In its Decision, the Board held that Xilinx had shown by a preponderance of the evidence that the challenged claims 1-3 of U.S. Patent No. 5,632,545 (“the ’545 Patent”) are unpatentable under 35 U.S.C. § 103(a). The Board denied Intellectual Ventures I LLC’s (“IV”) Motion to Amend Claims. Finally, the Board denied IV’s Motion to Exclude Evidence.
The ’241 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. The Board instituted the trial based on two separate grounds of unpatentability: one based on 35 U.S.C. § 103(a) over Flasck, and one based on 35 U.S.C. § 103(a) over Takanashi in view of Lee.
Claim Construction
The Board gave no patentable weight to a preamble limitation, where Patent Owner provided a construction, of which Petitioner did not disagree, at least because no reason was given for why the preamble should be limiting. The Board construed three additional terms using the broadest reasonable interpretation standard by reviewing the claims, specification, and extrinsic evidence. In particular, the Board accepted the broadest dictionary definition whenever that definition was reasonable in light of the claims and specification, taking special care not to include exemplary language in dictionaries or the specification, in the construction of the terms.
Patentability of Challenged Claims
The Board held that the challenged claims were unpatentable as obvious over Flasck. IV only argued that Flasck differed from the prior art with respect to three terms in the independent claim, and did not argue that Flasck failed to teach or suggest the additional limitations of dependent claims 2 and 3. The first term was from the preamble, which the Board said was not limiting. The second term was taught based on the broad claim construction determined by the Board. Patent Owner’s argument for the second term was based completely on the narrower claim interpretation that the Board did not accept. The third term was found to be obvious in accordance with Petitioner’s argument that Flasck’s disclosure of a prior art projection system provided a reason to modify the system disclosed in Flasck.
The Board also held that the challenged claims were unpatentable as obvious over Takanashi and Lee. IV argued that the combination of Takanashi and Lee differed from the prior art with respect to three terms in the independent claims, and did not argue that Flasck failed to teach or suggest the additional limitations of dependent claims 2 and 3. With regard to the first and second terms, the Board found Petitioner’s expert more convincing, at least because his arguments were supported by additional textbooks. Also, Petitioner was able, through deposition, to obtain acknowledgements by Patent Owner’s expert that worked in favor of Petitioner’s arguments.
Regarding the third term related to the Takanashi and Lee grounds of unpatentability, Petitioner’s expert gave testimony during his deposition that supported Patent Owner’s argument for nonobviousness. In Petitioner’s Reply, Petitioner’s expert reversed his earlier deposition testimony in a reply declaration. Patent Owner was given an opportunity to depose Petitioner’s expert again, but there was no opportunity to respond after Petitioner’s reply. Patent Owner wanted the reply declaration excluded. The Board refused to exclude the declaration or give Patent Owner an additional opportunity to respond, but took the circumstances into consideration with regard to the weight and credibility afforded the declaration, which the Board determined was very little on this issue. However, the Board still found in favor of Petitioner based on the strength of other evidence provided on the issue.
Motion to Amend
The Board then considered IV’s motion to amend the claims. In denying IV’s motion, the Board identified several fatal flaws.
1. New claim limitations without a claim construction
IV’s substitute claims introduced several new claim limitations without providing any claim construction for those new limitations. IV only submitted that the new limitations should be given their plain and ordinary meaning, without providing a specific interpretation. The Board did not find this sufficient to meet its burden of showing that the proposed substitute claims are patentable. IV attempted to provide claim interpretation and arguments for patentability in its Reply based on the arguments in Petitioner’s Response, but the Board did not find these persuasive. Instead, the Board found that the new claim terms were broader in scope than what was proposed by Patent Owner, and that based on the broader interpretation the new claims were not patentable.
2. Patentability of the substitute claims over the prior art
The Board held that IV’s Motion to Amend the Claims failed to establish the patentability of the proposed substitute claims over the prior art, at least because the motion did not account sufficiently for the basic knowledge and skill set possessed by a person of ordinary skill in the art. In particular, the substitute claims included many standard components known in the art, without any discussion about whether one of ordinary skill in the art would have known about those components and why it would not have been obvious for one of ordinary skill in the art to have found the proposed substitute claims obvious.
Further, the Board was persuaded by Petitioner that the substitute claims would have been obvious in view of the additional prior art provided by Petitioner.
Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00029
Paper 49: Final Written Decision
Dated: March 10, 2014
Patent 5,632,545
Before: Sally C. Medley, Karl D. Easthom, and Justin T. Arbes
Written by: Arbes