Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 37
`Entered: March 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION,
`Petitioner,
`
`v.
`
`OPTICAL DEVICES, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01439
`Patent RE42,913 E
`_______________
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 37
`Entered: March 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION,
`Petitioner,
`
`v.
`
`OPTICAL DEVICES, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01439
`Patent RE42,913 E
`_______________
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2014-01439
`Patent RE42,913 E
`
`
`I. INTRODUCTION
`
`In this inter partes review trial, instituted pursuant to 35 U.S.C. § 314,
`Petitioner, Toshiba Corporation (“Toshiba”), challenges the patentability of
`claims 48–53 of U.S. Patent No. RE42,913 E (Ex. 1001, “the ’913 patent”),
`owned by Patent Owner, Optical Devices, LLC (“Optical Devices”). This
`Final Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
`§ 42.73, addresses issues and arguments raised during trial. For reasons
`discussed below, we determine that Toshiba has met its burden to prove, by
`a preponderance of the evidence, that claims 48–53 of the ’913 patent are
`unpatentable under 35 U.S.C. § 102 as anticipated by Ando.1 We also deny
`Optical Devices’ motion to amend its claims.
`
`A. Procedural History
`
`On September 3, 2014, Toshiba filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 48–53 of the ’913 patent. Optical
`Devices filed a Patent Owner’s Preliminary Response. Paper 6. On March
`9, 2015 we issued a decision instituting an inter partes review directed to
`claims 48–53 of the ’913 patent and limited to the ground of anticipation
`based on Ando. Paper 7 (“Dec. Inst.”).
`After institution of trial, Optical Devices filed a Response to the
`Petition (Paper 14, “PO Resp.”), and Toshiba replied (Paper 20, “Pet.
`Reply”). Optical Devices filed a contingent Motion to Amend its claims.
`Paper 15, “Mot. Amend.” Toshiba opposed. Paper 21, “Opp.” We heard
`oral argument on January 12, 2016. Paper 37(“Tr.”).
`
`
`1 US Patent 3,506,839 to Ando et al., issued April 14, 1970, Ex. 1007.
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`
`B. Real Parties in Interest
`
`Optical Devices states that it is the only real party in interest for the
`Patent Owner. Paper 5, 1. Toshiba states the Petitioner’s real parties-in-
`interest are Toshiba Corporation and Toshiba America Information Systems,
`Inc. Pet. 1.
`
`C. Related Proceedings
`
`Toshiba indicates that the ’913 patent is related by a common parent
`to U.S. Patent No. RE40,927 E (“the ’927 patent”) and to U.S. Patent No.
`RE43,681 E (“the ’681 patent”), which also are asserted in the above
`identified lawsuits. Pet. 1.
`The specifications of the Wild patents challenged in IPR2014-01439
`(U.S. Patent No. RE42,913 E), IPR2014-01441 (U.S. Patent No. RE43,681
`E), and IPR2014-01443 (U.S. Patent No. RE40,927 E) are substantively
`identical.
`Optical Devices indicates that the following judicial and
`administrative matters could affect or be affected by a decision in this
`proceeding:
`Inter partes review IPR2014-00302 (not instituted) and IPR2014-
`01440 (not instituted) (each involving the ’913 patent);
`Inter partes review IPR2014-01441 (pending) and IPR2014- 01442
`(pending)2 (each involving the ’681 patent);
`Inter partes review in IPR2014-00303 (instituted), IPR2014-01443
`(pending), and IPR2014-01444 (not instituted) (each involving the ’927
`patent);
`
`2 IPR2014-01442 is consolidated with IPR2014-01441.
`
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`
`In the Matter of Certain Optical Disc Drives, Components Thereof,
`and Products Containing The Same, International Trade Commission,
`Proceeding No. 337-TA-897;
`Optical Devices, LLC v. Toshiba Corp., et. al., Civil Case No. 1:13-
`cv-01530 (D. Del. 2013);
`Optical Devices, LLC v. Panasonic Corp., et. al., Civil Case No. 1:13-
`cv-00726 (D. Del. 2013);
`Optical Devices, LLC v. Lenovo Group, Ltd., et. al., Civil Case No.
