15 for 16: Intellectual Ventures Inter Partes Review Trial Initiated

iStock_000002261448XSmallThe PTAB provided another victory for a patent challenger, as Xilinx successfully forced an Intellectual Ventures patent into an inter partes review trial, in the case styled as Xilinx, Inc. v. Intellectual Ventures I, LLC (IPR2013-00029), involving US Patent No. 5,632,545. Xilinx challenged 3 claims in the ‘545 patent, based upon four grounds of unpatentability.

The technology of the ‘545 patent relates to a color video projector system that uses three separate light sources that are combined to create a single beam that provides a full-color video display. The two claim terms that were central to the Board’s decision are: “Light-Shutter Matrix System” and “Video Controller Adapted for Controlling the Light-Shutter Matrices.”

Analyzing first the PTAB’s claim construction of “Light-Shutter Matrix System,” the Board noted at the outset that Patent Owner’s proposed interpretation was based upon: a) dictionary definitions of the terms “shutter” and “matrix”; and b) the disclosure of the term “shutter” from another patent’s disclosure. Based upon these sources, Patent Owner proposed a definition of “a two-dimensional array of light-shutter elements, in which each element can be used to shut or block out portions of a beam of light.”

The Board disagreed with Patent Owner’s compilation of dictionary definitions, however, and came to its own formulation of a claim construction for the Light-Shutter Matrices. Interestingly, in doing so, the Board relied upon its own dictionary definitions, but used those definitions to form a more broad definition of the subject term. The Board disagreed with Patent Owner’s proposed construction for two reasons. First, the definition relied upon by Patent Owner for “shutter” was directed to camera technology, not video projector systems. Order at 8. Second, Patent Owner’s definition from a prior art reference was deemed to be specific to a particular shutter, and not more generically described. As such, the disclosure was not indicative of how a person skilled in the art would understand the term generically. Order at 9.

The Board then turned to its construction of the “video controller” limitation. Though Patent Challenger did not offer a proposed construction (relying on the “broadest reasonable construction”), the Board did not accept Patent Owner’s specific proposal. That proposal, based on two other patents, was deemed not appropriate in this case. More particularly, the Board saw no need to look to other patents, especially since those patents did not use the full phrase of the claim, where the term “’video controller’ is a generic term of art.” Order at 10. As one would expect, the Board’s adopted construction was broader than that proposed by Patent Owner.

In the end, the Board initiated the IPR trial based upon two of the four proposed grounds. This is a decision that reinforces the Patent Challenger advantage of inter partes review practice, which relies on the broadest reasonable interpretation of the contested claim terms. Relying on that broad construction here, the Board read the subject claim terms onto prior art that, at first glance, is quite a bit different than the preferred embodiment of the ‘545 patent. As such, while a claim amendment might save the patentability of the claim, Patent Challenger may have successfully forced a narrowing of the subject claims (and reduced past damages?).

Patent Challengers Are 10 For 10: Tenth Inter Partes Review Trial Instituted

It’s an even 10 for 10 for patent challengers, for a slick 100% of inter partes review trials being instituted in the five months since the proceeding was created on September 16, 2012.  The latest (and the final in a series of four trials instituted involving Intellectual Ventures and Xilinx) is styled as Intellectual Ventures Management, LLC v. Xilinx, Inc. (IPR2012-00023), involving US Patent No. 7,994,609.  The Board instituted an inter partes review trial based on all 19 of the challenged claims in the patent and for all six of the proposed grounds from the Petition.

The subject matter of the ‘609 patent is a shielded capacitor in an integrated circuit having a core capacitor portion that includes multiple layers of conductive elements.  The Board construed only one limitation on its way to instituting the IPR trial – “Shield.”  Its analysis in this regard is based upon how a “shield” was described in both the specification of the ‘609 patent, but also as disclosed in one of the prior art references cited by Patent Challenger.  When the Board used the prior art to help define the one key term considered by the Board, we are quite sure Patent Owner stopped reading the opinion and started preparing for discovery.

Turning to a comparison of the construed claims to the cited prior art, the Board incorporated into its opinion annotated and edited figures from the declaration of Patent Challenger’s expert witness to help illustrate how the art reads on the challenged claims.  The bulk of Patent Owner’s opposition, via its preliminary response, was focused on pointing out deficiencies in the core prior art cited in the Petition; but, as referenced above, the Board used that prior art to help define the relevant claim term.  As such, the Board did not find Patent Challenger’s arguments to be persuasive.

Lastly, it is worth noting that the Board relied heavily on the declaration filed by Patent Challenger’s expert.  To the extent parties are still considering waging battle in inter partes review proceedings without an expert, it is becoming increasingly clear that this is a bad strategy.