MasterImage 3D, Inc.v.RealD Inc.

Patent Trial and Appeal Board

Apr 22, 2015

12979054 (P.T.A.B. Apr. 22, 2015)

Trials@uspto.gov Paper 16
Tel: 571-272-7822 Entered: April 22, 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 IPR2015-00036
Patent 7,959,296 B2
____________

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

ARPIN, Administrative Patent Judge.

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

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I. INTRODUCTION
On October 7, 2014, MasterImage 3D, Inc. and MasterImage 3D Asia,
LLC (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
an inter partes review of claims 1, 2, and 5–20 of Patent No. US
7,959,296 B2 (Ex. 1001, “the ’296 patent”). RealD Inc. (“Patent Owner”)
filed a Preliminary Response (Paper 7, “Prelim. Resp.”) on January 29,
2015. We have jurisdiction under 35 U.S.C. § 314,
1
which provides that an
inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a).
Petitioner relies upon the following references and declaration in
support of its grounds for challenging the identified claims of the
’296 patent:
Exhibit Nos. References and Declaration
1002 Patent No. US 6,190,013 B1 to Tani et al., issued on
February 20, 2001 (“Tani”)
1003 Patent Application Publication No. WO 2006/038744 A1 to
Kim et al., published on April 13, 2006 (“Kim”)
1005 Patent No. US 5,164,854 to Takanashi et al., issued on
November 17, 1992 (“Takanashi”)
1006 Patent Application Publication No. JP H05-73116 to
Himuro, published on October 13, 1993 (“JP’116”)2
1009 Declaration of Matthew S. Brennesholtz (“Brennesholtz
Decl.”)

1
See Section 6(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
No. 112-29, 116 Stat. 284, 300 (2011).
2
Contrary to the requirement of 37 C.F.R. § 42.63(b), Petitioner failed to
provide an affidavit attesting to the accuracy of the translation of JP’116.
We need not decide the ramifications, if any, of such omission because we
deny institution for the reasons discussed herein.
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Petitioner asserts that the challenged claims are unpatentable on the
following grounds (Pet. 2–3, 13–54):
Grounds References Challenged Claims
35 U.S.C. § 103(a) Tani and JP’116 1, 2, 5–14, 18, and 19
35 U.S.C. § 103(a) Kim and Takanashi 1, 2, and 5–20

Upon consideration of the Petition, including its supporting evidence,
and the Preliminary Response, we determine that Petitioner has not
demonstrated a reasonable likelihood of prevailing in showing the
unpatentability of any of claims 1, 2, and 5–20 of the ’296 patent.
Accordingly, we do not institute an inter partes review for any of the
challenged claims of the ’296 patent.
A. Related Proceedings
Each of Petitioner and Patent Owner identifies the following related
case involving the ’296 patent: RealD Inc. v. MasterImage 3D, Inc. and
MasterImage 3D Asia, LLC, No. 2:14-CV-02304 (C.D. Cal.; Western Div.),
filed March 26, 2014. Pet. 1; Paper 4, 1. Patent Owner also identifies the
following related case: In the matter of Certain Three-Dimensional Cinema
Systems and Components Thereof, Inv. No. 337-TA-939 (USITC). Paper 6,
1. Further, Patent Owner identifies the following proceedings before the
U.S. Patent and Trademark Office: IPR2015-00033, IPR2015-00035, and
IPR2015-00876 involving a related patent, Patent No. US 7,857,455 B2
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(Ex. 1008, “the ’455 patent”)
3
; IPR2015-00038 involving related patent,
Patent No. US 7,905,602 B2; and IPR2015-00040 and IPR2015-00877
involving related patent, Patent No. US 8,220,934 B2. Paper 15, 1–2.
B. The ’296 Patent
The ’296 patent is directed to apparatus and methods for increasing
“overall brightness in a projected stereoscopic[/stereographic
4
] image using
polarization for image selection,” by creating “a dual path arrangement that
can greatly increase the brightness of the image perceived by the viewer – in
essence almost doubling the amount of light energy projected on the screen.”
Ex. 1001, col. 3, ll. 33–38. According to the ’296 patent:
It is therefore beneficial to address and overcome the
brightness issue present in previously known stereoscopic
image selection techniques for projection, and to provide a
stereoscopic projection apparatus or design having improved
brightness over devices exhibiting the light loss described
herein.
Id. at col. 1, ll. 44–49.
The ’296 patent addresses this problem by creating a dual path
arrangement that essentially doubles the amount of light energy projected on
the screen. Id. at col. 3, ll. 35–38. The fundamental components of such
dual path apparatus are a polarization beam splitter, a reflector, and a rotator,
e.g., a retarder. Figure 3 of the ’296 patent is reproduced below:

3
The ’296 patent issued from an application that is a continuation of the
application that issued as the ’455 patent.
4
Petitioner explains that the term “stereographic” is used in some references
to describe a “stereoscopic” system, and, thus, Petitioner uses the terms
interchangeably. Pet. 6, n.2.
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Id., Fig. 3. Figure 3 depicts light from imaging surface 301 incident on
polarization beam splitter 303. Id. at col. 5, ll. 20–33. Beam splitter 303
splits the light into a P-polarized component and an S-polarized component.
Id. at col. 5, ll. 33–37. Light of P-polarization passes to screen 309 while
light of S-polarization is directed to half wave retarder 306 where light of
S-polarization is rotated 90 degrees. Id. at col. 5, ll. 41–42. The rotated
light of S-polarization then is reflected to surface 309. Id. at col. 6, ll. 28–
30. If no other effect is imposed, the light from surface 301 sent to the
screen is polarized, without the light loss associated with such polarization.
See id. at col. 5, ll. 49–55.
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Figure 6C of the ’296 patent is reproduced below:

Id., Fig. 6C. Figure 6C depicts an embodiment of an apparatus according to
the recitations of independent claims 1 and 18.
As the ’296 patent states:
[T]he purpose of FIG. 6C . . . is to provide a simple static linear
or circular polarizer design that obviates the need for
polarization modulators . . . Rather than having a uniform
circularly polarized pair of projection devices . . . the dual
projection system of FIG. 6C produces images having
orthogonal projection axes thereby producing the desired
stereoscopic effect, and thus different images are projected by
imaging surfaces 6101 and 6151.
Id. at col. 10, l. 60–col. 11, l. 5 (emphasis added). Essentially, Figure 6C
depicts an apparatus in which a pair of the fundamental components of
Figure 3 are combined.
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Specifically, as the ’296 patent states:
From FIG. 6C, orthogonal images may be sent from each
projector in the form of light energy provided from imaging
surface [6101]/6151 through a projection lens 6102/6152 and
enters the splitter, or polarizing splitter 6103/6153. Again, the
polarizing splitter 6103/6153 may be any appropriate polarizing
beamsplitter such as a glass prism or MacNeille prism, or a
wire grid polarizer, or other device able to create separate P and
S polarized beams. The P beam becomes polarized 6120/6130
when transmitted straight through the polarizing splitter
6103/6153 along a primary path and the S beam becomes
polarized 6121/6131 when it is reflected from the splitter along
a secondary path in the direction shown. The reflected beam or
secondary path beam is reflected toward the projection screen
608 using a prism or front surface planar mirror 6104/6154.
The path length from the projector lens 6101/6151 to the
projection screen 608 is increased by the length of the offset
beam. The polarized primary beam P on one projector is
rotated using a retarder 6107. On the opposite projector, the
opposite beam must be rotated, and in this case the secondary
beam S is rotated using a retarder 6157. Note that a retarder
6107/6157 may be placed in either the transmitted or reflected
beam path.
Id. at col. 11, ll. 5–27. Path length differences between the respective first
and second light paths may be corrected, and optional clean up polarizers
may be included. Id. at col. 11, ll. 28–34.
C. Illustrative Claims
Of the challenged claims, claims 1 and 18 are the only independent
claims and are reproduced below:
1. Apparatus for projecting stereoscopic images,
comprising:
a first polarizing splitting element configured to receive
first image light energy and split the first image light energy
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received along a first primary path and along a first secondary
path;
a first reflector configured to receive one of first primary
path of light energy and first secondary path of light energy and
to reflect the one of first primary path of light energy and first
secondary path of light energy toward a surface;
a first rotator configured to receive one of first primary
path of light energy and first secondary path of light energy and
to rotate the one of first primary path of light energy and first
secondary path of light energy;
a second polarizing splitting element configured to
receive second image light energy and split the second image
light energy received along a second primary path and along a
second secondary path;
a second reflector configured to receive one of second
primary path of light energy and second secondary path of light
energy and to reflect the one of second primary path of light
energy and second secondary path of light energy toward a
surface; and
a second rotator configured to receive one of second
primary path of light energy and second secondary path of light
energy and to rotate the one of second primary path of light
energy and second secondary path of light energy.

