Motion to Amend. 2

3 A. The 545 Patent The 545 patent relates to a color video projector system having separate light sources for producing separate beams of light which are passed each first through color filters to provide separate color beams before being processed by video-controlled light shutter matrices and then combined into a single beam projectable to provide a full-color video display with superimposed color spots. Ex. 1001, Abstract. The patent describes how prior art video projector systems, such as color Liquid Crystal Display (LCD) projectors, were expensive and had difficulty providing adequate light levels. Id. at col. 1, ll Later systems based on active matrix color LCD s (AM-LCD s) were less expensive, but still had limited brightness and resolution. Id. at col. 1, ll The 545 patent addresses these problems by pre-coloring the input light and using a triple monochrome LCD structure instead of a color AM-LCD. Id. at col. 2, ll The resulting arrangement, according to the 545 patent, provides better light output because less light is absorbed than in a color AM-LCD, and results in better resolution due to the superposition of color spots on the display. Id. It also is less expensive because monochrome LCDs are less expensive than color LCDs, and precise alignment of the components is less critical than with a color AM-LCD. Id. 3

4 Figure 1, the sole figure of the 545 patent, is reproduced below. Figure 1 depicts a video projector system comprising, inter alia, (A) lamps , which emit light; (B) condenser lens system 115, which focuses the three light beams emitted by the lamps; (C) red/green/blue filters , through which the respective light beams pass; (D) monochrome LCD arrays in LCD unit 120; (E) controller 122, which controls the arrays; and (F) mirror and prism system 111, which combines the separate beams into a single beam for projection onto surface 101. Id. at col. 2, l. 50-col. 3, l

5 B. Exemplary Claim Claim 1 of the 545 patent is the only independent claim: 1. A video projector system comprising: individual light sources, one each for each color to be projected, adapted to provide each a separate light beam; a lens system in the path of the separate light beams, adapted for focusing the beams; a number of individual color filters equal to the number of beams, in the colors to be projected, and placed one each in each beam path; a light-shutter matrix system comprising a number of equivalent switching matrices equal to the number of beams and placed one each in the beam paths; a video controller adapted for controlling the light-shutter matrices; and an optical combination system adapted for combining the several beams into a single composite beam for projection on a surface to provide a video display; wherein each beam passes through a color filter before being processed by a light-switching matrix. C. Prior Art The pending grounds of unpatentability in this inter partes review are based on the following prior art: 1. U.S. Patent No. 5,108,172, issued Apr. 28, 1992 ( Flasck ) (Ex. 1002); 2. U.S. Patent No. 5,264,951, issued Nov. 23, 1993 ( Takanashi ) (Ex. 1003); and 3. U.S. Patent No. 5,287,131, issued Feb. 15, 1994 ( Lee ) (Ex. 1004). 5

6 D. Pending Grounds of Unpatentability This inter partes review involves the following grounds of unpatentability: Reference(s) Basis Claims Flasck 35 U.S.C. 103(a) 1-3 Takanashi and Lee 35 U.S.C. 103(a) 1-3 II. ANALYSIS A. Claim Interpretation Consistent with the statute and legislative history of the Leahy-Smith America Invents Act, Pub. L. No , 125 Stat. 284 (2011) ( AIA ), the Board interprets claims using the broadest reasonable construction in light of the specification of the patent in which [they] appear[]. 37 C.F.R (b); see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There is a heavy presumption that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However, a claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history. Id. Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re 6

7 Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ( limitations are not to be read into the claims from the specification ). 1. Video Projector System and Video The preamble of claim 1 recites a video projector system. We did not interpret the preamble in the Decision on Institution. IV argues in its Patent Owner Response that video projector system should be interpreted to mean a system enabling the projection of video, meaning the projection of moving images that change fast enough to be undetectable by the human eye, citing an encyclopedia description of analog video and testimony from Dr. Buckman as support. PO Resp. 7-8 (citing Ex at 166, Ex at 12:17-20). Xilinx does not disagree with IV s proposed interpretation. See Tr. 11: In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. Catalina Mktg. Int l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citation omitted). Conversely, a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention. Id. (citation omitted). IV proposes an interpretation for the preamble in claim 1, but does not explain why the language is limiting. We are not persuaded that the preamble recites essential structure for the claim. Rather, the body of the claim recites six components that define a structurally complete system. Further, although the body of the claim refers to projection on a surface to provide a video display, it does not refer 7

