Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`Paper 9
`Entered: July 11, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PANASONIC CORPORATION and
`PANASONIC CORPORATION OF NORTH AMERICA,
`Petitioner,
`
`v.
`
`OPTICAL DEVICES, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00302
`Patent RE42,913 E
`_______________
`
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`TOSHIBA CORP.
`EXHIBIT 1006 - PAGE 0001
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`IPR2014-00302
`Patent RE42,913 E
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`
`A. Background
`
`I.
`
`INTRODUCTION
`
`Panasonic Corporation and Panasonic Corporation of North America
`
`(collectively, “Petitioner”) filed a petition (Paper 2; “Pet.”) to institute an
`
`inter partes review of claims 48-53 of Patent No. US RE42,913 E (Ex. 1003,
`
`“the ’913 patent”) pursuant to 35 U.S.C. §§ 311-319. Pet. 4-5. Optical
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`Devices, LLC (“Patent Owner”) filed a preliminary response (Paper 8,
`
`“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35
`
`U.S.C. § 314(a), which provides as follows:
`
`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.
`
`Petitioner relies upon the following references and declaration in
`
`support of its grounds for challenging the identified claims of the ’913
`
`patent:
`
`
`Exhibits
`1001
`1002
`1007
`
`
`References and Declaration
`Patent No. US 3,552,857 to Hock (“Hock”)
`Patent No. US 3,481,672 to Zoot (“Zoot”)
`Declaration of Masud Mansuripur, Ph.D.
`
`Petitioner only asserts that the challenged claims are unpatentable
`
`under 35 U.S.C. § 102(e) on the following specific grounds (Pet. 4-5):
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`
`
`
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`2
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`IPR2014-00302
`Patent RE42,913 E
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`
`Claims
`48-53
`48-53
`
`
`Grounds
`Reference
`Anticipated under 35 U.S.C. § 102(e) Hock
`Anticipated under 35 U.S.C. § 102(e) Zoot
`
`For the reasons set forth below, we determine that, on this record,
`
`Petitioner fails to demonstrate a reasonable likelihood of prevailing in
`
`showing the unpatentability of any of the challenged claims. Accordingly,
`
`we deny institution of inter partes review as to claims 48-53 of the ’913
`
`patent.
`
`B. Related Proceedings
`
`The parties indicate that the ’913 patent is the subject of Optical
`
`Devices, LLC v. Panasonic Corp., Case No. 1:13-cv-00726 (D. Del. 2013).
`
`Pet. 3; see Paper 6, 1 (identifying other related cases). In addition, the patent
`
`currently is the subject of an investigation before the International Trade
`
`Commission: In the Matter of Certain Optical Disc Drives, Components
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`Thereof, and Products Containing the Same, Inv. No. 337-TA-897. Paper 6,
`
`1. Further, Petitioner has filed another petition for inter partes review,
`
`IPR2014-00303, with respect to a related patent, Patent No. US RE40,927 E,
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`involving the same Patent Owner. Id.
`
`C. The ’913 Patent
`
`The application that eventually issued as the ’913 patent was filed on
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`March 10, 1967. Pet. 7. This application was subject to a secrecy order for
`
`many years. Id.
`
`Figure 1 of the ’913 patent is reproduced below:
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`
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`Patent RE42,913 E
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`Figure 1 of the ’913 patent depicts an optical system including lens 20 and
`
`reflective surface 22 (e.g., a mirror) positioned in focal plane 24 of lens 20.
`
`Ex. 1003, col. 3, ll. 4-7. 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 col. 3, ll. 7-11. For purposes of clarity, patentee depicts the incident rays
`
`at the top of lens 20 and the reflected rays at the bottom of lens 20. Id. at
`
`col. 3, ll. 21-23. Incident rays 26 and 28 are refracted by lens 20 and
`
`focused at focal point 32 on the mirror surface 22. Id. at col. 3, ll. 11-16.
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`The rays are reflected, such that the angle of reflection equals the angle of
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`incidence, and the reflected rays are refracted again by lens 20 and emerge
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`therefrom as retroreflected rays 26R and 28R. Id. at col. 3, ll. 7-21.