18. A method of projecting stereoscopic images, comprising:
receiving first image light energy;
splitting the first image light energy received along a first
primary path and along a first secondary path;
receiving the first secondary path of light energy and
directing the first secondary path of light energy toward a
surface;
receiving one of the first primary path of light energy and
first secondary path of light energy and rotating the one of first
primary path of light energy and first secondary path of light
energy;
receiving second image light energy;
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splitting the second image light energy received along a
second primary path and along a second secondary path;
receiving second secondary path light energy and
directing second secondary path light energy toward a surface;
and
receiving one of the second primary path of light energy
and second secondary path of light energy and rotating the one
of second primary path of light energy and second secondary
path of light energy.
Ex. 1001, col. 12, ll. 34–62 (emphases added); col. 14, ll. 17–37
(emphases added).
II. ANALYSIS
A. Claim Construction
Principles of Law
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Technologies LLC, 778 F.3d 1271, 1281–82 (Fed. Cir.
2015) (“Congress implicitly adopted the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by
PTO regulation”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,766 (Aug. 14, 2012). Claim terms also 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. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). If a patentee acted as his or her own
lexicographer, the definition must be set forth in the specification with
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reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs
Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
Only terms which are in controversy need to be construed, and then
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). Petitioner
proposes an interpretation for these terms: (1) “polarization beam splitter,”
(2) “rotator,” (3) “retarder,” and (4) “cleanup polarizer.” Pet. 4–6. Patent
Owner disagrees with Petitioner’s proposed constructions of these terms and
contends that Petitioner’s arguments in support of its constructions are
conclusory. Prelim. Resp. 17.
Petitioner’s proposed constructions are entirely functional. When a
claim limitation is defined in purely functional terms, it raises difficult
questions. Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244,
1255 (Fed. Cir. 2008). Here, the ’296 patent has not defined these terms in
purely functional terms, and the parties have not provided sufficient reasons
to regard each as a purely functional limitation. On this record, we see no
reason to accord each term a purely functional meaning. Rather, on this
record, each of these terms identifies a structural device known to and
recognizable by one with ordinary skill in the art.
Finally, we agree with Patent Owner that Petitioner does not rely on
these proposed constructions in support of its arguments relating to either of
the asserted grounds for unpatentability. Prelim. Resp. 17–18. Because we
only need construe terms which are in controversy, and then only to the
extent necessary to resolve the controversy, no additional construction of
these terms is necessary.
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“image light energy”
Petitioner argues that “image light energy” should be construed as
“light bearing an image such that when the light reaches a screen the image
is viewable.” Pet. 6. In support of this construction, Petitioner relies on the
testimony of Mr. Brennesholtz (Ex. 1009 ¶ 24) and disclosure of the
’455 patent (Ex. 1008, col. 9, ll. 43–64), the parent of the ’296 patent.
Pet. 6. However, the portion of the Specification of the ’455 patent relied
upon by Petitioner does not describe an image borne by the light as viewable
on a screen. Instead, the cited text only describes the projector as the source
of the image sent “in the form of light energy provided from imaging
surface 621.” Ex. 1008, col. 9, ll. 46–47.
Patent Owner contends that Petitioner’s proposed construction is too
narrow. Prelim. Resp. 18–19. Instead, Patent Owner asserts that the plain
and ordinary meaning of this term, consistent with the Specification of the
’296 patent, is “light that carries imagery.” Id. at 18; see Ex. 1001, col. 9,
ll. 60–63. Petitioner and Patent Owner appear to agree that image light
energy bears an image or images, e.g., imagery. Unlike Petitioner’s
construction, however, Patent Owner’s proposed construction is not
dependent on the image borne by the light being viewable on a screen. We
are not persuaded that Petitioner demonstrates that the light must bear “an
image” or that “the image” borne by the light must be “viewable” when the
light reaches a screen. Pet. 6; see Prelim. Resp. 18–19. For purposes of this
decision, we are persuaded that Patent Owner’s construction is the broadest
reasonable construction, consistent with the Specification of the ’296 patent.
.
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B. Grounds for Unpatentability Based on Obviousness
1. Overview
Petitioner argues that some or all of claims 1, 2, and 15–20 of the
’296 patent would have been rendered obvious over Tani and JP’116 or Kim
and Takanashi. Pet. 3. To support these grounds for unpatentability,
Petitioner presents the testimony of Mr. Brennesholtz (Ex. 1009). On this
record, we are not persuaded that Petitioner has demonstrated a reasonable
likelihood of prevailing in its challenges to any of claims 1, 2, and 15–20, as
rendered obvious over Tani and JP’116 or over Kim and Takanashi.
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter[,] as a whole[,] would have been obvious at the time
the invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations.
5
Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966).