8 specifically to the video projector language of the preamble. Reading the claim as a whole, we conclude that the preamble is not limiting. The body of claim 1, however, recites the term video in two contexts: (1) a video controller, and (2) an optical combination system adapted for combining the several beams into a single composite beam for projection on a surface to provide a video display. Thus, regardless of what is recited in the preamble, the system must be capable of providing a video display on a projection surface. In the context of claim 1, we agree with IV that the term video should be given its ordinary and customary meaning. See Ex at 166; Ex at 12: Applying the broadest reasonable interpretation of the claims in light of the Specification, we interpret video to mean a sequence of images that change fast enough to be undetectable by the human eye. 2. Light-Shutter Matrix System In the Decision on Institution, based on the arguments presented by Xilinx in its Petition and by IV in its Preliminary Response, we interpreted the term light-shutter matrix system in claim 1 to mean a set of matrices, such as monochrome LCD arrays, where each matrix comprises a rectangular arrangement of elements capable of limiting the passage of light. Dec. on Inst Xilinx agrees with this interpretation. Pet. Reply 3-4. IV argues that the interpretation is incorrect, and that light-shutter matrix system instead should be interpreted to mean a two-dimensional array of elements that selectively admit and block light. PO Resp. 13. As explained below, we are persuaded that our original interpretation should be modified slightly. 8

9 We begin with the language of the claims. Claim 1 recites a light-shutter matrix system comprising a number of equivalent switching matrices equal to the number of beams and placed one each in the beam paths. Thus, the light-shutter matrix system is made up of equivalent switching matrices. The claims also refer to these matrices as light-switching matri[ces] (claim 1) and light-shutter matrices (claim 2). Although the language is slightly different, the terms appear to be used interchangeably in the claims and Specification of the 545 patent, and we conclude that they are referring to the same thing. See, e.g., Ex. 1001, col. 1, ll Dependent claim 2 further recites that the light-shutter matrices are monochrome LCD arrays. Therefore, based on the surrounding language of the claims, we know that the light-shutter matrix system is comprised of multiple equivalent matrices, and that one example of such a matrix is a monochrome LCD array. The Specification of the 545 patent unfortunately does not shed much light onto the meaning of light-shutter matrix system, as it largely contains the same language as the claims. In the exemplary embodiment depicted in Figure 1, light passes through red/green/blue filters and then through three monochrome LCD arrays 117, 118, and 119 of LCD unit 120. Id. at col. 2, l. 65-col. 3, l. 7. The three light beams are combined into a single beam and projected onto a surface. Id. at col. 3, ll Video controller 122 receives a video signal and controls monochrome LCD arrays Id. at col. 3, ll The Specification does not describe in detail how the LCD arrays are operated or how they are controlled. It also makes clear that the invention is not limited to the use of LCD arrays. 9

10 See id. at col. 4, ll. 2-3 ( there are many ways to implement light shutter devices besides LCD s ). The parties do not argue that light-shutter matrix system as a whole is a term of art. As we did in the Decision on Institution, we look for guidance to how a skilled artisan would have understood the individual terms light-shutter and matrix. See Dec. on Inst Shutter is defined as a mechanical device that limits the passage of light; esp[ecially]: a camera attachment that exposes the film or plate by opening and closing an aperture. MERRIAM-WEBSTER S COLLEGIATE DICTIONARY 1084 (10th ed. 1993) (Ex. 3001). An LCD is an example of something that limits the passage of light. See S.W. AMOS ET AL., NEWNES DICTIONARY OF ELECTRONICS 186 (4th ed. 1999) (Ex. 3002) ( One way in which the applied voltage controls the light transmission of the device is by varying the light scattering in the liquid which is specially chosen because of its long-molecule construction. ). Matrix is defined as something resembling a mathematical matrix esp[ecially] in rectangular arrangement of elements into rows and columns. Ex at 716. IV does not dispute that shutter and matrix should be given their ordinary meanings, but argues that the dictionary definitions referenced above are not the correct ones to use. PO Resp. 9-10, As to the term shutter, IV argues that the Board was inconsistent in disregarding the definition IV submitted with its preliminary response a mechanical device of a camera that opens and closes to control the duration of exposure of a plate or film to light (Ex at 1264) based on its reference to a camera, when the dictionary definition cited by the Board (Ex at 1084) also applies to cameras. PO Resp. 9-10; see Dec. on Inst There is an 10

11 important difference between IV s definition and the definition cited above, however. IV s dictionary defines a shutter as part of a camera. Ex at The definition cited above, by contrast, provides a general meaning and then, by using the word esp[ecially], gives an example pertaining to a camera. Thus, the general definition cited above is the appropriate one to use given the technology of the 545 patent, which does not involve cameras. Moreover, although the above dictionary definition is broader than IV s dictionary definition, we must determine the broadest reasonable interpretation in light of the Specification, and we are not persuaded by IV s arguments that the definition cited above is unreasonable. As to the term matrix, IV provides the following dictionary definitions: [a] rectangular array of numeric or algebraic quantities subject to mathematical operations, and [s]omething resembling such an array, as in the regular formation of elements into columns and rows. Id. at 838. IV contends that, based on this definition, a matrix is merely a two-dimensional array (i.e., rows and columns), and need not be in a rectangular form specifically. PO Resp We agree that IV s dictionary definition of matrix is the appropriate one under the circumstances, particularly because the dictionary definition cited above recites a rectangular arrangement as an example, not a requirement. See Ex at 716. Thus, we are persuaded to modify our interpretation to eliminate any requirement of a rectangular shape. Finally, IV argues that the Board s interpretation in the Decision on Institution is incorrect because liquid crystals have many different optical properties, such that not every liquid crystal layer or LCD can be considered a light shutter. PO Resp We agree in part. Dependent claim 2 and 11

