MasterImage 3D, Inc.v.ReaId, Inc.

Patent Trial and Appeal Board

Sep 9, 2015

13047763 (P.T.A.B. Sep. 9, 2015)

Trials@uspto.gov Paper No. 8
571-272-7822 Filed: September 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MASTERIMAGE 3D, INC. and
MASTERIMAGE 3D ASIA, LLC,
Petitioner,

v.

REALD INC.,
Patent Owner.
____________

Case IPR2015-00877
Patent 8,220,934 B2
____________

Before JAMESON LEE, JAMES B. ARPIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

IPR2015-00877
Patent 8,220,934 B2

2

I. INTRODUCTION
A. Background
On March 12, 2015, MasterImage 3D, Inc. and MasterImage 3D Asia,
LLC (“Petitioner” or “MasterImage”) filed a Petition (Paper 1, “Pet.”) to
institute inter partes review of claims 1–11 and 18–20 of U.S. Patent
No. 8,220,934 B2 (Ex. 1001, “the ’934 patent”). On June 23, 2015, RealD
Inc. (“Patent Owner” or “RealD”) filed a Preliminary Response (Paper 6,
“Prelim. Resp.”).
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a):
THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in the petition filed under section
311 and any response filed under section 313 shows that there
is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
Upon consideration of the Petition and Preliminary Response, with the
accompanying evidence, we are not persuaded, under 35 U.S.C. § 314(a),
that Petitioner has demonstrated a reasonable likelihood that it would prevail
in showing the unpatentability of any of claims 1–11 and 18–20 of the
’934 patent. Accordingly, we do not institute an inter partes review of the
’934 patent.
B. Related Matters
MasterImage and RealD together identify the following related cases
involving the ’934 patent: (1) RealD Inc. v. MasterImage 3D, Inc.,
No. 2:14-CV-02304 (C.D. Cal.); (2) RealD Inc. v. Volfoni, No. 2:14-CV-
IPR2015-00877
Patent 8,220,934 B2

3

02303 (C.D. Cal.); and (3) In the Matter of Certain Three-Dimensional
Cinema Systems and Components Thereof, Inv. No. 337-TA-339 (USITC).
Papers 4, 5. The ’934 patent also is the challenged patent in inter partes
review IPR2015-00040, instituted on April 15, 2015.
C. The ’934 Patent
The ’934 patent relates to polarization conversion of light for
stereoscopic projection, and is titled: “Polarization Conversion Systems for
Stereoscopic Projection.” Ex. 1001, [54]. Independent claim 1 is directed to
“A stereoscopic system” (id. at 7:65), and independent claim 18 is directed
to “A method for stereoscopic image projection” (id. at 9:7).
Each of independent claims 1 and 18 recites receiving light and
splitting it, according to polarization, into a portion directed to a first light
path and another portion directed to a second light path, and rotating or
transforming the polarization of light in the second light path. Id. at 7:66–
8:5, 9:10–10:2. Each of independent claims 1 and 18 further recites that the
polarization of light in the second light path is made into the same
polarization as that of the light in the first light path, and that the
polarization states of the light from the first and second light paths are
translated, selectively, into a first output state of polarization and a second
output state of polarization. Id. at 8:3–10, 10:1–4. Independent method
claim 18 recites a step of receiving randomly-polarized light from a
projector. Id. at 9:9.
According to the Summary portion of the Specification, the disclosed
polarization systems “present a brighter screen image in cinematic
IPR2015-00877
Patent 8,220,934 B2

4

applications utilizing polarized light for three-dimensional viewing.” Id.
at 2:1–4.
Figure 2A of the ’934 patent is reproduced below.