`
`
`
`Figure 3 of the ’913 patent is reproduced below:
`
`
`
`Figure 3 of the ’913 patent depicts that the radiant flux density at surface
`
`22B may vary based on characteristics of the components of the optical
`
`system, such as placement or imperfections in lens 20B. Id. at col. 3, ll. 41-
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`54; col. 4, ll. 10-67; see Prelim. Resp. 3-4. For example, in Figure 3,
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`4
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`Patent RE42,913 E
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`reflective surface 22B is positioned substantially, but not entirely, in focal
`
`plane 24B. Id. at col. 3, ll. 41-47. According to the ’913 patent,
`
`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 4 (quoting Ex. 1003, col. 3, ll. 30-41). “Thus, [Figure 3] demonstrates
`
`that as long as a surface exhibits some degree of reflectivity and it is
`
`positioned in or near the focal plane of a lens, the lens and surface will form
`
`a retro-reflector.” Id.; see also Ex. 1003, col. 1, ll. 46-53 (definition relied
`
`upon by Petitioner at Pet. 5-6). More importantly, the difference in radiant
`
`flux density between the smaller circle of confusion of Figure 1, i.e., where
`
`surface 22 lies in the focal plane, and Figure 3, i.e., where surface 22B lies
`
`substantially, but not entirely, in focal plane 24B, is described in the ’913
`
`patent as optical gain. See Ex. 1003, col. 5, ll. 8-25. In particular, according
`
`to the ’913 patent, “[i]n order to obtain a measure of the optical gain we
`
`must compare the retroreflector to a standard or reference.” Prelim. Resp. 5
`
`(quoting Ex. 1003, col. 4, ll. 41-42); see also Ex. 1003, col. 4, ll. 10-53
`
`(describing an example of the calculation of the difference in radiant flux
`
`density).
`
`5
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`Patent RE42,913 E
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`
`D. Illustrative Claims
`
` The ’913 patent contains claims 48-53. Claim 48 is an independent,
`
`method claim, and claims 49 and 50 depend therefrom. Claim 51 is an
`
`independent, apparatus claim, and claims 52 and 53 depend therefrom.
`
`Claims 48 and 51 are illustrative and are reproduced below, with emphases
`
`added:
`
`
`
`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.
`
`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
`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;
`and
`
`
`a detector for detecting received reflected radiant energy
`with an optical gain after retroreflection of the radiant energy to
`determine at least one characteristic of the object.
`
`
`
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`Patent RE42,913 E
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`E. Claim Construction
`
`Consistent with the statute and the legislative history of the Leahy-
`
`Smith America Invents Act,1 we interpret claims of an unexpired patent
`
`using the broadest reasonable construction in light of the specification of the
`
`patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`
`(Aug. 14, 2012); 37 C.F.R. § 42.100(b). There is a presumption that claim
`
`terms 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). An inventor may rebut that presumption by providing a definition of
`
`the term in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`
`absence of such a definition, limitations are not to be read from the
`
`specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`
`Cir. 1993).
`
`Petitioner does not propose specific constructions for any terms of the
`
`challenged claims and, instead, merely proposes that the challenged claims
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`should be construed according to their broadest reasonable interpretation
`
`consistent with the Specification. Pet. 5. Petitioner proposes a definition for
`
`the term “retroreflector.” Id. at 5-6. Specifically, Petitioner proposes that
`
`this term should be construed to mean “any optical instrument which
`
`includes a focusing lens and a surface having some degree of reflectivity, no
`
`matter how small, positioned near the focal point of the lens.” Id. (quoting
`
`Ex. 1003, col. 1, ll. 46-49). Nevertheless, this term does not appear in the
`
`challenged claims. Pet. 5-6.
`
`
`1 Pub. L. No. 112-29 (2011).
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`Patent RE42,913 E
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`Patent Owner, however, proposes constructions for the claim terms:
`
`“focal plane,” “retroreflection,” “optical gain,” “optical system,” and “an
`
`optical system having retroreflective characteristics,” as follows:
`
`1. Focal Plane
`
`Patent Owner proposes to construe “focal plane” as “a plane through
`
`the focus perpendicular to the axis of an optical element.” Prelim. Resp. 9.