12 the Specification of the 545 patent indicate that a monochrome LCD array is an example of a light-shutter matrix. See Ex. 1001, col. 2, l. 65-col. 3, l. 7. IV is correct, though, that the LCD array must still be used as a shutter (i.e., used to limit the passage of light) and not for some other optical effect. Thus, we are persuaded to modify our interpretation to state that the device selectively limits the passage of light, rather than being merely capable of doing so. Applying the broadest reasonable interpretation of the claims in light of the Specification, we interpret light-shutter matrix system to mean a set of matrices, such as monochrome LCD arrays, where each matrix comprises a two-dimensional array of elements that selectively limit the passage of light. 3. Equivalent Switching Matrices Claim 1 recites that the light-shutter matrix system comprises a number of equivalent switching matrices equal to the number of beams and placed one each in the beam paths. We did not interpret equivalent switching matrices in the Decision on Institution. However, in related Case IPR involving U.S. Patent No. 5,779,334 ( the 334 patent ), a continuation-in-part of the 545 patent, we interpreted the phrase in similar claims to mean switching matrices that are corresponding or virtually identical in effect or function. IPR , Paper 14 at 12. IV argues that equivalent switching matrices should be interpreted to mean switching matrices that are virtually identical in effect or function. PO Resp In support of its interpretation, IV cites a dictionary definition of equivalent as corresponding or virtually identical 12

13 esp[ecially] in effect or function. Id. (citing Ex at ). We agree with IV that equivalent in claim 1 should be given its ordinary and customary meaning, and that the dictionary definition of equivalent is indicative of that meaning. We also note that the dictionary definition is consistent with the Specification of the 545 patent, which describes three monochrome LCD arrays 117, 118, and 119 for the colors red, green, and blue. See Ex. 1001, col. 2, l. 65-col. 3, l. 1. IV s proposed interpretation, however, omits the word corresponding from the dictionary definition. Applying the broadest reasonable interpretation of the claims in light of the Specification, we interpret equivalent switching matrices to mean switching matrices that are corresponding or virtually identical in effect or function. 4. Video Controller Adapted for Controlling the Light-Shutter Matrices Claim 1 recites a video controller adapted for controlling the light-shutter matrices. In the Decision on Institution, we interpreted the phrase to mean a component that controls light-shutter matrices to facilitate the display of video. Dec. on Inst IV argues that the Board s interpretation is too broad in view of the Specification of the 545 patent, which provides: A video signal for the system is delivered from outside via link 125 into a controller Controller 122 controls the three monochrome matrices 117, 118, and 119. PO Resp (citing Ex. 1001, col. 3, ll ) (emphasis omitted). We disagree. The portion of the Specification cited by IV describes an exemplary embodiment of the invention and does not define explicitly the phrase video controller adapted for controlling the light-shutter matrices. See Ex. 1001, col. 2, ll

14 Indeed, the Specification states that [t]here are many ways adequate controllers may be implemented. Id. at col. 4, ll The claims also do not recite a video signal, and we see no basis to import a video signal requirement into the claims based on the exemplary embodiment s use of a video signal. Applying the broadest reasonable interpretation of the claims in light of the Specification, we interpret video controller adapted for controlling the light-shutter matrices to mean a component that controls light-shutter matrices to facilitate the display of video. B. Claims 1-3 are Unpatentable Over Flasck With respect to the alleged obviousness of claims 1-3 over Flasck, we have reviewed Xilinx s Petition, IV s Patent Owner Response, and Xilinx s Reply, as well as the evidence discussed in each of those papers. We are persuaded, by a preponderance of the evidence, that claims 1-3 are unpatentable over Flasck under 35 U.S.C. 103(a). See Pet ; Ex Flasck Flasck discloses a projection system comprising three reflective image plane modules, where each module operates on a single color component, red, green or blue. Ex. 1002, col. 2, ll The color components are combined on a screen or before projecting on the screen to form the full color projection image. Id. 14

15 Figure 11 of Flasck is reproduced below. As shown in Figure 11, three light sources 144/146/148 transmit light through blue, green, and red filters 124/126/128, respectively. Id. at col. 7, ll Electronic interface 118 provides information to reflective image plane modules 92/104/112, which encode information onto the light beams. Id. at col. 5, ll. 9-16; col. 7, ll Combining prism 150 then combines the light beams into one encoded beam, which passes through lens system 154 and is projected onto screen 98. Id. at col. 7, l. 66-col. 8, l