`1:13-cv-01526 (D. Del. 2013);
`Optical Devices, LLC v. Nintendo Co., Ltd., et. al., Civil Case No.
`1:13-cv-01528 (D. Del. 2013);
`Optical Devices, LLC v. Samsung Electronics Co., Ltd., et. al., Civil
`Case No. 1:13-cv-01529 (D. Del.); and
`Optical Devices, LLC v. LG Electronics, Inc., Civil Case No. 1:13-cv-
`01033 (D. Del. 2013).
`Paper 5, 1−2.
`
`II. THE ’913 patent (EX. 1001)
`
`A. Described Invention
`
`The ’913 patent is a reissue of U.S. Patent No. 6,603,134 B1 (“the
`’134 patent”) which issued from U.S. Patent Application No. 04/623,186
`(“the ’186 application”). The ’186 application was filed on March 10, 1967,
`but remained subject to secrecy order(s) for many years because of its
`potential military use. Pet. 10. The ’913 patent relates to detection of
`retroreflective optical systems. Ex. 1001, Abstract. Retroreflective optical
`systems are found in many military surveillance systems including
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`binoculars, telescopes, periscopes, range finders, cameras, and the like. Id.
`at 1:60–63. Retroreflective characteristics of the human eye are described
`with respect to Figure 5. Id. at 5:26−44.
`Retroreflective optical systems are those in which incident rays and
`reflected rays are parallel for any angle of incidence within a field of view.
`Ex. 1001, 1:23–26. Retroreflectors are discernible from the background in
`which they are positioned.
`
`It should be noted that in almost all cases, the retroreflector will
`be disposed within an environment that produces background
`radiation in a Lambertian manner. Thus, the radiant intensity of
`the retroreflector is so much greater than that of a Lambertian
`radiator that it is easily discernible from the background, even
`when, (as shown in FIG. 2) a large percentage of the
`retroreflected radiant flux is lost due to vignetting.
`
`Ex. 1001, 5:1–6
`Figure 1 of the ’913 patent is reproduced below:
`
`
`
`
`Figure 1 of the ’913 patent explains retroreflection. It depicts an optical
`system including lens 20 and reflective surface 22 (e.g., a mirror) positioned
`in focal plane 24 of lens 20. Ex. 1001, 3:4–25. Radiation rays 26 and 28 are
`directed towards lens 20 of the optical system from a radiation (e.g., light)
`source (not shown). Id. at 3:14–16. For purposes of clarity, Figure 1 of the
`’913 shows the incident rays at the top of lens 20 and the reflected rays at
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`the bottom of lens 20. Id. at 3:11–14. Incident rays 26 and 28 are refracted
`by lens 20 and focused at focal point 32 on mirror 22. Id. at 3:14–16. The
`rays are reflected, such that the angle of reflection equals the angle of
`incidence, and the reflected rays are refracted again by lens 20 and emerge
`therefrom as retroreflected rays 26R and 28R. Id. at 3:21–25.
`With reference to Figure 3 of the ’913 patent, which is reproduced
`below, the radiant flux density at the reflector surface may vary based on
`characteristics of components of the optical system, such as the position of
`mirror 22B or an imperfection of lens 20B, or both.
`
`
`Mirror 22B of Figure 3 is positioned substantially in focal plane 24B, but not
`precisely in focal plane 24B. As shown in Figure 3,
`
`the rays 38 and 40 are parallel to the optical axis 30B but are
`not focused at a single point on the focal plane 24B, and instead
`form an image on the mirror 22B, which image is referred to as
`the circle of confusion. In most practical optical systems there
`are circles of confusion and the mirror is normally positioned at
`the plane of least circle of confusion, herein depicted by the
`reference numeral 42. The image formed on the mirror by
`means of the rays 38 and 40 can be considered to be a radiant
`source, and the retroreflected rays 38R and 40R exit from the
`lens 20B substantially parallel to each other.
`Id. at 3:44−54.