Figure 2A illustrates a schematic diagram of polarization conversion
system 100 for cinematic projection according to one embodiment of the
’934 patent. Id. at 2:41–43. Polarization conversion system 100 is shown,
that includes polarizing beam splitter (“PBS”) 112; polarization rotator 114,
such as a half-wave plate; reflecting element, such as fold mirror 116; and
polarization switch 120, arranged as illustrated. Id. at 3:12–18. System 100
may receive images from a conventional projector with projection lens 122.
Id. at 3:18–20.
The operation of polarization conversion system 100, as shown in
Figure 2A, is described as follows in the Specification:
IPR2015-00877
Patent 8,220,934 B2

5

In operation, ray bundles A, B, and C emerge randomly
polarized from the lens 122 and are projected toward a screen
130 to form an image. In this embodiment, a PBS 112 is
inserted in place of the polarizer 22 shown in FIG.1. The PBS
112 transmits P-polarized light 124, and reflects S-polarized
light 126. The P-polarized light 124 passes through the
polarization switch (bundles A, B, and C) and is rotated by the
polarization switch in alternating frames, same as bundles A, B,
and C in FIG.1.
The S-polarized light 126 reflected by the PBS 112
passes through a polarization rotator 114 (e.g., a half-wave
plate, preferably achromatic in some embodiments) and is
rotated to p-polarized light 128. The new p-polarized light 128
passes to a fold mirror 116. The fold mirror 116 reflects the
new p-polarized light 128 and passes it to polarization switch
120. The polarization switch 120, acting on p-polarized ray
bundles A', B', and C', rotates the polarization of the ray
bundles in alternating frames, in synchronization with the
rotation of bundles A, B, and C. The position of bundles A', B',
and C' at the screen may be adjusted (e.g., by adjusting the tilt
of the fold mirror 116) to closely or exactly coincide with the
positions of bundles A, B, and C at the screen.
Id. at 3:21–42. The Specification explains that, because nearly all of the
light from the projector lens are imaged at the screen with a single
polarization state, the resulting image “is approximately two times brighter
than the image at the screen for the system in FIG. 1 [depicting prior art].”
Id. at 3:42–47.
Independent claims 1 and 18 are reproduced below:
1. A stereoscopic system comprising:
a polarization beam splitter (PBS) operable to direct first
light bundles having a first state of polarization (SOP) along a
IPR2015-00877
Patent 8,220,934 B2

6

first light path, and direct second light bundles having a second
SOP along a second light path;
a polarization rotator located on the second light path, the
polarization rotator being operable to translate the second SOP
to the first SOP; and
a polarization switch subsystem operable to receive first
and second light bundles from the first and second light paths
respectively, and to selectively translate both the polarization
states of the first and second light bundles to one of a first
output SOP and a second output SOP.

18. A method for stereoscopic image projection, comprising:
receiving randomly-polarized light from a projector;
directing first state of polarization (SOP) light on a first
light path;
directing second SOP light on a second light path;
transforming the second SOP light on the second light
path to first SOP light; and
selectively translating the first SOP light on both light
paths to one of a first output SOP and a second output SOP.
Id. at 7:65–8:11, 9:7–10:4 (emphases added).

IPR2015-00877
Patent 8,220,934 B2

7

C. References Relied Upon
Petitioner relies on the following references:
1

Reference Date Exhibit
Svardal U.S. Patent No. 6,547,396 B1 Apr. 15, 2003

Ex. 1004
Bierhuizen U.S. Patent No. 6,839,095 B2 Jan. 4, 2005

Ex. 1005
D. The Asserted Grounds
Petitioner asserts the following grounds of unpatentability:
Reference(s) Basis Claims Challenged
Svardal § 102(b) 1–6
Svardal and Bierhuizen
(first rationale)
2
§ 103(a) 1–6
Svardal § 103(a) 1, 2, 6–11, and 18–20
Svardal and Bierhuizen
(second rationale)
3
§ 103(a) 1, 2, and 6–11

1
Petitioner also relies on the Declaration of Matthew S. Brennesholtz
(Ex. 1003).
2
Petitioner presents two different theories of obviousness based on Svardal
and Bierhuizen. This theory relies on the embodiment of Svardal’s Figure 3.
3
Petitioner presents two different theories of obviousness based on Svardal
and Bierhuizen. This theory relies on the embodiment of Svardal’s Figure 3,
as well as the embodiment of Svardal’s Figure 6.
IPR2015-00877
Patent 8,220,934 B2

8

II. ANALYSIS
A. Claim Construction
The Board interprets claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1277 (Fed. Cir. 2015). Even under the rule of broadest
reasonable interpretation, claim terms generally are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in
controversy need to be construed, and only to the extent necessary to resolve
the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999). In the context of this case, we need not construe any
claim term expressly.
B. Alleged Anticipation of Claims 1–6 by Svardal
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). While the elements must be arranged or combined in the same way
as in the claim, “the [prior art] reference need not satisfy an ipsissimis verbis
test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).