5
Patent Owner does not contend, in its Preliminary Response, that there are
secondary considerations present, which would suggest that the challenged
claims are not obvious over the asserted combinations of references.
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2. Person of Ordinary Skill in the Art

Petitioner’s declarant, Mr. Bennesholtz, defines a person of ordinary
skill in the art (“POSITA”) as
someone with a good working knowledge of optics and display
systems in general, and stereoscopic [or stereographic]
projection systems in particular. The person would have gained
this knowledge through an undergraduate or graduate education
in physics, optics, or a comparable field, in combination with
further training and several years of practical working
experience.
Ex. 1009 ¶ 10; see also Pet. 4 (adopting this definition). Based on
Exhibit 1010, Mr. Brennesholtz appears to meet or exceed these
requirements for qualification as a POSITA. At this time, Patent Owner
does not propose an alternative definition or challenge Petitioner’s
declarant’s definition for a POSITA. For purposes of this decision, we adopt
Petitioner’s definition of a POSITA.
3. Claims 1, 2, 5–14, 18, and 19 as Obvious over Tani and JP’116
a. Tani
Tani is directed to a polarized beam splitter (“PBS”), and a projector
and illumination optical system including the polarized beam splitter.
Ex. 1002, col. 1, ll. 14–18. It is an object of Tani to provide an illumination
optical system that can illuminate a specimen brightly with visible light
having an aligned polarization direction. Id. at col. 2, ll. 39–42. To provide
an image for projection onto a screen, the output of the polarized beam
splitter is used as illuminating light on liquid crystal panels on which the
image has been formed. Id. at col. 1, ll. 38–63. As a result, the amount of
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light emerging from the liquid crystal panels is increased to make the image
projected on the screen brighter. Id. at col. 14, ll. 45–51. Tani increases
polarized illumination brightness by converting P-polarized light that is split
from illumination light, into S-polarized light, and outputting that together
with the original S-polarized light split from the illumination light. Id. at
col. 13, ll. 20–67.
Tani’s Figure 10, including our annotations, is reproduced below.

Figure 10 illustrates Tani’s illumination optical system 100. Id. at col. 6,
ll. 44–45. System 100 includes light source 101 and parabolic mirror 102.
Id. at col. 12, ll. 64–67. Parabolic mirror 102 reflects light from light
source 101 and directs it towards the PBS. Id. at col. 13, ll. 1–14. The PBS
includes multilayered films 3 and transparent prisms 400. Id. at col. 14,
ll. 57–62. Illumination light from light source 101 is split by the PBS into
P-polarized light and S-polarized light. Id. at col. 14, ll. 62–67. The P-
polarized light then is passed through a half wave plate (labeled) to convert
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its polarization, i.e., to rotate its polarization, to result in S-polarized light.
Ex. 1009 ¶ 26 (citing Ex. 1002, Fig. 10).
Referring to independent claims 1 and 18, Petitioner argues that Tani
teaches a first polarizing splitting element, e.g., polarizing multilayered
films 3 of the PBS, configured to receive light energy and split the light
energy received along a first primary path, e.g., the P-polarized light, and
along a first secondary path, e.g., the S-polarized light. Pet. 14–15 (citing
Ex. 1002, col. 14, ll. 62–67; Fig. 10). Further, Petitioner asserts that Tani
teaches a first reflector, e.g., transparent prism 400, configured to receive
one of first primary path of light energy and first secondary path of light
energy and to reflect the one of first primary path of light energy and first
secondary path of light energy toward a surface. Id. at 15 (citing Ex. 1002,
Fig. 10). In addition, Petitioner contends that Tani teaches a first rotator,
e.g., a half wave plate (labeled), configured to receive one of first primary
path of light energy and first secondary path of light energy and to rotate the
one of first primary path of light energy and first secondary path of light
energy. Id. (citing Ex. 1002, Fig. 10).
Petitioner argues that Tani’s components teach every limitation of
independent claims 1 and 18, respectively, but acknowledges that Tani does
not clearly teach that Tani’s components corresponding to the first
polarizing splitting element, the first reflector, and the first rotator of claim 1
(and to the splitting, directing, and rotating steps of claim 18) may be used
twice, as recited in claims 1 and 18. Pet. 17. Further, Petitioner
acknowledges that Tani’s Figures 10 and 11 teach the application of Tani’s
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components “in conjunction with light before an image was formed.”
6
Id.
(emphasis added). Consequently, in this ground, Petitioner relies on the
combination of the teachings of Tani with those of JP’116 to teach all of the
limitations of claims 1 and 18, as recited. Id. at 17–26, 31–32.
b. JP’116
Tani teaches that its disclosed illumination optical systems are
suitable for use in projection-type stereoscopic television receivers,
producing image light energy, such as those disclosed in JP’116. Id. at 16.
In particular, Tani states that
Although the illumination optical system is constructed
using the inventive polarized beam splitter in the above
description, the polarized beam splitter is not limited to its
application to illumination optical systems. For example, in a
projection type stereoscopic television receiver disclosed in
Japanese Examined Patent Publication No. 5-73116,
P-polarized light and S-polarized light are projected onto a
screen while being overlapped so as to have the same optical
axis by the polarized beam splitter. The inventive polarized
beam splitter can be used as such a polarized beam splitter. By
using the inventive polarized beam splitter, the P- and
S-polarized lights can efficiently be introduced to the screen,
thereby forming a bright image on the screen.
Ex. 1002, col. 15, ll. 1–13 (emphasis added).