`Retroreflected rays are in the form of a narrow, substantially
`collimated beam having a high radiant flux density. “It is to be noted that
`there is an actual increase in the radiant flux density of the retroreflected
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`beam due to the narrowing thereof. This increase in radiant flux density is
`herein termed optical gain.” Id. at 4:6–10. “In order to obtain a measure of
`the optical gain we must compare the retroreflector to a standard of
`reference.” Id. at 4:41–42.
`Embodiments of systems taking advantage of retroreflection are
`described with respect to Figures 6−14. The embodiment described with
`respect to Figure 6 examines spectral and temporal characteristics of the
`retroreflected beam to determine characteristics of the optical system being
`investigated. Id. at 6:3–8.
`The ’913 patent describes an embodiment that directs a laser for
`identifying and tracking an object based upon retroreflected radiant energy.
`Id. at 8:25–9:32. As shown in Figure 12, reproduced below, radiant energy
`is transmitted by optical search device 182 at optical instrument 196 (e.g., an
`optical system including a lens and an object exhibiting some degree of
`reflectivity when disposed substantially in a focal plane of the lens).
`
`
`Figure 12 is a block diagram of an embodiment of a system for detecting the
`presence of an optical instrument, for tracking the instrument, and for
`neutralizing observers utilizing the instrument and/or rendering the
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`instrument ineffective. Retroreflected radiant energy is detected by detector
`184. The output of detector 184 is provided to utilization system 192 that
`controls either scanning and positioning means 188 to track the location of
`the object or high energy laser gun 186 to direct laser gun 186 at the object
`by means of common power and control means 190. Id. at 8:30–40.
`The ’913 patent also describes, with the aid of Figure 13, an apparatus
`embodiment for identifying a radar system by scanning an area with a sweep
`of frequencies and noting retroreflection from a parabolic antenna of the
`radar system. An attenuated frequency received from the scanning area
`indicates the presence of a parabolic antenna resonant at a particular
`frequency that effectively absorbs the frequency appearing to be attenuated.
`Id. at 9:33–65.
`
`B. Illustrative Claim
`
` Toshiba challenges claims 48–53 of the ’913 patent. Claims 48 and
`51 are independent. Claim 48 is illustrative and is reproduced below:
`48. A method of detecting characteristics of an object within an
`optical system, comprising:
`transmitting energy at an object included in an optical system
`having retroreflective characteristics,
`wherein the optical system includes a lens and the object
`includes a surface exhibiting some degree of reflectivity
`disposed substantially in a focal plane of the lens;
`receiving reflected radiant energy with an optical gain after
`retroreflection of the radiant energy; and
`detecting the reflected radiant energy after retroreflection to
`determine at least one characteristic of the object.
`
`Ex. 1001, 14:21–31. Claims 49 and 50 depend from claim 48, and claims 52
`and 53 depend from claim 51.
`
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`
`III. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)(citing Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`F.2d 714, 718 (Fed. Cir. 1991)).
`Petitioner asserts that one of ordinary skill in the art at the time of the
`filing of the ’913 as having either:
`
`(1) a Bachelor’s of Science Degree in Physics, Optics, Electrical
`Engineering, or a related field with coursework in Optics
`technology, Photonics technology, or related technologies, either
`in industry, academia, or research, or (2) a Master’s degree in
`Physics, Optics, Electrical Engineering, or a related field with
`coursework in Optics or Photonics.
`Pet. 22 (citing Ex. 1008 ¶ 32).
` Patent Owner asserts that one of ordinary skill in the art in 1967 would
`have “held a Bachelor of Science and Master of Science Degrees in either
`Physics or Electrical Engineering with a focus on optics, and additionally, at
`least two to three (2-3) years of experience in Physics or Electrical Engineering
`optics research.” PO Resp. 4 (citing Ex. 2104 ¶ 10) (emphasis added).
`Based on our consideration of the record, we find that the evidence as
`a whole supports Petitioner’s broader description of the level of ordinary
`skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary
`skill in the art.
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`
`B. Claim Construction
`
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable interpretation in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed.
`Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84
`U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under that standard, and
`absent any special definitions, we give claim terms their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`Any special definitions for claim terms must be set forth with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). “In such cases, the inventor’s lexicography
`governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
`banc). In the absence of such definitions, limitations are not to be read from
`the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993).