16 Figure 2C of Flasck, reproduced below, depicts a side view of the reflective image plane modules. As shown in Figure 2C, incoming light passes through aperture 42 of mirrored wall 40, passes through wafer based active matrix 46, reflects off of back wall 44, reflects again off of back surface 48 of mirrored wall 40, and is directed to projection lens 50 for projection onto a screen (not shown). Id. at col. 5, ll Flasck describes wafer based active matrix 46 as follows: The light has the information imparted to or encoded on it by the wafer based active matrix 46 as it is reflected from the wafer based active matrix The wafer based active matrix 46 is a wafer based active matrix having a specular reflective back surface to reflect light therefrom. The wafer based active matrix is covered by an LCD or similar characteristic material, such as an electrophoretic material. Id. at col. 5, ll

17 2. Analysis There is no dispute that Flasck teaches the majority of the limitations of claim 1. For example, Flasck teaches individual light sources (light sources 144/146/148), a lens system (lenses 34/36/50), and color filters (filters 124/126/128). See Pet IV argues that Flasck fails to teach or suggest three limitations of claim 1: a video projector system, a light-shutter matrix system, and a video controller adapted for controlling the light-shutter matrices. PO Resp IV does not argue that Flasck fails to teach or suggest the additional limitations of dependent claims 2 and 3. a. Video Projector System IV contends that Flasck s projection system is not a video projector system because it is not described explicitly as projecting video and is not capable of operating at video speeds (i.e., projecting images that change fast enough to be undetectable by the human eye). PO Resp IV s argument is not persuasive because, as explained above, we do not interpret the preamble of claim 1 to be limiting. See supra Section II.A.1. To the extent IV s argument applies to the video display on a projection surface recited in the body of the claim, we also do not agree. Flasck refers repeatedly to video projection in its discussion of the prior art, and is addressed to a purported improvement on that video projection art. See, e.g., Ex. 1002, col. 2, ll ; col. 4, ll For instance, in discussing the prior art, Flasck describes a video or computer signal source provided to a video drive circuit, which sends drive signals, such as red video, blue video, [and] green video, to an LCD. Id. at col. 4, 17

18 ll Further, electronic interface 118 in Flasck, which provides information encoding to reflective image plane modules 92/104/112, is labeled as TV or Computer Interface Electronics in Figure 9. Id. at col. 7, ll ; Fig. 9. Although Flasck does not describe the particular content of the information encoding provided by electronic interface 118, a person of ordinary skill in the art would have understood from the TV or Computer Interface Electronics label that the system was meant to be used with an incoming television signal, which is a type of video signal. Indeed, IV s declarant, Robert Smith-Gillespie, testified that he would have understood the TV or Computer Interface Electronics label in Flasck to mean a connector and some electronics to accept a... video signal. Ex at 155:1-20. Thus, a person of ordinary skill in the art would have understood the Flasck projection system to provide a video display. IV cites another patent, U.S. Patent No. 5,537,436 (Ex. 2009) ( Bottoms ), as evidence that cables and other connections that were commonly called TV interfaces at the time of Flasck were not exclusively used for video. PO Resp The portion of Bottoms cited by IV, however, describes a particular type of system for integrated telephone, data, and video communication using a telephone cord connection to a television, where only sequences of still pictures can be transmitted to the television due to the low bandwidth of the telephone cord. See Ex. 2009, col. 16, ll We do not see any indication that Flasck operated in a similar manner to the Bottoms system and, therefore, do not view Bottoms as indicative of how a person of ordinary skill in the art would have understood the TV or Computer Interface Electronics label in Flasck. Also, the fact that some systems of the time were not capable of operating at video speeds 18

19 does not mean that a person of ordinary skill would not have understood Flasck to project video. IV s argument that Flasck s projection system would not have been capable of operating at video speeds also is not persuasive. Flasck discloses a wafer based active matrix... covered by an LCD or similar characteristic material, such as an electrophoretic material, where [o]ne preferable LCD material is a solid light modulating material having bodies of LC [liquid crystal] material suspended therein. Ex. 1002, col. 5, ll IV argues that the solid light modulating material having bodies of LC material suspended therein in Flasck refers to polymer dispersed liquid crystal (PDLC), and that the response time for PDLC-based devices of the time would have been too slow for video. PO Resp As support, IV cites another patent, U.S. Patent No. 5,170,271 (Ex. 2011) ( Lackner ), filed in 1991, describing various PDLC research papers of the time, including one pertaining to a PDLC device with a 5-10 ms on-time and seconds off-time, resulting in a frame time (on-time plus off-time) [that] is very slow compared to a dynamic television image frame time of less than 33 ms. See Ex. 2011, col. 1, l. 62-col. 2, l. 11. As Xilinx points out, however, other papers cited in Lackner describe much lower switching times, and demonstrate that television signals could have been displayed using active matrix PDLC technology of the time. See Pet. Reply 8-9; Ex. 2011, col. 2, ( Three active matrix cells were used for red, blue and green channels of full color projection TV. ); col. 2, ll (citing a paper entitled A Frame-Sequential Color-TV Projection Display ). Mr. Smith-Gillespie, IV s declarant, also acknowledged that, based on Lackner s description of the other papers, it was possible at the 19