`
`Petitioner did not propose an alternative construction, and we are persuaded
`
`that Patent Owner’s construction is the broadest reasonable construction
`
`consistent with the ordinary and customary meaning of the term (see Ex.
`
`2001) and with the Specification of the ’913 patent (see, e.g., Ex. 1003, figs.
`
`1-4; col. 3, l. 4-col. 4, l. 3).
`
`2. Retroreflection
`
`Patent Owner proposes to construe “retroreflection” as “reflection of
`
`an incident ray in a manner such that the reflected ray is parallel to the
`
`incident ray for any angle of incidence.” Prelim. Resp. 10. Petitioner did
`
`not propose an alternative construction, and we are persuaded that Patent
`
`Owner’s construction is the broadest reasonable construction consistent with
`
`the Specification of the ’913 patent. Id. at 10 (citing Ex. 1003, col. 1, ll. 20-
`
`26; col. 3, l. 4-col. 4, l. 3; col. 6, ll. 34-46; col. 7, ll. 14-25).
`
`3. Optical Gain
`
`Patent Owner proposes to construe “optical gain” as “a change in
`
`radiant flux density of reflected radiant energy.” Prelim. Resp. 10-11. The
`
`Patent Owner contends that
`
`retroreflected radiant energy does not necessarily or inherently
`exhibit an optical gain. Rather, in order to exhibit optical gain,
`retroreflected radiant energy must show a change in its radiant
`flux density relative to the radiant flux density of other reflected
`radiant energy, e.g., reflection from a reference or a standard.
`
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`
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`Id. at 10 (citing Ex. 1003, col. 4, ll. 42-43). Petitioner did not propose an
`
`alternative construction, and we are persuaded that Patent Owner’s
`
`construction is the broadest reasonable construction consistent with the
`
`Specification of the ’913 patent. Id. at 10 (citing Ex. 1003, col. 3, l. 50-col.
`
`5, l. 10).
`
`4. Optical System
`
`Patent Owner proposes to construe “optical system” as “a collection
`
`of optical elements including at least a lens and a reflective surface.”
`
`Prelim. Resp. 11-12. Petitioner did not propose an alternative construction,
`
`and we are persuaded that Patent Owner’s construction is the broadest
`
`reasonable construction consistent with the Specification of the ’913 patent.
`
`Id. at 11-12 (citing Ex. 1003, col. 2, ll. 41-59; col. 3, ll. 14-16; col. 5, ll. 40-
`
`43; col. 8, ll. 44-50; figs. 1-4, 6-12).
`
`5. An Optical System Having Retroreflective Characteristics
`
`Patent Owner proposes to construe “an optical system having
`
`retroreflective characteristics” as
`
`an optical system as defined above having a focusing element
`and reflective surface that is located substantially in the focal
`plane of the focusing element, wherein the system is configured
`so that a ray incident on the focusing element and focused on
`the reflective surface is reflected along a path parallel to the
`incident ray for any angle of incidence.
`
`
`
`Prelim. Resp. 12. Petitioner did not propose an alternative construction, and
`
`we are persuaded that Patent Owner’s construction is the broadest
`
`reasonable construction consistent with the Specification of the ’913 patent.
`
`Id. at 12 (citing Ex. 1003, col. 2, ll. 41-59; col. 3, ll. 14-16; col. 5, ll. 40-43;
`
`col. 8, ll. 44-50; figs. 1-4, 6-12).
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`IPR2014-00302
`Patent RE42,913 E
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`A. Overview
`
`II. ANALYSIS
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`Petitioner argues that claims 48-53 of the ’913 patent are anticipated
`
`by Hock. Pet. 9-18. Petitioner also contends that claims 48-53 of the ’913
`
`patent are anticipated by Zoot. Id. To support these positions, Petitioner
`
`presents the testimony of Dr. Masud Mansuripur (Ex. 1007). “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.”