`Only 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). For this reason, we
`provide express constructions for only the terms discussed below.
`
`1. “Retroreflection”
`
`Toshiba construes “retroreflection” as “reflection of an incident ray in
`a manner such that the reflected ray is parallel to the incident ray for any
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`angle of incidence within the field-of-view.” Pet. 13. Optical Devices
`preliminarily indicated that it did not object to adding to the construction the
`phrase “within the field-of-view” as proposed by Petitioner. Prelim. Resp.
`11. Optical Devices maintained that position in its Patent Owner Response.
`PO Resp. 5. Optical Devices supports its proposed construction by reference
`to the ’913 patent. Ex. 1001, 1:20–26, 3:4–4:3, 6:34–46, 7:14–25.
`We are persuaded that the broadest reasonable interpretation of
`“retroreflection,” consistent with the ’913 patent Specification, is “reflection
`of an incident ray in a manner such that the reflected ray is parallel to the
`incident ray for any angle of incidence within the field-of-view.”
`
`2. “Optical System”
`
`Both Toshiba and Optical Devices propose to construe “optical
`system” as “a collection of optical elements including at least a lens and a
`reflective surface.” Pet. 14; Prelim. Resp. 11–12. The ’913 patent supports
`this construction. Ex. 1001, 2:41–59, 3:14–16, 5:40–43, 8:44–50; Figs. 1–4,
`6–12.
`We are persuaded that this construction is the broadest reasonable
`construction interpretationwith the Specification of the ’913 patent and adopt
`it.
`
`3. “Optical Gain”
`
`In the context of a retroreflecting optical system, Toshiba would have
`us construe “optical gain” as “an actual increase in the radiant flux density of
`the retroreflected beam due to the narrowing thereof.” Pet. 15. Toshiba
`argues that retroreflected light inherently has the attribute of optical gain
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`because the lens concentrates rays into a smaller solid angle that otherwise
`would be reflected into a larger one. Pet. 15–21.
`In support of its position, Toshiba provides the following image
`comparing retroreflected light with Lambertian scattered light at Petition
`page 20 and at Exhibit 1008 ¶ 46:
`
`
`
`According to Toshiba, this comparison demonstrates that light that
`would otherwise be scattered into a wide angle (right side) is gathered into a
`smaller angle and collimated (left side), thereby increasing flux density of
`the reflected light. Pet. 20.
`Optical Devices argues for a broader construction of “optical gain”
`that would be consistent with all of the embodiments described in the
`Specification of the ’913 Patent. PO Resp. 6−18. It proposes that the
`broadest reasonable interpretationof the term “optical gain” in the context of
`the ’913 patent is “a change in radiant flux density of reflected radiant
`energy.” PO Resp. 6 (citing Ex. 2104 ¶¶ 20–21).
`James Leger, Ph.D., providing testimony on behalf of Optical
`Devices, explains that one of ordinary skill would have understood that in
`certain of the embodiments, the radiant flux density of the reflected radiation
`at one scanned location is compared with the reflected radiant flux density at
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`another scanned location. A change in the detected reflected radiant flux
`density from one location to another signals the presence or absence of a
`retroreflective instrument. Ex. 2104 ¶ 21. According to Dr. Leger, one of
`ordinary skill would appreciate that a photodetector signal increase would
`represent an increase in the radiant flux density when a scanner moves from
`an object having little or no retroreflectivity to an object having a higher
`degree of retroreflectivity (e.g., a binocular). Id. On the other hand, a signal
`decrease would represent a decrease in radiant flux density when the
`scanning radiation is moved from an object associated with a high level of
`retroreflectivity to an object associated with little or no retroreflectivity. Id.
`The fact that the object has a retroreflective characteristic is determined
`when the scanning radiation moves to an adjacent object that does not
`exhibit such a characteristic or does so to a lesser degree, thereby resulting
`in a decrease in the reflected radiant flux density. Id. In another example, in
`order to track an object associated with some level of retroreflectivity, a
`decrease in the retroreflectivity is detected when the object moves away
`from the initially detected location. Hence, one of ordinary skill would have
`understoodd that the concept of “optical gain” as used in the ’913 patent
`covers both an increase and a decrease in the reflected radiant flux density.
