Xilinx, Inc. v. Intellectual Ventures I LLC, Final Written Decision
Wednesday, July 9, 2014

Takeaway: Proposed substitute claims in a motion to amend must be responsive to a ground of unpatentability involved in the trial.

In its Final Written Decision, the Board found that all of the challenged claims were unpatentable and that the Motion to Amend was denied. The Board also denied Patent Owner’s Motion to Exclude, and granted Patent Owner’s Motion to File a Substitute Exhibit. The ’334 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 began with claim construction, stating that claim terms are interpreted using the broadest reasonable construction in light of the specification. The Board first discussed the term “light-shutter matrix system.” The Board slightly modified the interpretation of the term in relation to its original interpretation in the Decision on Institution. Based on the surrounding language of the claims, the Board determined that the “light-shutter matrix system” is comprised of multiple equivalent matrices, and that a monochrome LCD array is one example. The Board determined that the Specification does not provide much clarity on the definition of the term. Thus, the Board looked to dictionaries to assist it in determining how a skilled artisan would have understood the individual terms “light-shutter” and “matrix.” Patent Owner argued that a person of ordinary skill in the art would have understood such a matrix to be more specific than what the Board contended. Patent Owner relied on an example in a book and the declaration of an expert for this assertion. However, Patent Owner did not sufficiently explain why given its broadest reasonable interpretation, the term must be limited in the way Patent Owner argued. However, the Board did modify its original interpretation to eliminate any requirement of a “rectangular” shape, because the Board determined that Patent Owner’s dictionary definition of the “matrix” was broader than the definition used in the Decision on Institution. Two other terms were discussed, but the Board merely maintained its interpretation from the Decision on Institution, because it did not agree with Patent Owner’s arguments.

The Board next examined the obviousness challenge to the claims. Patent Owner argued that the cited references failed to teach the three limitations that were construed by the Board. The Board determined, based on the interpretation it provided the claims and the evidence provided by Petitioner, that the claims were obvious over the cited combination of references.

The Board next considered Patent Owner’s Motion to Amend the claims. Patent Owner presented two substitute claims. The Board determined that Patent Owner sufficiently showed that the proposed substitute claims have written description support. The Board determined that Patent Owner failed to provide a proposed interpretation for the newly added limitations, and that merely arguing that the claims should be interpreted “in accordance with their plain and ordinary meaning” is not sufficient. Further, the Board determined that, even if Patent Owner’s arguments regarding claim interpretation and patentability in its Reply are considered, Patent Owner failed to meet its burden of showing that the proposed substitute claims are patentable.

Further, the Board determined that one of the proposed substitute claim, which removed a limitation from the original claim before adding an additional limitation, violated “37 C.F.R. § 42.121(a)(2)(i), which specifies that a motion to amend may be denied where ‘[t]he amendment does not respond to a ground of unpatentability involved in the trial.”

The Board also determined that the proposed substitute claims were not patentable over the prior art. Patent Owner failed to address the level of ordinary skill in the art and what was previously known. Specifically, the Board stated that at least some explanation should have been provided as to why a skilled artisan, applying his or her own knowledge and creativity, would not have found the proposed substitute claims obvious. Further, the Board agreed with Petitioner’s opposition to the Motion, which cited an additional prior art reference in a proposed grounds of unpatentability.

The Board then turned to Patent Owner’s Motion to Exclude various declarations by an expert for Petitioner, because the expert was allegedly not qualified and because the opinions were unreliable based on alleged inconsistencies between the declarations. The Board found that Patent Owner did not meet its burden, and the Board asserted that it is capable of assessing a witness’s testimony on the bases for that testimony, or lack thereof, when weighing all of the evidence in a proceeding.

Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00112
Paper 51: Final Written Decision
Dated: June 26, 2014
Patent 5,779,334
Before: Sally C. Medley, Karl D. Easthom, and Justin T. Arbes
Written by: Arbes

 

NLR Logo

We collaborate with the world's leading lawyers to deliver news tailored for you. Sign Up to receive our free e-Newsbulletins

 

Sign Up for e-NewsBulletins