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`Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
`
`1987). On this record, we are persuaded that Petitioner fails to demonstrate
`
`a reasonable likelihood of prevailing in the challenges to claims 48-53.
`
`B. Asserted Grounds
`
`1. Anticipation of Claims 48-53 by Hock
`
`a.
`
`Hock
`
`Hock is directed to “a multi-purpose optical measuring device for
`
`determining the position or the movement of an object relative to a reference
`
`point or the movement of an object relative to a reference point or a
`
`reference direction.” Ex. 1001, col. 1, ll. 33-36. Figure 1 of Hock is
`
`reproduced below:
`
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`
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`Figure 1 depicts an embodiment of a measuring device that includes “a light
`
`source 10 in front of a condenser 11 [that] illuminates a moving diaphragm
`
`12[,] the slot 12a of which defines the scanning mark.” Id. at col. 3, ll. 3-6.
`
`According to Hock,
`
`[t]he movement of the diaphragm may for example be
`oscillating or may consist of a pivoting movement around an
`axis parallel to the instrument axis in such a way that the
`scanning mark 12a remains constantly or intermittently in the
`path of light. The scanning light beam coming thus from the
`scanning mark 12a is directed onto a reflector [26] via the first
`beam splitter 13 and the objective 14. The light rays of the
`beam reflected from the reflector travel backward through the
`objective 14 and are directed by beam splitter 13 onto the index
`carrier 16, provided with the indices 15. The image of the index
`plate of the carrier 16 is, via a second beam splitter 17,
`produced in an eyepiece 18 as well as on a photoelectric
`transducer 19. Beam splitter 17 can be a semi-silvered mirror, a
`conventional device for separating two polarized components or
`
`11
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`a dichroic device for splitting the beam as a function of wave
`length.
`
`
`Id. at col. 3, ll. 6-23; see also id. at col. 3, ll. 49-52 (describing light-
`
`absorbing graduation 21a of fig. 1a).
`
`Hock’s Figure 3a is reproduced below:
`
`
`Figure 3a depicts another embodiment of a measuring device that includes a
`
`telescopic magnifier that includes optical system 40 with reflector 41 “being
`
`positioned in the focal plane” of the optical system 40. Id. at col. 3, ll. 61-
`
`65. Yet another embodiment of the reflector, reflector 23, is depicted in
`
`Figure 2 (not shown) of the ’913 patent. Id. at col. 2, ll. 15-24; fig. 2.
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`b.
`
`Hock Analysis
`
`Petitioner’s arguments regarding Hock are set forth almost entirely in
`
`the claim charts. Pet. 9-18. Petitioner argues that Hock discloses each and
`
`every element of the invention, as recited in claims 48-53. Id.
`
`In particular, independent claims 48 and 51 recite that “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.”
`
`Petitioner argues that
`
`Hock discloses a focusing means (14) and a reflective surface
`(26, 21) positioned within the focal plane of the focusing
`means. Specifically, Hock discloses “a reflector being
`positioned in the focal plane thereof.” (Ex. 1001, Col. 3, ll. 64-
`65). Hock also discloses that the reflector is located “in the
`image plane of the objective 14.” (Ex. 1001, Col. 4, ll. 20).
`
`
`Pet. 11 (Claim 48), 14 (Claim 51).
`
`Patent Owner argues that Petitioner improperly relies upon different
`
`embodiments of Hock to disclose the elements recited in independent
`
`claims 48 and 53. Prelim. Resp. 16-17. We agree. As the Court of Customs
`
`and Patent Appeals explained,
`
`[s]uch picking and choosing may be entirely proper in the
`making of a 103, obviousness rejection, where the applicant
`must be afforded an opportunity to rebut with objective
`evidence any inference of obviousness which may arise from
`the similarity of the subject matter which he claims to the prior
`art, but it has no place in the making of a 102, anticipation
`rejection.