`Id.
`
`Lambertus Hesselink, Ph.D., testifying on behalf of Toshiba, opines
`that the ’913 patent inventor acted as a lexicographer and provided a special
`meaning for the term “optical gain” as “an actual increase in the radiant flux
`density of the retroreflected beam due to the narrowing thereof.” Ex. 1008
`¶ 37. Dr. Hesselink refers to the following passage from the ’913 patent to
`support his view:
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`The rays retroreflected by the optical systems depicted in FIGS.
`1 to 4 are in the form of a narrow, substantially collimated
`beam having a high radiant density. It is to be noted that there
`is an actual increase in the radiant flux density of the
`retroreflected beam due to the narrowing thereof. This increase
`in radiant flux density is herein termed optical gain.
`Ex. 1001, 4:4-9.
`Optical Devices argues that one of ordinary skill would not have
`understood this passage to be a definition, but rather would have understood
`it to be describing “optical gain” in the context of a particular illustrative
`embodiment. PO Resp. 9 (citing Ex. 2104 ¶ 23). Restricting the
`construction of “optical gain” to an increase in radiant flux density would be
`inconsistent with the use of the term “optical gain” in a number of
`embodiments of the ’913 patent. PO Resp. 10.
`Optical Devices notes that Dr. Hesselink’s view requires that “optical
`gain” be measured relative to a Lambertian radiator. Id. (citing Ex. 1008
`¶ 16). Dr. Hesselink refers to the following passage from the ’913 patent:
`“In order to obtain a measure of the optical gain we must compare the
`retroreflector to a standard or a reference. This reference has been taken to
`be a diffuse surface known in the art as a Lambertian radiator.” Id. ¶ 39
`(citing Ex. 1001, 4:42–45). However, Dr. Leger interprets this passage
`differently—namely, it provides a general statement that one must compare
`the retroflector to a standard or reference to obtain a measure of optical gain.
`Ex. 2104 ¶ 24. Following this general statement and in the context of a
`particular illustrative example, the ’913 patent indicates that the reference
`has been chosen to be a Lambertian radiator. Id. As such, one of ordinary
`skill would have understood from this language that the ’913 patent has
`chosen the Lambertian radiator as an illustrative reference only in the
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`context of the particular example, and not as a way of determining optical
`gain in all cases. Id.
`Optical Devices further notes that Dr. Hesselink relies upon plain
`meaning in construing “optical gain” as implying a positive change. PO
`Resp. 10–11 (citing Ex. 1008 ¶ 44). However, according to Optical Devices,
`Dr. Hesselink neglects to point out that in various fields of science and
`engineering, the term “gain” is employed to denote both positive and
`negative change. For example, in the field of microwave antennas, the
`“gain” of an antenna can be positive or negative. Id. at 11 (citing Ex. 2104 ¶
`25). According to Optical Devices, it is noteworthy that the ’913 patent
`states that its teachings are applicable to the detection of microwave
`apparatuses, such as antennas. Id. (citing Ex. 1001, 9:13–17). Thus,
`according to Optical Devices, one of ordinary skill would have understood
`that the concept of “optical gain” as used in the ’913 patent covers both an
`increase and a decrease in the reflected radiant flux density as compared to a
`standard or reference. Id. (citing Ex. 2104 ¶ 24).
`Optical Devices argues that its view is borne out by the cross
`examination of Dr. Hesselink. Id. (citing Ex. 2119, 60:10–61:8, 61:13–16).
`Optical Devices’ arguments notwithstanding, we conclude that the
`strongest evidence for construing the term “optical gain” comes from the
`Specification itself which clearly defines the term.
`[The claims] are part of a fully integrated written instrument,
`consisting principally of a specification that concludes with the
`claims. For that reason, claims must be read in view of the
`specification . . . . [T]he specification is always highly relevant
`to the claim construction analysis. Usually, it is dispositive; it
`is the single best guide to the meaning of a disputed term.