IPR2015-00877
Patent 8,220,934 B2

9

Moreover, prior art references must be “considered together with the
knowledge of one of ordinary skill in the pertinent art.” In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). It is proper to take into account not
only specific teachings of the reference, but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom. In re
Preda, 401 F.2d 825, 826 (CCPA 1968).
The term “cleanup polarizer” does not appear in any claim, but is used
many times in the Specification of the ’934 patent, as well as in Svardal.
Our analysis depends on the meaning of “cleanup polarizer” as would be
understood by one with ordinary skill in the art. Petitioner proposes that
“cleanup polarizer” should be understood as “an optical device which
removes undesired polarization characteristics from light having one
predominate polarization state of potentially insufficient purity.” Pet. 14.
Patent Owner agrees with Petitioner’s proposed construction for purposes of
this proceeding. Prelim. Resp. 18.
For purposes of this Decision, we apply Petitioner’s proposed
construction for the term “cleanup polarizer.”
4

Svardal
Svardal’s disclosure is directed to a stereographic projection system.
Ex. 1004, Abstr. Petitioner relies on the embodiment of Svardal’s Figure 3,
which builds on an embodiment shown in Figure 2, reproduced below:

4
Although we adopt Petitioner’s construction for purposes of this Decision,
we do not express an opinion on whether one of ordinary skill in the art
would agree with Petitioner’s proposal.
IPR2015-00877
Patent 8,220,934 B2

10

Figure 2 is a schematic diagram of a first embodiment of Svardal’s
projection system. Optical system 20 includes light source 22 configured to
produce beam of light 23. Id. at 3:50–51. Optical system 20 also may
include filter 24, such as an infrared filter or an ultraviolet filter, to filter out
unwanted parts of the emission spectra of the light source. Id. at 57–60.
Light beam 23 may be directed through color wheel 26, which imparts
color into the light by use of color filters. Id. at 3:61–4:3. Light beam 23
also may be passed through integrator 28, which levels the intensity
distribution of beam 23 across the width of the beam. Id. at 4:22–26.
Thereafter, light beam 23 may be directed, through one or more relay lenses
30 or mirrors 32, or both, to image engine 34. Id. at 4:46–49.
Image engine 34 is described as follows:
Image engine 34 of the depicted embodiment is
configured to project the left-eye image and right-eye image via
light of different polarities. In FIG. 2, this is accomplished via
the use of a polarizing beam splitter 36 to split beam of light 23
into a first beam of a first polarity, indicated by solid ray 38,
and a second beam of a second polarity, indicated by dashed
ray 40. First polarized beam 38 is then directed toward a left
IPR2015-00877
Patent 8,220,934 B2

11

image-producing element 42, and second polarized beam 40 is
directed toward a right image-producing element 44.
* * *
When left image beam 38 strikes left image-producing
element 42, selected portions of the beam that strike activated
pixels on the LCOS [liquid crystal on silicon] panel are
optically rotated. The reflective backing of the panel then
reflects left image beam 38 back toward polarizing beam filter
36. Optically rotated portions of left image beam 38 may then
be reflected by polarizing beam 36 splitter toward projection
lens 14, while unrotated portions of the beam are not reflected
toward the projection lens. Likewise, when right image beam
40 strikes right image-producing element 44, selected portions
of the right image beam that strike active pixels are optically
rotated. The optically rotated portions of right image beam 40
then may pass through polarizing beam splitter 36 and through
projection lens 14.
Id. at 4:60–5:59.
The embodiment shown in Figure 2 is configured to project the left-
eye image and right-eye image onto the viewing surface at the same time.
Id. at 6:17–18. In another embodiment, as shown in Figure 3, the left-eye
image and the right-eye image are projected onto the viewing surface in an
alternating manner. Id. at 6:17–23. The frequency of the alteration between
the left-eye and right-eye images is sufficiently high for them to appear as a
single stereoscopic image to the human eye. Id. at 6:23–26. Figure 3 is
reproduced below:
IPR2015-00877
Patent 8,220,934 B2