20 time to use PDLC in a video display system [a]t least in the lab. Ex at 150:18-152:4. Thus, we are not persuaded by IV s argument that Flasck s system, using a PDLC, was incapable of operating at video speeds. We are persuaded, by a preponderance of the evidence, that Flasck teaches a system that projects on a surface to provide a video display. 1 b. Light-Shutter Matrix System Xilinx identifies the combination of reflective image plane modules 92/104/112 in Flasck as a light-shutter matrix system. Pet. 15. According to Xilinx, the combination comprises light-shutter matrices because each reflective image plane module has a wafer based active matrix that encodes information onto the light beam. Id.; see Ex. 1002, col. 5, ll ( [t]he wafer based active matrix is covered by an LCD or similar characteristic material ). Based on its proposed interpretation of light-shutter matrix system, IV argues that a light shutter is an element that selectively admits and blocks light through absorption. PO Resp According to IV, a device like the one disclosed in Flasck, which reflects or scatters incoming light, does not block light through absorption. Id.; see Ex As support, IV cites U.S. Patent No. 6,266,037 B1 (Ex. 2012) ( Flasck II ), 2 which 1 We also note that the same analysis applies even if the video projector system preamble of claim 1 were interpreted as IV suggests. Thus, regardless of whether the claim requires a video projector system or providing a video display, Flasck teaches the projection of video. 2 Flasck II is a continuation of U.S. Patent Application No. 08/023,475, which is a continuation of U.S. Patent Application No. 07/392,859, which is incorporated by reference in Flasck. See Ex. 1002, col. 5, ll

21 describes Flasck s wafer based active matrix in greater detail. PO Resp Figure 4 of Flasck II is reproduced below. Figure 4 depicts the structure for an individual pixel in the wafer based active matrix, including glass layer 56, activating electrical contact layer 54, LCD material layer 52, reflector 50, capacitor 48, and substrate segment 32. Ex. 2012, col. 5, ll Flasck II describes the operation of the wafer based active matrix as follows: When utilizing the PDLC material 52, the refractive index of the LC material matches the index of the polymer matrix when the pixel 44 is activated. When the indexes are matched, very little light is scattered and most of the light is reflected off the reflector 50 back out of the pixel 44 and hence the wafer based active matrix 30. When a field is not present on the layer 52, the indexes do not match and most of the light is scattered. The light is still reflected or scattered out of the pixel 44 and hence the wafer based active matrix 30, but the light is dispersed resulting in a black or off pixel when projected. Since the scattering is proportional to the field applied to the pixel 44, a gray scale can be obtained by utilizing a range of voltages. Id. at col. 5, l. 65-col. 6, l. 10 (emphases added). According to IV, based on the additional detail provided by Flasck II, the light entering the reflective image plane modules in Flasck is reflected or scattered, not blocked, and, therefore, the reflective image plane modules do not constitute a light-shutter matrix system. 21

22 As explained above, we do not agree with IV s proposed interpretation and instead interpret light-shutter matrix system to mean a set of matrices, such as monochrome LCD arrays, where each matrix comprises a two-dimensional array of elements that selectively limit the passage of light. See supra Section II.A.2. We do not interpret the claims as requiring absorption. Nor do we see any reason why the reflection and scattering in Flasck does not constitute limiting the passage of light. We find Dr. Buckman s testimony regarding the operation of Flasck persuasive on this point: Light enters the pixel from the top, passing through the transparent glass and electrical contact layers. If the pixel is activated by a charge in capacitor 48, then the light passes through the liquid crystal layer, reflects off the reflective layer, and passes back through the LCD, electrical contact, and glass layers. If the pixel is deactivated (i.e., if capacitor 48 does not have a charge), then the LCD layer scatters the light (i.e., it blocks the light from traveling along its original destination pathway by redirecting it into other directions). Ex (citations omitted). Light at on pixels in the reflective LCD arrangement of Flasck passes through the LCD material and reflects off of the back reflector and out of the pixel, whereas light at off pixels is scattered. In both the reflective LCD arrangement of Flasck and the transmissive LCD arrangement described in the Specification of the 545 patent, light at certain pixels is prevented from continuing in its original direction. Therefore, we are persuaded that the wafer based active matrices in Flasck selectively limit the passage of light, and are light-shutter matrices. IV also argues that Flasck teaches away from a light-shutter matrix system. PO Resp (citing Ex ). IV points to Flasck s description of a prior art transmissive LCD projection system developed by 22