`See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the
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`specification is “the single best guide to the meaning of a disputed term” and
`“acts as a dictionary when it expressly defines terms used in the claims or
`when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696
`F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must
`be consistent with the specification, and claim language should be read in
`light of the specification. We give less weight to Optical Devices’
`argument that all embodiments should be embraced by the construction.
`“‘[E]ach claim does not necessarily cover every feature disclosed in the
`specification. When the claim addresses only some of the features disclosed
`in the specification, it is improper to limit the claim to other, unclaimed
`features.’” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,689 (Fed. Cir.
`2008) (quoting Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d
`1173, 1181 (Fed. Cir. 2006)). The ’913 patent includes description of a
`radar system embodiment with respect to Figures 13 and 14. Ex. 1001,
`9:34–65. It is described that the radar system is detected by means of the
`“retroreflection principles” of the invention. However, the term “optical
`gain” is not used in connection with this embodiment. The term appears in
`the Specification only in connection with embodiments relying on what has
`traditionally been referred to as “optical.” WEBSTER’S SEVENTH NEW
`COLLEGIATE DICTIONARY 592 (1967) (Ex. 3002)3 (the adjective “optic”
`defined as “of or relating to vision or the eye” and the adjective “optical”
`defined as “relating to the science of optics” and “relating to vision”).
`
`Finally, the claim terms must be construed in the context of the entire
`claim. Challenged claims 48 and 51 are directed a method of or apparatus
`for “detecting characteristics of an object within an optical system.” E.g.,
`
`3 This decision does not reference Ex. 3001.
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`Ex. 1001, 14:21–22 (claim 48; emphasis added). In this context, we
`conclude that “optical gain” is limited to the optical spectrum and does not
`apply to other portions of the spectrum, such as other electromagnetic waves
`used in radar systems. We, therefore, construe “optical gain” to mean “an
`increase in radiant flux density of reflected optical radiant energy.”
`
`4. Additional terms
`
`In view of our analysis, we do not find it necessary to construe
`expressly any additional terms.
`
`C. Prior Art Challenge Based on Ando (Ex. 1007)
`
`Toshiba argues that claims 48–53 of the ’913 patent are anticipated by
`Ando and presents a detailed reading of claims 48–53 on Ando at Petition
`pages 25–37, supported by the testimony of Dr. Hesselink in the form of a
`declaration (Ex. 1008). We have reviewed Toshiba’s analysis and adopt it
`except to the extent clarified below.
`Optical Devices challenges certain aspects of Petitioner’s analysis and
`argues that Ando does not anticipate claims 48–53. PO Resp. 33–36.
` “A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987).
`
` 17
`
`
`
`IPR2014-01439
`Patent RE42,913 E
`
`
`1. Ando Generally
`
`Ando’s Figure 1 is reproduced below.
`
`
`
`Figure 1 shows an embodiment of a “contactless probe system” that
`determines the contour of the surface of object 20 without contact. Ex.
`1007, 1:15–19. It does so by using servo control to adjust the probe system
`so as to keep light focused on the surface of the object as it is scanned. Ex.
`1007, 2:18–26. Servo control of the probe system is effected by
`superimposing a frequency on the radiation reflected from object 20 and
`passing through lens 24 by vibrator 28 vibrating pinhole 27 through which
`the received radiation passes. The probe system is moved so as to minimize
`the frequency imposed by vibrator 28. This effectively keeps the surface of
`
` 18
`
`
`
`IPR2014-01439
`Patent RE42,913 E
`
`object 20 in focus, thereby mapping the contour of object 20, i.e., a three
`dimensional configuration.
`
`2. Claim 48-50
`
`Toshiba argues that retroreflection occurs in Ando. Toshiba
`demonstrates this by reversing a portion of Ando’s Figure 1 and juxtaposing
`it with respect to Figure 1 of the ’913 patent (Pet. 24) as follows:
`
`
`Both figures show incoming collimated light being focused onto a surface in
`the focal plane of the lens, whereby reflected light is collimated by the lens,
`so that outbound reflected light rays are parallel to the incoming light rays.
`Pet. 24–25 (citing to Ex. 1008 ¶ 52).