12

Figure 3 is a schematic diagram of another embodiment of Svardal’s
projection system. It includes many of the same components shown in
Figure 2, such as light source 102, light beam 104, UV/IR filter 106, and
color wheel 108. Id. at 6:32–38. It also includes condenser lens 110, lens
arrays 112 and 114, relay lenses 118 and mirrors 120. Id. at 6:39–44. As
compared to the Figure 2 embodiment, the Figure 3 embodiment adds
element 116, which is described in Svardal as “PCA 116” (id. at 6:43),
cleanup polarizer 130 (id. at 6:64–65), and variable retarder 132 (id. at 6:67).
With regard to variable retarder 132, Svardal states:
Typically, variable retarder 132 has at least two states: a
first state in which incident polarized light passes through
without being rotated, and a second state in which incident
polarized light is rotated approximately ninety degrees. Thus,
when variable retarder 132 is in the first state, the beam exiting
the variable retarder has a first polarization that allows it to pass
through polarizing beam splitter 124 as a left image beam 125,
as shown in FIG. 3. Likewise, when variable retarder 132 is in
the second state, the beam exiting the variable retarder has a
second polarization that causes it to be reflected by the
polarizing beam splitter as a right image beam 127 toward right
image-producing element 128, as shown in FIG. 4. In this
IPR2015-00877
Patent 8,220,934 B2

13

manner, optical system 100 enables stereographic image
production through a single projection lens.
Id. at 7:4–18. Svardal does not describe expressly the function and use of
PCA 116. It is stated only that PCA 116 is “for further modifying the beam
of light.” Id. at 6:41–42. In that connection, Svardal refers to a function to
be performed without noting the component performing the function:
The use of variable retarder 132 allows the image
intensity to be increased through polarization recovery.
Polarization recovery is performed by splitting an unpolarized
beam of light into two polarized beams, rotating the
polarization of one beam to match the polarization of the other,
and then recombining the beams into a single polarized beam.
Id. at 7:23–28. As discussed below, Petitioner contends, and Patent Owner
does not dispute, that one with ordinary skill in the art would understand,
from Svardal’s disclosure, that PCA 116 performs the polarization recovery
noted in the text quoted above. The record supports that contention.
Discussion
Claim 1 recites a polarization beam splitter operable to direct first
light bundles having a first state of polarization along a first path, and to
direct second light bundles having a second state of polarization along a
second light path. Ex. 1001, 7:66–8:2. Claim 1 recites a polarization
rotator, located on the second light path, that is operable to translate the
second SOP to the first SOP. Id. at 8:3–5.
Relying on the testimony of Mr. Brennesholtz, Petitioner asserts that
one with ordinary skill in the art would have understood from Svardal’s
disclosure that PCA 116 modifies unpolarized light by using polarization
recovery. Pet. 18. Also, relying on the testimony of Mr. Brennesholtz,
IPR2015-00877
Patent 8,220,934 B2

14

Petitioner asserts that one with ordinary skill in the art would have
understood Svardal as disclosing that PCA 116 includes a polarization beam
splitter, a half wave retarder, and a reflector. Id. at 19. Further, relying on
the testimony of Mr. Brennesholtz, Petitioner asserts that one with ordinary
skill in the art would have understood from Svardal’s disclosure that
PCA 116 performs: (1) splitting an unpolarized beam of light into two
polarized beams on different paths by use of a polarized beam splitter within
PCA 116, (2) rotating the polarization of one beam to match the polarization
of the other beam, by use of the half-wave retarder as a rotator, within
PCA 116, and (3) recombining the beams into a single polarized beam by
use of a reflector within PCA 116. Id. at 18–19.
According to Petitioner, PCA 116 necessarily, and, thus, inherently,
includes a polarizing beam splitter, a half-wave retarder (as a rotator), and a
reflector, for performing the polarization recovery steps of splitting a beam
by polarization, rotating the polarization of one split beam to match the
polarization of the other split beam, and recombining the two beams. Id. at
19. That contention is not disputed by Patent Owner.
We are persuaded sufficiently by Petitioner that Svardal discloses the
above-noted elements of claim 1. However, claim 1 further recites: “a
polarization switch subsystem operable to receive first and second light
bundles from the first and second light paths, respectively, and to selectively
translate both the polarization states of the first and second light bundles to
one of a first output SOP and a second output SOP.” Ex. 1001, 8:6–10
(emphasis added). We are not persuaded sufficiently by Petitioner that the
italicized portion of the above-quoted limitation is disclosed by Svardal.
IPR2015-00877
Patent 8,220,934 B2