6
With respect to claim 18, Petitioner contradicts its earlier statements
regarding Tani, asserting that Tani teaches “receiving first image light
energy.” Pet. 32; see Prelim. Resp. 34; but see Pet. 31 (“The methods as
depicted in Tani Figures 10 and 11 are shown in conjunction with light
before an image was formed.” (emphasis added)).
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Figure 3 of JP’116, including our annotations, is reproduced below:

Figure 3 depicts a multiple projector system for the purpose of projecting
stereoscopic images on screen 4. Ex. 1006, 2; see Pet. 16. Images SL and SR
are projected by cathode ray tubes 1L and 1R, e.g., first and second image
light projectors, through polarization filters 3L and 3R via projection
lenses 2L and 2R, respectively, onto screen 4. Id. A viewer wearing
eyeglasses with perpendicular polarization filters, corresponding to the
polarizations produced by polarization filters 3L and 3R, would perceive
stereoscopic images. Id.
c. Reason to Combine
Petitioner argues that, because Tani expressly discusses the use of its
disclosed illumination optical systems to improve devices disclosed in
Figure 3 of JP’116, a person of ordinary skill in the art would have reason to
substitute the PBS of Figures 10 or 11 of Tani for polarization filters 3L and
3R of JP’116’s Figure 3. Pet. 18–19. Petitioner depicts this substitution in
its modified version of Figure 3 of JP’116, reproduced below:
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Id. at 19. As depicted in the annotated figure, Petitioner argues that a person
of ordinary skill in the art would substitute the PBS, including the half wave
plate, of Tani into the device of JP’116’s Figure 3 between projection
lenses 2L and 2R and screen 4. Id. at 20–21. In particular, Petitioner
argues that
One would be motivated to do so in order to increase the image
brightness of such dual projector systems. Further, the ’3116
publication specifically calls out the problem of reduced
brightness when traditional polarizers are used. Ex. 1006, the
’3116 Application, p. 2. Tani also specifically states that its
system is for use in systems contained in the ’3116 publication,
and Tani’s solution is specifically designed to increase the
brightness of light for systems that need polarization. Ex. 1002,
Tani, 14:63–[15:9].
Id. (citing Ex. 1009 ¶¶ 31–32).
Patent Owner disagrees and notes that, in Figure 3 of JP’116, the light
output from polarization filters 3L and 3R are perpendicular, e.g.,
S-polarization and P-polarization. Prelim. Resp. 31–32. Petitioner’s
proposed modification to the device of Figure 3 of JP’116, however, would
result in the projection of image light on screen 4 having the same
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polarization, e.g., S-polarization.
7
Id. at 30; see Pet. 14–15 (depicting
S-polarized light output from the PBS of Tani’s Figures 10 and 11). Patent
Owner contends that Petitioner’s proposed modification of the device of
JP’116’s Figure 3 would “fail to provide the intended functionality” of that
device. Prelim. Resp. 30–31; see also Ex. 1002, col. 15, ll. 11–13 (“By
using the inventive polarized beam splitter, the P- and S-polarized lights can
efficiently be introduced to the screen, thereby forming a bright image on the
screen.” (emphasis added)). Further, as Patent Owner notes,
Mr. Brennesholtz does not discuss the apparent inconsistency between the
operation the device of JP’116’s Figure 3 and the teachings of the proposed
combination of Tani and JP’116 represented by Petitioner’s modified
version of Figure 3 of JP’116. Prelim. Resp. 31–32 (citing Ex. 1009 ¶¶ 31–
32). We agree. “Although predictability is a touchstone of obviousness, the
‘predictable result’ discussed in KSR refers not only to the expectation that
prior art elements are capable of being physically combined, but also that the
combination would have worked for its intended purpose.” DePuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir.
2009) (citing KSR, 550 U.S. at 415–16); see Plas-Pak Indus., Inc. v. Sulzer
Mixpac AG, No. 2014-1447, 2015 WL 328222, at *2 (Fed. Cir. Jan. 27,
2015) (“[C]ombinations that change the ‘basic principles under which the
[prior art] was designed to operate,’ In re Ratti, 46 C.C.P.A. 976, 270 F.2d