`
`Light entering lens 18 of Ando is collimated by virtue of light from
`source 12 passing through slit 15 and lens 16. According to Toshiba, light
`reflected from object 20 back through lens 18 ultimately is received by
`photosensitive device 30. A servo system (oscillator 34, vibrator 28, slit 27,
`photosensitive device 30, phase comparator 36, amplifier 38, and servo
`motor 40) moves the probe system so as to continuously re-focus light on
`object 20, thereby mapping its contour.
`
` 19
`
`
`
`IPR2014-01439
`Patent RE42,913 E
`
`
`Toshiba argues that light reflected from object 20 is received with
`optical gain because retroreflection is occurring and optical gain is “an
`inherent necessary result from a retroreflector having a lens and a surface
`disposed in the focal plane of that lens for collimated incoming light.”
`Pet. 19. When optical gain is present in the retroreflected light, then the
`retroreflected light ultimately received by photosensitive device 30 must
`necessarily have optical gain. Id. We find the figure set forth at Petition
`page 20 and at Exhibit 1008 ¶ 46 to be persuasive and find that
`retroreflection occurs based upon a the structural arrangement of lens and
`reflecting surface.
`Optical Devices argues that one of ordinary skill would have
`understood that the “detecting” step of claim 48 requires detecting an optical
`gain of the retroreflected energy, namely detecting a change in the radiant
`flux density of the retroreflected energy. PO Resp. 33. Optical Device
`argues that because Ando does not disclose detecting optical gain, it would
`not anticipate this limitation. Optical Devices notes that Ando relies upon
`analyzing the frequency content of an oscillatory output of the photosenitive
`device 30 rather than comparing flux density of two illuminated spots. Id. at
`34. Dr. Leger explains that the operation of Ando’s comparator 36 does not
`depend on the amplitude of the output of the photosensitive device 30 so
`long as the output of the photosensitive device 30 exhibits sufficient signal-
`to-noise ratio (SNR) to allow the phase comparator 36 to operate properly in
`analyzing the frequency and phase content of the oscillatory output of the
`photosensitive device. Id. at 30 (citing Ex. 2104 ¶ 65).
`We agree with Optical Devices’ description of Ando, but not with
`Optical Devices’ conclusion. We do not read into the “detecting” step of
`
` 20
`
`
`
`IPR2014-01439
`Patent RE42,913 E
`
`claim 48 a requirement of detecting an optical gain. The ’913 patent
`invention lies in discerning a retroreflector from its background. The
`retroreflector provides a brighter spot than does its background because of
`the concentration of flux caused by the retroreflector that makes it appear
`brighter. However, that key feature is missing from claim 48.
`Claim 48 requires “receiving reflected radiation energy with an
`optical gain after retroreflection of the radiant energy.” However, the
`“detecting” step that follows simply requires detecting the reflected radiant
`energy after retroreflection to determine at least one characteristic of the
`object. Ando does indeed detect reflected radiant energy after
`retroreflection. It also determines at least one characteristic of the object,
`namely its contour. Ex. 1007 at Abstract. We “determine that there is no
`reasoned basis to read into the “detecting” step of claim 48 a requirement of
`detecting an optical gain. We, therefore, conclude that Ando meets the
`limitations of claim 48.
`Optical Devices does not separately argue dependent claims 49 and
`50, each depending from claim 48. PO Resp. 35. We conclude that they are
`unpatentable as well. Claim 49 further requires that the “characteristic”
`includes any optically detectable property of the object. The Ando object’s
`contour is optically detectable. Ex. 1007, Abstract, Fig. 1. Claim 50 further
`requires that the “characteristic includes a relative position of the object
`within the optical system.” Ando detects position of the object within its
`optical system. See Id. Fig. 1. Servo motor 40 moves the optical apparatus
`to maintain focus on the surface of object 20, thereby contouring the surface
`of object 20.
`
` 21
`
`
`
`IPR2014-01439
`Patent RE42,913 E
`
`
`3. Claim 51
`
`Claim 51 is reproduced below.
`51. An apparatus for detecting characteristics of an object
`within an optical system, the apparatus comprising:
`a radiant energy source for transmitting energy at an object
`included in an optical system having retroreflective
`characte
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