`
` Application of Arkley, 455 F.2d. 586, 587-88 (CCPA 1972); see also Net
`
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (2008) (“Thus, it is not
`
`enough that the prior art reference . . . includes multiple, distinct teachings
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`that the artisan might somehow combine to achieve the claimed invention.”;
`
`citation to Arkley omitted). Thus, Petitioner fails to demonstrate that Hock
`
`discloses, in a single embodiment, each and every element of claims 48 and
`
`51, as set forth in the claims. See Verdegaal Bros., 814 F.2d at 631.
`
`Indeed, Petitioner selects elements from multiple embodiments of
`
`Hock in order to meet the above-quoted limitation of claims 48 and 51. In
`
`particular, Petitioner refers to the embodiment of Hock’s Figures 1 and 1a as
`
`disclosing “a focusing means (14) and a reflective surface (26, 21)
`
`positioned within the focal plane of the focusing means,” and Petitioner
`
`refers to the embodiment of Hock’s Figure 2 as disclosing that “the reflector
`
`is located ‘in the image plane of the objective 14.’” Pet. 11 (Claim 48), 14
`
`(Claim 51); see Ex. 1001, col. 3, ll. 24-26 (“an embodiment”); col. 4, ll. 15-
`
`24 (“[a]nother embodiment”); see also id. at col. 3 ll. 61-65 (referring to “in
`
`this embodiment” of Figure 3a). Petitioner further argues that Hock
`
`discloses “receiving reflected radiant energy with an optical gain after
`
`retroreflection of the radiant energy.” Pet. 10. In particular, Hock discloses
`
`detection means 19, which is described as “a photoelectric transducer.” Id.
`
`(citing Ex. 1001, col. 1, l. 20). Further, Hock discloses a photoelectric cell.
`
`Id. (citing Ex. 1001, col. 1, l. 58). Because of these disclosures by Hock,
`
`Petitioner contends that Hock discloses “optical gain,” as recited in claims
`
`48 and 51. Id. In support of this contention, Petitioner appears to rely on the
`
`conclusory statement by its declarant, Dr. Mansuripur, that Hock discloses
`
`“all of the limitations of the [’913 patent] claims at issue, including this
`
`optical gain limitation.” Ex. 1007 ¶ 33; see id. ¶ 35.
`
`As noted above, however, Patent Owner argues that “retroreflected
`
`radiant energy does not necessarily or inherently exhibit an optical gain.
`
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`Rather, in order to exhibit optical gain, retroreflected radiant energy must
`
`show a change in its radiant flux density relative to the radiant flux density
`
`of other reflected radiant energy, e.g., reflection from a reference or a
`
`standard.” Prelim. Resp. 10 (emphasis added; citing Ex. 1003, col. 4, ll. 42-
`
`43). In particular, Patent Owner argues that
`
`Hock [does not] rely on such variation of the radiant flux
`density of the reflected light. Rather, as discussed above, Hock
`relies only on the luminous scanning mark from diaphragm 12
`illuminating the surface of reflector 41 being reflected so as to
`merely impinge on the carrier 16. In contrast, claim 48 recites
`“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.” Thus, in contrast to the teachings
`of Hock, in the method of claim 48, the optical gain of reflected
`radiant energy after retroreflection is detected.
`
`
`Prelim. Resp. 17 (emphasis added). Hence, Patent Owner argues that Hock
`
`fails to disclose “optical gain,” as recited in claims 48 and 51. Again, we
`
`agree. Moreover, we give little weight to Petitioner’s declarant’s conclusory
`
`statements regarding Hock’s alleged disclosure of “optical gain.” See Ex.
`
`1007 ¶¶ 33, 35; see also Office Patent Trial Practice Guide, 77 Fed. Reg. at
`
`48,763 (“Affidavits expressing an opinion of an expert must disclose the
`
`underlying facts or data upon which the opinion is based.”). Thus, we are
`
`persuaded that Petitioner fails to demonstrate that Hock discloses each and
`
`every element of claims 48 and 51, as set forth in those claims. See
`
`Verdegaal Bros., 814 F.2d at 631.