7
Although Petitioner argues that the challenged claims are rendered obvious
by Tani in view of JP’116 (Pet. 3, 10), we are not bound by that
characterization. See In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“[W]e
deem it to be of no significance, but merely a matter of exposition, that the
rejection is stated to be on A in view of B instead of on B in view of A, or to
term one reference primary and the other secondary.”).
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810, 813 (CCPA 1959), or that render the prior art ‘inoperable for its
intended purpose,’ In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), may
fail to support a conclusion of obviousness.”).
We are not persuaded to the contrary by the reference in Tani to the
devices of JP’116. Figure 3 of JP’116 describes a “prior art” device
allegedly improved by the teachings of JP’116. Ex. 1006, 2 (“As light
polarization-type projection-type stereoscopic TVs, conventionally those
shown in Figure 3 have been proposed.” (emphasis added)). We are not
persuaded that Tani clearly refers to the use of its “inventive polarized beam
splitter” with the “prior art” device of JP’116’s Figure 3. Ex. 1002, col. 15,
ll. 1–13.
For the foregoing reasons, we are not persuaded that Petitioner has
demonstrated that a person of ordinary skill in the art would have reason to
combine the teachings of Tani and JP’116, in the manner proposed, to
achieve the recited apparatus and methods of claims 1 and 18 of the
’296 patent, respectively. Each of claims 2, 5–14, and 19, by way of its
dependency, also includes the limitations of claim 1 or claim 18. Therefore,
we are persuaded that Petitioner fails to demonstrate a reasonable likelihood
of prevailing in showing that any of claims 1, 2, 5–14, 18, and 19 are
rendered unpatentable over Tani and JP’116.
4. Claims 1, 2, and 5–20 as Obvious over Kim and Takanashi
a. Kim
Kim describes digital image projection systems and methods for
displaying time sequential 3-D stereoscopic images onto a screen. Ex. 1003,
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Abstract. Such digital image projection systems include a single digital
image projector, a projection optical system, a polarizing optical system, a
shutter, and a digital image-processing unit. Id.; see id. ¶¶ 18–19; see also
id. ¶¶ 6, 13, 24–25 (describing the disadvantages of dual projector systems
and the advantages of single projector systems). Projection optical systems
include a common optical lens group arranged after the single projector,
followed by a beam splitting optical system that splits incoming light in
order to create two optical paths directed to two separated, front optical lens
groups. Id. ¶¶ 21–23. A polarizing or polarization modulating optical
system, or both, is disposed upstream of two separated, optical lens groups,
or in each optical path of the separated, front optical lens groups, to make
the light passing through the optical path of the left-eye images orthogonally
polarized relative to the light passing through the optical path of the right-
eye images. Id. ¶¶ 21–23.
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Kim’s Figure 12, including Petitioner’s and our annotations, is
reproduced below:

Id. at Fig. 12; see Pet. 36–37. Figure 12 depicts single projector 147
emitting image light to polarizing beam splitter 156 that may split light into
an S-polarized path (Petitioner’s red path) and a P-polarized path
(Petitioner’s blue path). Ex. 1003 ¶ 72; see Pet. 36–37; Ex. 1009 ¶ 37.
Polarized light from each path is reflected by mirrors, e.g., reflectors, toward
one of rotating shutters 155L and 155R. Id. “[A]dditional [S and P]
polarizers 158L and 158R are disposed in each optical path.” Id. ¶ 73
(emphasis added); see also id. ¶ 74 (describing placement of quarter wave
plates in each path when a view uses circular polarizing eyeglasses).
Petitioner argues that Kim teaches almost all of the limitations of
independent claims 1 and 18, respectively. Moreover, despite Kim’s stated
preference in its inventive systems for a single projector system, Petitioner
notes that Kim describes known dual projector systems. Pet. 38 (citing
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Ex. 1003, Fig. 1). Nevertheless, claim 1 recites that “a first rotator
configured to receive one of first primary path of light energy and first
secondary path of light energy and to rotate the one of first primary path of
light energy and first secondary path of light energy” (emphasis added). See
Ex. 1001, col. 14, ll. 25–28 (Claim 18). Petitioner acknowledges that Kim
does not teach an additional polarizer 158L or 158R in only one light path.
Pet. 39–40, 43. Consequently, in this ground, Petitioner relies on the
combination of the teachings of Kim with those of Takanashi to teach all of
the limitations of claims 1 and 18, as recited. Id. at 42–45, 51–53.
b. Takanashi
Takanashi describes techniques for improving light projection
efficiency and, in particular, techniques for rotating and recapturing a
portion of light energy split after passage through a polarization beam
splitter. See Ex. 1005, col. 2, ll. 19–27. Takanashi’s Figure 1, including our
annotations, is reproduced below:

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Id. at Fig. 1; see Pet. 39. Figure 1 depicts randomly polarized light from
light source 130 entering polarization converter PCE1. Ex. 1005, col. 2,
ll. 63–65. Polarization converter PCE1 comprises polarization beam splitter
PBS1, halfwave plate 6,
8
and reflective mirror 8, which splits the randomly
polarized light from light source 130 into S-polarized and P-polarized light
paths, rotates one of the S-polarized and P-polarized light paths, and directs
both light paths at light modulator 20. Id. at col. 3, ll. 4–12.
c. Reason to Combine
In view of Takanashi’s teaching that one halfwave plate may be
placed in one path of light split by a polarization beam splitter, Petitioner
argues that a person of ordinary skill in the art would have reason to modify
Kim to remove one of additional polarizers 158L or 158R from the
embodiment depicted in Kim’s Figure 12. See Pet. 40 (citing Ex. 1009
¶¶ 34–37). Kim’s Figure 12, as annotated and modified by Petitioner, is
reproduced below:

8
In its Specification, Takanashi incorrectly identifies this halfwave plate as
“halfwave plate /5.” Ex. 1005, col. 3, l. 5.
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Pet. 41; Ex. 1009 ¶ 37. In this modified version of Figure 12, Petitioner has
removed rotating shutters 155L and 155R and additional polarizer 158L.
Pet. 41. As a result of these modifications, the light output from each path
may have the same polarization. See id. at 40. Petitioner argues that
This principle – using a beam splitter to split unpolarized
light into two, orthogonally polarized beams, rotating one of the
beams, and recombining the beams – is the same principle
described by R. Clarke Jones (Polaroid) in his 1962 paper,
Ultimate Performance of Polarizers for Visible Light, JOSA
52:7, July 1962, pp. 747–752 (Ex. 1007), a similar principle
used by Kim in the arrangement of its embodiments. Ex. 1009,
Brennesholtz Decl. ¶ 34.
Id. Nevertheless, unlike Petitioner’s modified version, Kim’s Figure 12
depicts light output from each path having a different polarization. Ex. 1003
¶¶ 72–73 (projected light is P-polarized and S-polarized to permit
stereoscopic viewing, such as with passive polarizing eyeglasses).
Further, Petitioner argues that a person of ordinary skill in the art
would have reason to substitute the modified version of Kim’s Figure 12 for
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each of the projectors depicted in Kim’s Figure 1. Kim’s Figure 1, as
annotated and modified by Petitioner, is reproduced below:

Pet. 41; Ex. 1009 ¶ 39. In this modified version of Figure 1, although each
projector would output two paths of identically polarized light, Petitioner
depicts that a viewer would perceive a stereoscopic image when viewing the
projected image using polarizing eyeglasses 107. Ex. 1003 ¶ 4.
Patent Owner disagrees and contends that Kim teaches a different
approach from that taught by Takanashi. Prelim. Resp. 37. In particular,
“Kim discloses a single projector system that projects left and right images
in a time-sequential manner.” Id. (emphasis added) (citing Ex. 1003 ¶¶ 17,
70). Kim achieves this by including rotating shutters 155L and 155R.
Ex. 1003 ¶ 72. Consequently, the two optical paths do not emit light at the
same time. As Kim explains, “[s]hutters and the rotating disc are
synchronized with the spatial light modulation system to open the optical
path which belongs to the left-eye image and to block the optical path which
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belongs to the right-eye image while the spatial light modulation system
displays the left-eye image, and vice versa.” Id. ¶ 51; see Prelim Resp. 39.
Thus, shutters 155L and 155R block at least one optical path from allowing
light to reach lens group 152L or 152R at a given time. Prelim Resp. 38–39.
Therefore, Patent Owner contends Petitioner’s proposed modifications to the
embodiment of Kim’s Figure 12 removing rotating shutters 155L and 155R
would render it inoperable for its intended function. Id. at 39; see DePuy
Spine, 567 F.3d at 1326. We agree. Petitioner does not persuade us that the
teachings of Takanashi would provide a reason for a person of ordinary skill
in the art to make this modification to the embodiment of Kim’s Figure 12.
In addition, Kim teaches that additional polarizers 158L and 158R
may be added to the digital image projection system in order to increase the
extinction ratio between the P-polarized light and the S-polarized light for
viewers viewing the screen through passive polarizing eyeglasses. Ex. 1003
¶ 73; Fig. 12. Kim teaches that increasing the extinction ratio in this manner
makes the system suitable for the display of high-end stereoscopic displays.
Id. ¶ 73. Further, as noted above, removal of one of polarizers 158L or
158R would cause the depicted embodiment of Kim’s Figure 12 to emit light
paths of the same, instead of different, polarizations. Thus, we are
persuaded that Petitioner’s proposed modification to the embodiment of
Figure 12 to remove one of polarizers 158L and 158R also would render this
embodiment inoperable for its intended function, and Petitioner again does
not persuade us that the teachings of Takanashi would provide a reason for a
person of ordinary skill in the art to make this modification to the
embodiment of Kim’s Figure 12.
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Further, Patent Owner contends that Petitioner’s stated reason to
combine the teachings of Kim and Takanashi is flawed. Prelim. Resp. 40–
41. According to Patent Owner, Petitioner asserts that Takanashi (Ex. 1005)
and the Polaroid Publication (Ex, 1007) suggest that the modifications to
Kim would improve reduced light efficiency in two projector systems.
Prelim. Resp. 40 (citing Pet. 39–40). However, Kim teaches that two
projector systems already achieve “good light efficiency.” Id. (quoting
Ex. 1003 ¶ 6). Consequently, Patent Owner contends that a person of
ordinary skill in the art would not perceive the efficiency of a two projector
system as a reason to modify the design of the embodiment depicted in
Kim’s Figure 12. Id. at 40–41; see Pet. 40 (citing Ex. 1009 ¶¶ 36–37).
Again, we agree with Patent Owner.
For the foregoing reasons, we are not persuaded that Petitioner has
demonstrated that a person of ordinary skill in the art would have reason to
combine the teachings of Kim and Takanashi, in the manner proposed, to
achieve the recited apparatus and method of claims 1 and 18 of the
’296 patent, respectively. Each of claims 2, 5–17, 19, and 20, by way of its
dependency, also includes the limitations of claim 1 or 18. Therefore, we
are persuaded that Petitioner fails to demonstrate a reasonable likelihood of
prevailing in showing that any of claims 1, 2, and 5–20 are rendered
unpatentable over Kim and Takanashi.
III. CONCLUSION
For the foregoing reasons, Petitioner has not shown a reasonable
likelihood that it would prevail in establishing the unpatentability of any of
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claims 1, 2, and 5–20 of the ’296 patent on any alleged ground of
unpatentability.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all challenged claims of
the ’296 patent; and
FURTHER ORDERED that no inter partes review is instituted.

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

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