15

Petitioner regards variable retarder 132 in Svardal’s Figure 3 as the
claimed polarization switch subsystem. Pet. 23. According to Petitioner,
variable retarder 132 receives from PCA 116 the two polarized light beams
after the polarization of one of the beams has been rotated to match the
polarization of the other. Id. Even assuming that as true, Petitioner does not
account for the requirement that the polarization switch subsystem is
operable to receive first and second light bundles from the first and second
light paths, respectively. For instance, Petitioner acknowledges that the
output from PCA 116 is a single beam of polarized light. Id. at 20. As
discussed above, the two separate beams of light generated within PCA 116,
on two different light paths, are recombined into a single beam on a single
path prior to exiting PCA 116. The Petition identifies no disclosure of
anything other than a single polarized beam as outputted by PCA 116.
Furthermore, as is noted by Patent Owner, the output light beam from
PCA 116 is not provided immediately to variable retarder 132. Prelim.
Resp. 24. Rather, it is passed through lens 118, reflected by mirror 120, and
then acted on by clean-up polarizer 130, prior to reaching variable
retarder 132. Ex. 1004, Fig. 3. Patent Owner correctly notes that Svardal’s
description of light traveling from the output of PCA 116 to the input of
variable retarder 132 refers only to a single beam, i.e., beam 104. Prelim.
Resp. 24; see Ex. 1004, 6:43–54. To the extent that there are separate light
paths for multiple beams within PCA 116, Petitioner has not shown that the
paths extend beyond PCA 116 to components downstream of PCA 116.
It is important to note that the pertinent limitation of claim 1 refers to
the polarization switch subsystem being operable to receive first and second
IPR2015-00877
Patent 8,220,934 B2

16

light bundles from first and second light paths, “respectively.” Even under
the rule of broadest reasonable interpretation, that limitation is not met when
what is received by the variable retarder, as the polarization switch
subsystem, is a single polarized light beam traveling on a single light path.
Construing the limitation broadly to cover receiving a single beam on a
single light path is unreasonable, in the context of the Specification.
Each of claims 2, 3, and 6 depends from claim 1, and each of claims 4
and 5 depends from claim 3. For the foregoing reasons, Petitioner has not
shown a reasonable likelihood that it would prevail in establishing that any
of claims 1–6 of the ’934 patent is unpatentable, under 35 U.S.C. § 102(b),
as anticipated by Svardal.
C. Alleged Obviousness of Claims 1–6
over Svardal and Bierhuizen (first rationale)
Alternatively, rather than relying on its assertion that PCA 116
inherently includes a polarization beam splitter, a polarization rotator, and a
reflector, Petitioner relies on Bierhuizen’s disclosure of a polarization
conversion assembly (“PCA”) to establish the structure and operation of
PCA 116 in Svardal. Pet. 25–30. Petitioner notes that Bierhuizen and the
’934 patent were issued to the same entity and that Benny S. Svardal is a
common inventor for the two patents. Id. at 26.
Petitioner’s reliance on Bierhuizen to establish the internal structure
of PCA 116 in Svardal, however, does not cure the deficiency discussed
above, with respect to the limitation in claim 1 that the polarization switch
subsystem is operable to receive first and second light bundles from the first
and second light paths, respectively. Accordingly, Petitioner has not shown
IPR2015-00877
Patent 8,220,934 B2