`
`
`
`Because claims 49 and 50 depend from claim 48, and claims 52 and
`
`53 depend from claim 51, we also are persuaded that Petitioner fails to
`
`demonstrate that Hock discloses each and every element of these dependent
`
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`claims. Therefore, we conclude that Petitioner fails to demonstrate a
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`reasonable likelihood of prevailing in showing that claims 48-53 of the ’913
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`patent are anticipated by Hock.
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`2.
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`Anticipation of Claims 48-53 by Zoot
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`a.
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`Zoot
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`Zoot discloses “[a] non-contacting distance gauge and contour
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`mapping apparatus utilizing a high intensity light source.” Ex. 1002, col. 1,
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`ll. 12-13. Figure 1 of Zoot is reproduced below:
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`Figure 1 depicts an embodiment of that apparatus, which includes light
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`source 10, e.g., a laser, whose radiation is directed to object 11. Ex. 1002,
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`col. 3, ll. 45-57. Primary lens 12 and composite lens-reticle 13 are disposed
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`in the optical path between light source 10 and object 11. Id. at col. 3, ll. 58-
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`60. “The composite lens-reticle structure 13, in turn, comprises an annular
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`transmitting objective lens 14, an annular transmitting reticle 15 and a
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`receiving objective lens 16, which is located within the central region of
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`annular transmitting lens 14.” Id. at col. 3, ll. 61-65. The apparatus includes
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`“reflecting members 18 and 19, a nutating plate 20, a receiving reticle 21
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`and an optical filter 22.” Id. at col. 4, ll. 1-4. The apparatus also includes an
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`“optical detector 17, which is capable of generating an electrical output
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`16
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`signal, the magnitude of which varies in response to the intensity of the light
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`incident upon it . . . .” Id. at col. 3, ll. 72-74.
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`In operation, a light beam generated by light source 10 is directed via
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`lens 12 as a diverging light beam to lens-reticle structure 13, where the
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`central portion of the diverging light beam is intercepted by reflector 18. Id.
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`at col. 4, ll. 5-10. “The annular outer portion of the diverging light beam
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`passes through transmitting objective lens 14 and is split into four somewhat
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`pie-shaped segments by transmitting reticle 15 and focused on object 11.”
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`Id. at col. 4, ll. 11-14. “In the embodiment of [Figure 1], the region of object
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`11 on which the transmitted light beam is focused coincides with the focal
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`point of the primary lens-transmitting objective lens combination.” Id. at
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`col. 4, ll. 30-33. “When object 11 is so situated, the transmitted light beam
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`appears as a spot on the surface of object 11.” Id. at col. 4, ll. 34-35.
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`Objective lens 16 converges light reflected from the spot imaged on
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`object 11, and the converged light is reflected via reflection members 18 and
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`19 onto nutating plate 20. Id. at col. 4, ll. 38-42. The passage of the
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`converging light beam through the nutating plate causes its displacement
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`from the optical axis. Id. at col. 4, ll. 42-44. “By rotating nutating plate 20
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`by means of a motor assembly, indicated generally by windings 23, the
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`converging light beam can be made to trace a circular path.” Id. at col. 4, ll.
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`44-47. The rotating nutating light beam is directed toward receiving reticle
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`21, which periodically interrupts the light beam “so that it passes through
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`optical filter 22 to detector 17 only four times per revolution of nutating
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`plate 20.” Id. at col. 4, ll. 47-52.
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`17
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`b.
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`Zoot Analysis
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`Petitioner’s arguments regarding Zoot are set forth almost entirely in
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`the claim charts. Pet. 9-18. Petitioner argues that Zoot discloses each and
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`every element of the invention, as recited in claims 48-53. Id.
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`In particular, independent claim 48 recites the step of “receiving
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`reflected radiant energy with an optical gain after retroreflection of the
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`radiant energy.” Similarly, independent claim 51 recites “a detector for
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`detecting received reflected radiant energy with an optical gain after
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`retroreflection of the radiant energy to determine at least one characteristic
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`of the object.”
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`Petitioner argues that “Zoot discloses a detection means (17), which is
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`described as an ‘optical detector’ (Ex. 1002, Col. 3, ll. 72).” Pet. 12.