23 Seiko Epson Corp. Id. Flasck discloses that in that system, three LCD panels, each with a polarizer on either side of LC material, were utilized as a shutter to absorb the light not to be transmitted, such that [b]oth the polarizers and the LC material absorb light which generates heat, which is deleterious to the LCD panel. Ex. 1002, col. 4, ll The use of polarizers and LC material also resulted in low brightness because of the amount of light absorbed. Id. at col. 4, ll Therefore, according to IV, Flasck discloses disadvantages to using light shutters and teaches away from the use of a light-shutter matrix system, as recited in claim 1. PO Resp IV s argument is not persuasive. A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As explained above, we do not interpret light-shutter matrix system to require light absorption, and conclude that Flasck s wafer based active matrix embodiment is a light-shutter matrix system as properly interpreted. Thus, there is no need to modify Flasck or combine it with any other teaching to achieve a light-shutter matrix system, as the reference already teaches the limitation and does not discourage its use. Further, Flasck s disclosed embodiment is meant to solve heat and brightness problems associated with prior art transmissive LCD projection systems. We are not persuaded that Flasck s description of systems with those problems amounts to teaching away from the subsequently disclosed solution. 23

24 We are persuaded, by a preponderance of the evidence, that Flasck teaches a light-shutter matrix system, as recited in claim 1. c. Video Controller Adapted for Controlling the Light-Shutter Matrices As stated in the Decision on Institution, Flasck does not disclose, expressly or inherently, a video controller adapted for controlling... light-shutter matrices. Dec. on Inst Xilinx, however, contends that the limitation would have been obvious based on Flasck s disclosure of a prior art projection system. Pet In describing the prior art projection system depicted in Figure 1, Flasck discloses a video or computer signal source coupled to video drive circuit 20, which generates the required drive signals coupled over a line 22 to the LCD 16. Ex. 1002, col. 4, ll The drive signals cause the pixels of the LCD 16 to block or transmit light to impart the required information onto the light transmitted through the LCD 16. Id. at col. 4, ll (emphasis added). Xilinx s position is that a person of ordinary skill in the art would have viewed the use of such a video drive circuit in the location of electronic interface 118 ( TV or Computer Interface Electronics ) as the predictable use of prior[] art elements according to their established functions. Pet Given the similarities in function between video drive circuit 20, which provides drive signals to drive an LCD, and electronic interface 118, which provides information encoding to the reflective image plane modules (containing an LCD material), we are persuaded by Xilinx s analysis. IV argues that Flasck teaches away from the use of a light-shutter matrix system and, therefore, does not teach or suggest a video controller adapted for controlling the light-shutter matrices, as recited in claim 1. 24

25 PO Resp According to IV, incorporating a video controller into the location of electronic interface 118 would have been unpredictable and improbable given Flasck s teachings. Id. As explained above, we are persuaded that Flasck teaches a light-shutter matrix system, and does not teach away from such a system. Thus, IV s argument regarding a video controller controlling the light-shutter matrices is unpersuasive. We are persuaded, by a preponderance of the evidence, that Flasck would have suggested to a person of ordinary skill in the art to use a video controller adapted for controlling the light-shutter matrices to control the disclosed reflective image plane modules to facilitate the display of video, and that claim 1 would have been obvious over Flasck. d. Conclusion Based on the record evidence, in light of the arguments presented, Xilinx has shown, by a preponderance of the evidence, that claim 1, as well as claims 2 and 3 depending therefrom, would have been obvious over Flasck. C. Claims 1-3 are Unpatentable Over Takanashi and Lee With respect to the alleged obviousness of claims 1-3 over Takanashi and Lee, we have reviewed Xilinx s Petition, IV s Patent Owner Response, and Xilinx s Reply, as well as the evidence discussed in each of those papers. We are persuaded, by a preponderance of the evidence, that claims 1-3 are unpatentable over Takanashi and Lee under 35 U.S.C. 103(a). See Pet ; Ex ,

26 1. Takanashi Takanashi discloses a spatial light modulator and a display unit in which the spatial light modulator is applied. Ex. 1003, col. 1, ll Figure 17 of Takanashi is reproduced below. As shown in Figure 17, light source LS emits light, which is linearly polarized by polarizer PL1 and separated into red, green, and blue components by three-color separation optical system 11. Id. at col. 16, ll Each respective light beam then passes through a liquid crystal element (e.g., ECBtr for red light), polarizer (e.g., PL2r for red light), and spatial light modulator element (e.g., SLMtr for red light), which modulate[s] the respective light beam through the use of incoming write light WL. Id. at col. 16, ll. 6-28; col. 1, l. 18-col. 5, l. 25; Figs The light beams then are recombined by three-color combination optical system 12, and the combined light passes through another polarizer PL3 and projection lens PJL, which projects the combined light onto a screen (not shown). Id. at col. 16, ll

27 Takanashi discloses a particular projection system using spatial light modulators and prisms, as shown in Figure 16 reproduced below. In Figure 16, light emitted by light source LS is incident on dichroic prism DP, which separates the light into red, green, and blue components before being transmitted to the ECB, PL, and SLM elements. Id. at col. 15, ll For example, green light is transmitted through the liquid crystal element ECBtg and the polarizer PLg and [is] incident on the modulator element SLMrg. Id. 2. Lee Lee discloses a projection color liquid crystal display (LCD) system us[ing] a large reflecting liquid crystal (LC) panel as a screen. Ex. 1004, Abstract. 27