17

a reasonable likelihood that it would prevail in establishing the
unpatentability of any of claims 1–6 as rendered obvious over Svardal and
Bierhuizen.
D. Alleged Obviousness of Claims 1, 2,
6–11, and 18–20 as Obvious over Svardal
This alleged ground of obviousness relies on a combination of
Svardal’s Figure 6 embodiment and Svardal’s Figure 3 embodiment.
Pet. 34. Specifically, Petitioner starts with Svardal’s Figure 6 embodiment,
and proposes to make a modification based on the teachings of Svardal’s
Figure 3 embodiment, and also on a general statement in Svardal that
“polarization recovery techniques may be used to increase the intensity of
the projected image.” Id. Each of claims 2 and 6–11 depends, directly or
indirectly, from claim 1. Each of claims 19 and 20 depends from claim 18.
Figure 6 of Svardal is reproduced below:

Figure 6 shows a schematic diagram of an embodiment of the stereoscopic
projection system of Svardal. Ex. 1004, 2:63–65. Light source 222
produces beam 223, which passes through UV/IR filter 224, color
wheel 226, integrator 228, relay lenses 230, and mirror 232, much the same
IPR2015-00877
Patent 8,220,934 B2

18

as in the Figure 2 embodiment described above. Id. at 7:50–58. Beam 223
then is directed to image-producing element 234. Id. at 58.
Image-producing element 234 is a reflective element, such as a
micromirror device (DMD), a liquid crystal on silicon (LCOS) panel, or any
other suitable image-producing device, such as a cathode ray tube or a
transmissive LCD panel. Id. at 7:62–67. Downstream of the image-
producing element is field lens 238 and projection lens 204. Id. at 8:4–7.
Downstream of projection lens 204 is stereographic adaptor 206. Id.
at 8:5–7. As shown, it is removable from projection lens 204, but it may be
configured as non-removable from the projection lens if that is desired. Id.
at 8:41–43. Adaptor 226 includes, in order of proximity to the projection
lens, clean-up polarizer 240, which acts on beam 223 as it exits projection
lens 204, and variable retarder 242, which changes the polarity of the light in
an alternating manner. Id. at 8:7–12. The coordination between image-
producing element 234 and variable retarder 242 is described as follows:
Image-producing element 234 is configured to produce
alternating left-eye and right-eye images, in a manner
synchronized with the changes in state of variable retarder 242.
In other words, image-producing element 234 is configured to
produce the left-eye image whenever variable retarder 242 is in
the first [state], and to produce the right-eye image whenever
variable retarder 242 is in the second state. In this manner, left-
eye and right-eye images are projected onto the viewing surface
in an alternating manner. When the frequency of alternation is
sufficiently fast, the left-eye and right-eye images may appear
to a viewer to compose a single stereographic image.
Id. at 8:28–39.
IPR2015-00877
Patent 8,220,934 B2

19

Claim 1 recites a PBS operable to direct first light bundles having a
first SOP along a first light path, and direct second light bundles having a
second SOP along a second light path, and a polarization rotator located on
the second light path, which is operable to translate the second SOP to the
first SOP. Ex. 1001, 7:66–8:5. Similarly, claim 18 recites the steps of (1)
directing first SOP light on a first light path, (2) directing second SOP light
on a second light path, and (3) transforming the second SOP light on the
second light path to first SOP light. Id. at 9:10–10:2. To satisfy these claim
limitations, Petitioner proposes to add a device that performs polarization
recovery, such as PCA 116 in the Figure 3 embodiment of Svardal, to the
Figure 6 embodiment of Svardal, between projection lens 204 and clean-up
polarizer 240. Pet. 41–42.
At the outset, we note that even assuming that it would have been
rendered obvious to one with ordinary skill in the art to add PCA 116 from
the Figure 3 embodiment to the Figure 6 embodiment between projection
lens 204 and clean-up polarizer 240, Petitioner still has not accounted
sufficiently for this limitation of claim 1: “a polarization switch subsystem
operable to receive first and second light bundles from the first and second
light paths respectively.” Ex. 1001, 8:6–8 (emphasis added). The reason
already is explained above, in the discussion of the alleged anticipation of
claims 1–6 by Svardal. Specifically, PCA 116 of the Figure 3 embodiment
outputs only a single polarized beam, and, thus, would not provide first and
second light bundles on first and second light paths, respectively, to variable
retarder 242 as the polarization switch subsystem, as is required by claim 1.
IPR2015-00877
Patent 8,220,934 B2