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`Nevertheless, Petitioner does not mention where Zoot discloses that the
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`radiant energy is received “with an optical gain.” Id.
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`Patent Owner argues that Petitioner fails to demonstrate that Zoot
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`discloses “optical gain,” as recited in claims 48 and 51. Prelim. Resp. 26.
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`Petitioner argues that “[a] retroreflected ray has an increased radiant flux
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`density because of the narrowing effect of retroreflection. (Ex. 1003, col. 4,
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`ll. 6-8). It is a characteristic of retroreflector optical systems to reflect
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`energy [sic] rays in a very narrow beam. (Ex. 1003, Col. 4, ll. 20-21).” Pet.
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`6. Again, however, Petitioner’s declarant, Dr. Mansuripur, makes only
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`conclusory statements about Zoot’s alleged disclosure of “optical gain.”
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`Specifically, Dr. Mansuripur opines that “those skilled in the art would know
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`the reflective object (11) disposed in the focal plane of a focusing lens (14)
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`of Zoot discloses optical gain as defined by the [’913 patent].” Ex. 1007
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`¶ 40. Consequently, and for reasons similar to those set forth above with
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`respect to Hock, we give little weight to Petitioner’s declarant’s conclusory
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`statements regarding Zoot’s alleged disclosure of “optical gain.” See id.
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`Therefore, we determine that Petitioner fails to demonstrate that Zoot
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`discloses “optical gain,” as recited in claims 48 and 51.
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`Patent Owner further contends that Zoot fails to disclose a
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`retroreflection of energy because the incident light and the reflected light
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`pass through different lenses. Prelim. Resp. 27. In particular, referring to
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`Zoot’s Figure 1, the apparatus depicts incident light passing though annular
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`lens 14 and reflected light passing through central lens 16. Ex. 1002, col. 3,
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`ll. 61-62; fig. 1. We agree with Patent Owner’s description of this feature of
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`Zoot’s Figure 1, but claims 48 and 51 do not require that the incident and the
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`reflected light rays pass through the same lens.
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`Specifically, claim 48 merely recites “receiving reflected radiant
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`energy with an optical gain after retroreflection of the radiant energy,” and
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`claim 51 merely recites “a detector for detecting received reflected radiant
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`energy with an optical gain after retroreflection of the radiant energy.”
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`Thus, neither claim requires that the incident and reflected light rays pass
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`through the same lens.
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`Consequently, because Petitioner fails to demonstrate that Zoot
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`discloses “optical gain,” as recited in claims 48 and 51, Petitioner fails to
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`demonstrate that Zoot discloses each and every element of claims 48 and 51,
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`as set forth in those claims. See Verdegaal Bros., 814 F.2d at 631. Because
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`claims 49 and 50 depend from claim 48, and claims 52 and 53 depend from
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`claim 51, we also are persuaded that Petitioner fails to demonstrate that Zoot
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`discloses each and every element of these dependent claims. Therefore, we
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`conclude that Petitioner does not demonstrate a reasonable likelihood of
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`prevailing in showing that claims 48-53 of the ’913 patent are anticipated by
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`Zoot.
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`III. CONCLUSION
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`Petitioner fails to demonstrate that there is a reasonable likelihood of
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`prevailing in its challenge to the patentability of claims 48-53 of the ʼ913
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`patent. Consequently, the petition is denied as to the following grounds
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`proposed: (1) anticipation of claims 48-53 by Hock; and (2) anticipation of
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`claims 48-53 by Zoot.
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`IV. ORDER
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`For the reasons given, it is
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`ORDERED that the petition is denied as to claims 48-53 on the
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`grounds listed above in Section III.
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`PETITIONER:
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`
`Christopher D. Bright
`Amol A. Parikh
`MCDERMOTT WILL & EMERY LLP
`cbright@mwe.com
`amparikh@mwe.com
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`PATENT OWNER:
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`
`Thomas Engellenner
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`engellerrert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`Theodosios Thomas
`OPTICAL DEVICES, LLC
`ted.thomas@sceneralabs.com
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`21
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`EXHIBIT 1006 - PAGE 0021
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