28 Figure 2 of Lee is reproduced below. Figure 2 depicts an LCD projection system comprising white light sources 26, focusing lenses 15R/G/B, red/green/blue color filters 28R/G/B, light shutters 14R/G/B, diffusing lenses 12R/G/B, and LC panel 11. Id. at col. 3, l. 14-col. 4, l. 26. The system is controlled by a number of components. Lamp voltage controlling circuit 18 controls the intensity of the light emitted by light sources 26. Id. at col. 3, ll Light shutter controlling circuit 19 successively permits a respective unicolor light beam connected to a respective light shutter 14R, 14G, 14B to pass therethrough during the frequency of 1/3, and prevents the light beam from passing through during the other 2/3 of the time. Id. at col. 3, ll LC panel 11 is controlled by frame inducing circuit 22, image controlling circuit 21, and LCD driver 20 in the following manner: The LC panel 11 is successively connected to a liquid crystal display LCD driver 20 to drive the panel; an image controlling circuit 21 to supply a driving signal based on a color information of respective color with the driver 20; and a frame 28

29 inducing circuit 22 to induce the respective light shutter 14R, 14G, 14B and image controlling circuit 21. Id. at col. 3, ll Red, green, and blue light beams are successively projected through light shutters 14R/G/B, and successively reflected from LC panel 11 according to a color driving signal supplied by image controlling circuit 21 and used by LCD driver 20 to drive LC panel 11. Id. at col. 3, ll The light beams are projected and reflected so quickly that a person viewing LC panel 11 sees a composite image rather than successive colors. Id. at col. 3, ll Analysis Xilinx relies on Takanashi as allegedly teaching the light-shutter matrix system and optical combination system limitations of claim 1, and relies on Lee as allegedly teaching the remaining limitations. Pet There is no dispute that Takanashi and Lee teach the majority of the limitations of claim 1. For example, Lee teaches individual light sources (white light sources 26), a lens system (focusing lenses 15R/G/B), and color filters (filters 28R/G/B). See id. at IV argues that Takanashi and Lee fail to teach or suggest three limitations of claim 1: a light-shutter matrix system, equivalent switching matrices, and a video controller adapted for controlling the light-shutter matrices. PO Resp IV does not argue that Takanashi and Lee fail to teach or suggest the additional limitations of dependent claims 2 and 3. a. Light-Shutter Matrix System Xilinx identifies Takanashi s combination of ECB elements, polarizers PL2, and the SLM elements as a light-shutter matrix system. 29

30 Pet. 24, Specifically, Xilinx contends that the ECBtr, PL2r, and SLMtr components shown in Figure 17 above are a switching matrix used to process the red beam of light, and the corresponding components are switching matrices for the green and blue light beams. Id. (citing Ex ). IV argues that Takanashi lacks the matrix aspect of a light-shutter matrix system. PO Resp IV contends that the spatial light modulator SLM is not a matrix in the form of rows and columns because it is a continuous layer of material, citing Takanashi s disclosure that the SLM is formed as an element. Id. at (citing Ex. 1003, col. 2, ll ). IV further argues that, even though Takanashi discloses projecting a two-dimensional color image, a continuous layer of optical material, such as a film frame or overhead projector sheet with writing, can produce a two-dimensional image despite not being in matrix form. Id. at 37-38; see Ex. 1003, col. 16, ll ; Figs. 17, 20. Xilinx responds with testimony from Dr. Buckman comparing the optically-addressed spatial light modulator (OASLM) of Takanashi with an electrically-addressed spatial light modulator (EASLM), such as an LCD array of the type disclosed in the Specification of the 545 patent. See Pet. Reply (citing Ex ). An OASLM uses a read light and a write light. Ex The write light is directed at a photosensitive material in the SLM, which creates an electric charge that changes the state of the adjacent liquid crystal layer. Id. An image is created by shining the write light at some points and not others. Id. The read light passes through or reflects off of the SLM, taking on the same image as the write light by virtue of the liquid crystal layer. Id. Similarly, in 30

31 an EASLM, an electric charge is created at particular points by electric circuitry (e.g., transistors and capacitors) adjacent to the liquid crystal layer. Id. 28. Dr. Buckman s testimony is supported by textbook descriptions of OASLMs and LCDs (an example of an EASLM), and we find it persuasive. See Ex at ; Ex at 186. We are not persuaded by IV s argument that the SLM in Takanashi is not a matrix because it has a continuous liquid crystal layer. See PO Resp Mr. Smith-Gillespie acknowledged during his deposition that the LCD arrays in the Specification of the 545 patent have continuous liquid crystal layers. Ex at 174:4-11. In both the LCD array of the exemplary embodiment of the 545 patent and the OASLM described in Takanashi, the light-shutter (i.e., what actually limits the passage of light) is the liquid crystal layer itself, and the liquid crystal layer operates the same way by changing state in response to an electric charge. Only the mechanism for encoding the image is different in the LCD array, the charge image is created by the electric circuitry, whereas in Takanashi, the charge image is created by the write light hitting the photosensitive material. Thus, the fact that Takanashi has a continuous liquid crystal layer is immaterial. What matters is whether that layer, like the layer in the LCD array of the 545 patent, is configured as a matrix (i.e., a two-dimensional array) of elements that selectively limit the passage of light. We conclude, by a preponderance of the evidence, that a person of ordinary skill in the art would have understood the SLM in Takanashi to be configured as a matrix. Takanashi discloses a two-dimensional color image of the object of display projected onto a screen, but does not state explicitly that its input write light is in the form of a two-dimensional array. 31