20

In any event, for reasons discussed below, Petitioner’s contention that
it would have been rendered obvious to one with ordinary skill in the art to
add PCA 116 from the Figure 3 embodiment to the Figure 6 embodiment,
between projection lens 204 and clean-up polarizer 240 is unpersuasive and
not sufficiently supported by evidence.
According to Petitioner, even though the Figure 6 embodiment is
described as including clean-up polarizer 240, whether reference
numeral 240 really is a clean-up polarizer
5
or simply a polarizer that acts on
unpolarized light depends on the choice of the particular imaging
element 234. Pet. 39. For instance, Petitioner contends that, in the case
where the imaging element is an LCOS, clean-up polarizer 240 would really
be a “clean-up polarizer,” but that, in the case where imaging element 234 is
a digital micromirror device (DMD), the reference to element 240 as a
“clean-up polarizer” is inaccurate, e.g., a mistake, and that what is
referenced as a clean-up polarizer would be just a polarizer that acts on
randomly polarized image light. Id. The bases for Petitioner’s contention
are (1) that clean-up polarizers receive and act on input light that has just
one predominate polarization state, and (2) that LCOS, as the imaging
element, outputs light predominately having just one polarization state, but
DMD, as the imaging element, outputs randomly polarized light. Id.
Petitioner asserts that in the case where a referenced clean-up
polarizer is not a clean-up polarizer, but a polarizer instead, one with

5
The parties agree that a clean-up polarizer necessarily receives and acts on
light that already is predominately polarized. Pet. 14; Prelim. Resp. 18.
IPR2015-00877
Patent 8,220,934 B2

21

ordinary skill in the art would have known to add PCA 116 from the
Figure 3 embodiment to the Figure 6 embodiment between imaging
element 234 and clean-up polarizer 240, immediately upstream of clean-up
polarizer 240. Id. at 41. Petitioner’s explanation is that a polarizer would
cut light intensity by up to 50%, which is undesirable, that Svardal
acknowledges the benefit of applying polarization recovery as a solution to
the problem of reduced light intensity due to the process of polarization, and
that PCA 116 in the Figure 3 embodiment performs polarization recovery.
Id. at 39–41. Petitioner further notes that inserting PCA 116 would allow
clean-up polarizer 240 to act as a “clean-up polarizer,” as it is purported to
be, because it would act on the output of PCA 116 and enhance the
polarization achieved by PCA 116. Id. at 41.
As discussed below, Petitioner’s reasoning for adding PCA 116 from
Svardal’s Figure 3 embodiment to Svardal’s Figure 6 embodiment, at a
location just upstream of clean-up polarizer 240, is not based on sufficiently
rational underpinnings, but on hindsight in light of Patent Owner’s claimed
invention.
First, Petitioner rewrites the disclosure of Svardal, on the basis of an
alleged inaccuracy or mistake in the description within Svardal, and does not
sufficiently explore alternative ways to read Svardal’s disclosure that do not
manifest an inaccuracy or mistake. Second, Petitioner regards Svardal’s
Figure 6 as an engineering blueprint used for production purposes, rather
than as what it actually is, i.e., a schematic diagram that shows the
significant components, but may not show all components, that one with
ordinary skill in the art would recognize as present in a more detailed
IPR2015-00877
Patent 8,220,934 B2

22

production blueprint. These two incorrect premises combine to create the
erroneous basis on which Petitioner proposes its rationale to add PCA 116
from Svardal’s Figure 3 embodiment to Svardal’s Figure 6 embodiment,
immediately upstream of clean-up polarizer 240. Petitioner’s approach and
reasoning reflect reliance on hindsight in view of Patent Owner’s claimed
invention, which is inappropriate for an obviousness analysis.
More specifically, Svardal’s disclosure is not that there may or may
not be clean-up polarizer 240, in the Figure 6 embodiment, depending on
what particular imaging element 234 is used.