32 See Ex. 1003, col. 16, ll ; Figs. 17, 20. According to Dr. Buckman, the reason for this is that an SLM was a commonly-known device... in the early 1990s. Ex Dr. Buckman states that typical OASLMs create images by organizing the continuous liquid crystal layer into a pixelated matrix of rows and columns where each pixel permits or limits the passage of light according to the electric field near that location. Id. 29. Dr. Buckman further testifies that using a cathode ray tube (CRT) was one known way of providing a write light with an OASLM, and that the write light for an OASLM would usually be from a CRT. Id A CRT shines a moving light beam at an OASLM to create an image made up of individual pixels in rows and columns. Id. 30. Dr. Buckman s testimony regarding the operation of OASLMs and CRTs is supported by two textbooks, and we find it persuasive. See id ; Ex at 331 (OASLMs used with CRTs), ; Ex at (CRT scan addressing). We are persuaded that a person of ordinary skill in the art, reading the OASLM disclosure of Takanashi and being aware of how OASLMs typically operated, would have understood that the write light in Takanashi is pixelated (i.e., organized into rows and columns). Shining such a write light at the OASLM in Takanashi configures the continuous liquid crystal layer into a matrix of elements that selectively limit the passage of light, just as the circuitry in an EASLM configures a continuous liquid crystal layer into a matrix of elements. Takanashi, therefore, teaches the matrix aspect of the light-shutter matrix system recited in claim 1. IV also argues that Takanashi s system cannot be considered a light-shutter because, as described in Takanashi, the combinations of 32

33 ECB, PL2, and SLM elements each form a wavelength selection filter. PO Resp. 39 (citing Ex. 1003, col. 9, ll ). IV does not elaborate on this argument or explain sufficiently why Takanashi s system is not a light-shutter under the Board s interpretation. Regardless, we are persuaded for the above reasons that the OASLM liquid crystal layer in Takanashi limits the passage of light (similar to an EASLM liquid crystal layer that limits the passage of light). We are persuaded, by a preponderance of the evidence, that Takanashi and Lee teach a light-shutter matrix system, as recited in claim 1. b. Equivalent Switching Matrices IV argues that Takanashi does not teach a light-shutter matrix system comprising equivalent switching matrices. PO Resp IV asserts that each of the combinations of ECB, PL2, and SLM elements in Takanashi is a particular kind of wavelength selection filter that passes only specific monochromatic light. Id. at (citing Ex. 1003, col. 18, ll ). According to IV, this type of filter system is different from the triple monochrome LCD structure disclosed in the Specification of the 545 patent and does not provide the same advantages, such as increased brightness and quality at reduced cost. Id. at IV contends that Xilinx fails to address how Takanashi provides those advantages. Id. at 48. We first note that none of the purported advantages described in the Specification of the 545 patent are required by the claims. Claim 1 merely requires that the light-shutter matrix system be made up of equivalent switching matrices, which we interpret to mean switching matrices that are 33

34 corresponding or virtually identical in effect or function. See supra Section II.A.3. Further, IV is correct that each combination of elements in Takanashi passes only light of a particular color (red, green, or blue), see, e.g., Ex. 1003, col. 18, ll , but that does not mean that the elements are not corresponding or virtually identical in effect or function. The SLMs are referenced in Takanashi with the same abbreviation (e.g., SLMrr, SLMrg, and SLMrb in Figure 16), and each uses a write light to encode an image onto a read light. See id. at col. 15, l. 22-col. 16, l. 42; Figs. 16, 17. There does not appear to be and IV does not point to any difference between the devices apart from the difference in light color. We are persuaded that the combinations of elements are virtually identical or, at minimum, corresponding. Importantly, claim 1 does not require that the matrices be identical, just that they be equivalent. IV s position requires them to be identical. Further, as Xilinx points out, Mr. Smith-Gillespie acknowledged that the distinction made in the Specification of the 545 patent was between a triple monochrome LCD structure and a color AM-LCD, not between a triple monochrome LCD structure and an OASLM of the type described in Takanashi. See Pet. Reply 15; Ex at 219:23-222:15 (referring to Ex ). Thus, IV s purported distinction in terms of functionality and advantages is incorrect. We are persuaded, by a preponderance of the evidence, that Takanashi and Lee teach equivalent switching matrices, as recited in claim 1. 34