Rather, it is that clean-up
polarizer 240 is there, in the Figure 6 embodiment, with no stated
contingencies or dependence on the specific choice for imaging element 234.
Thus, if the presence of clean-up polarizer 240 indicates that input light
supplied to the clean-up polarizer already has one predominate polarization,
which is the position Petitioner put forth regarding the meaning of a clean-
up polarizer, then Petitioner should consider whether an initial polarizer also
is present in the system, albeit not expressly illustrated in Figure 6. Neither
Petitioner nor its declarant, Mr. Brennesholtz, sufficiently explored that
scenario. The conclusion that the reference in Svardal’s disclosure to clean-
up polarizer 240 in the Figure 6 embodiment is inaccurate at least for one
selection of the imaging element is not well supported.
Svardal’s disclosure supports the position that not all components of
its projection system may be expressly illustrated in its figures. For
instance, Svardal states in connection with its Figure 2 embodiment that:
[A]n image engine using LCOS panels (or ordinary liquid
crystal panels) typically also includes a polarizer positioned
IPR2015-00877
Patent 8,220,934 B2

23

optically upstream of the liquid crystal material to polarize the
light beam before it is directed onto the LCOS panel.
Ex. 1004, 5:14–18. In that regard, no such polarizer is actually illustrated in
Figure 2. Thus, it is incorrect to assume that a polarizer, if present at all in a
system, necessarily must be illustrated in a corresponding figure.
Furthermore, Svardal describes in connection with its Figure 6 embodiment
that clean-up polarizer 240 and variable retarder 244 may be located
upstream of imaging element 234, rather than downstream as illustrated in
the Figure. Id. at 8:44–51. Thus, an initial polarizer also may be present
upstream of imaging element 234, regardless of which imaging element is
selected.
Petitioner’s approach to reading Svardal’s disclosure appears not to be
focused on making sense of that disclosure, even if it is possible to do so.
Petitioner’s assertion, that Svardal’s disclosure with regard to its Figure 6
embodiment is inaccurate or a mistake in the event that a DMD is selected as
imaging element 234, is not sufficiently supported by persuasive reasoning.
We determine that the proposed combination of the Figure 3 embodiment of
Svardal with the Figure 6 embodiment of Svardal is not based on rational
underpinnings but, evidently, on hindsight in light of Patent Owner’s
claimed invention.
For the foregoing reasons, Petitioner has not shown a reasonable
likelihood that it would prevail in establishing the unpatentability of any of
claims 1, 2, 6–11, and 18–20 as rendered obvious over Svardal.

IPR2015-00877
Patent 8,220,934 B2

24

E. Alleged Obviousness of Claims 1, 2, and 6–11
over Svardal and Bierhuizen (second rationale)
This alleged ground of unpatentability adds to the ground discussed
above based on alleged obviousness of the same claims over Svardal alone.
Rather than relying on its assertion that MCA 116 inherently includes a
polarization beam splitter, a polarization rotator, and a reflector, Petitioner
relies on Bierhuizen’s disclosure of a PCA to establish the structure and
operation of PCA 116 in Svardal. Pet. 53. Petitioner’s reliance on
Bierhuizen to establish the internal structure of Svardal’s PCA 116,
however, does not cure the deficiency discussed above, with respect to the
limitation in claim 1 that the polarization switch subsystem is operable to
receive first and second light bundles from the first and second light paths,
respectively. It further does not cure the deficiencies discussed above, with
respect to inadequate motivation to combine the embodiment of Svardal’s
Figure 3 with the embodiment of Svardal’s Figure 6, in the manner proposed
by Petitioner.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing the unpatentability of any of claims 1, 2, and
6–11 as rendered obvious over Svardal and Bierhuizen.
III. CONCLUSION
Petitioner has not established a reasonable likelihood that it would
prevail in showing the unpatentability of any of claims 1–11 and 18–20 of
the ’934 patent.
IPR2015-00877
Patent 8,220,934 B2

25

IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no inter partes review is
instituted as to any claim of the ’934 patent.

IPR2015-00877
Patent 8,220,934 B2

26

For PETITIONER:
Evan Finkel
Roger Wise
evan.finkel@pillsburylaw.com
roger.wise@pillsburylaw.com

For PATENT OWNER:
Brian C. McCormack
William D. McSpadden
brian.mccormack@bakermckenzie.com
william.mcspadden@bakermckenzie.com