Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 38
`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 IPR2014-01443
`Patent RE40,927 E
`_______________
`
`
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 38
`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 IPR2014-01443
`Patent RE40,927 E
`_______________
`
`
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
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`IPR2014-01443
`Patent RE40,927 E
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`
`A. Background
`
`I.
`
`INTRODUCTION
`
`Toshiba Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 37, 38, 48, 49, 51–53, 55–58, 60,
`61, 63, 64, 67–69, and 71 of Patent No. US RE40,927 E (Ex. 1001,
`“the ’927 patent”). Optical Devices, LLC (“Patent Owner”) filed a
`Preliminary Response (Paper 7, “Prelim. Resp.”).
`On March 10, 2015, we instituted an inter partes review of claims 37,
`38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63, 64, 67–69, and 71 of the
`’927 patent. Paper 8 (“Dec. Inst.”). Patent Owner filed a Patent Owner
`Response to the Petition. Paper 15 (“PO Resp.”). Petitioner filed a Reply to
`the Patent Owner Response. Paper 21 (“Pet. Reply”).
`Additionally, Patent Owner filed a Contingent Motion to Amend
`seeking to replace any of original claims 37, 38, 48, 49, 51–53, 55, 57, 58,
`60, 61, 63, 64, 67–69, and 71 found to be unpatentable with substitute claims
`72–89, respectively. Paper 16 (“Mot.”). Petitioner filed an Opposition to
`the Contingent Motion to Amend. Paper 22 (“Opp.”). Patent Owner filed a
`Reply to Petitioner’s Opposition. Paper 31 (“Reply”). On January 12, 2016,
`the parties presented arguments at an oral hearing. Paper 37 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
`Written Decision, issued pursuant to 35 U.S. C. § 318(a) and 37 C.F.R.
`§ 42.73, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63, 64, 67–69,
`and 71 are unpatentable. We also deny the Motion to Amend.
`
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`B.
`
`The Cited Reference and Declaration
`
`Petitioner relies upon Patent No. US 3,506,839 to Ando, filed
`February 20, 1967 (“Ando”) (Ex. 1007) in support of its ground challenging
`the identified claims of the ’927 patent. Petitioner relies also upon the
`Declaration of Lambertus Hesselink, Ph.D. (Ex. 1008).
`Patent Owner relies upon the Declaration of James R. Leger, Ph.D.
`(Ex. 2104).
`
`C.
`
`The Instituted Ground of Unpatentability
`
`Petitioner challenges the patentability of claims 37, 38, 48, 49, 51–53,
`55, 57, 58, 60, 61, 63, 64, 67–69, and 71 under 35 U.S.C 102(e) (pre-AIA)
`as anticipated by Ando. Pet. 12.
`
`D.
`
`Related Proceedings
`
`The parties indicate that the ’927 patent is the subject of Optical
`Devices, LLC v. Toshiba Corp., Case No. 1:13-cv-10530 (D. Del. 2013).
`Pet. 1; Paper 6, 2 (also identifying other related cases). In addition, the
`patent currently is the subject of an investigation before the U.S.
`International Trade Commission: In the Matter of Certain Optical Disc
`Drives, Components Thereof, and Products Containing the Same, Inv. No.
`337-TA-897. Pet. 1; Paper 6, 1. Further, we instituted inter partes reviews
`for claims of the following patents covering related subject matter: Patent
`Nos. US RE42,913 E (IPR2014-01439, Paper 7) and US RE43,681 E
`(IPR2014-01441, Paper 8, and IPR2014-01442, Paper 7). IPR2014-01442
`was consolidated with IPR2014-01441 (IPR2014-01441, Paper 9; IPR2014-
`01442, Paper 8).
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`
`The ’927 Patent
`E.
`The ’927 patent describes an optical system having a focusing lens
`and a reflective surface positioned near the focal plane of the lens, whereby
`radiant energy from a radiant energy source directed at the system is
`reflected back towards the source by the optical system due its
`retroreflection characteristics. Ex. 1001, 2:48–53. The retroreflected rays
`are recovered by a radiant energy receiver to allow detection of the presence
`and relative position of the optical system. Id. at 2:52–55. The claims at
`issue are directed to an apparatus for measuring the retroreflective
`characteristics of such an optical system, as well as a method and apparatus
`for detecting characteristics or properties of such a system. See, e.g., id. at
`Claims 38, 48, and 61.
`The Specification defines a “retroreflector” as “a reflector wherein
`incident rays or radiant energy and reflected rays are parallel for any angle
`of incidence within the field-of-view.” Id. at 1:10–13. The Specification
`explains that “[a] characteristic of a retroreflector is that the energy
`impinging thereon is reflected in a very narrow beam, herein referred to as
`the retroreflected beam.” Id. at 1:13–15. According to the Specification,
`“[t]his phenomenon is termed retroreflection.” Id. at 1:15–16.
`Figure 1 of the ’927 patent is reproduced below:
`
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`Figure 1 of the ’927 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. 1001, 2:59–62. 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
`2:62–65. For purposes of clarity, the ’927 patent shows the incident rays at
`the top of lens 20 and the reflected rays at the bottom of lens 20. Id. at 2:66–
`3:2. Incident rays 26 and 28 are refracted by lens 20 and focused at focal
`point 32 on mirror 22. Id. at 3:2–4. 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 3:4–8.
`
`Figure 3 of the ’927 patent is reproduced below:
`
`
`Figure 3 of the ’927 patent shows that the radiant flux density at surface 22B
`may vary based on characteristics of the components of the optical system,
`such as placement of or imperfections in lens 20B. Id. at 3:28–44; 3:66–
`4:59; see Prelim. Resp. 3. For example, in Figure 3, reflective surface 22B
`is positioned substantially, but not entirely, in focal plane 24B. Id. at 3:28–
`44. According to the ’927 patent,
`[i]n the system depicted in FIG. 3 . . . the lens 20B is assumed to
`be imperfect; i.e., it has aberrations. In this case 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
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`
`confusion and the mirror is normally positioned at the plane of
`least circle of confusion, herein depicted by the reference
`numeral 42. Thus, 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.
`
`Ex. 1001, 3:28–41. 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 that of Figure 3, i.e., where surface 22B lies substantially, but not
`entirely, in focal plane 24B, is referred to as the optical gain. See id. at col.
`3:28–65. In Figures 1 and 3, the rays retroreflected by the optical system are
`in the form of a narrow, substantially collimated beam having a high radiant
`flux density. Id. at 3:59–61. “[T]here 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.” Id. at 3:62–
`65.
`
`F.
`
`Illustrative Claims
`
`
`
`Independent claim 37 is illustrative and is reproduced below:
`37. Apparatus for measuring the retroreflective characteristics
`of an optical system consisting of at least a focusing means and
`a surface exhibiting some degree of reflectivity disposed
`substantially in the focal plane of said focusing means, said
`apparatus comprising
`a radiant energy source,
`detection means,
`measuring means connected to said detection means, and
`means for directing said radiant energy produced by said
` source at said optical system,
`whereby said radiant energy is retroreflected with an optical
`
`gain by said optical system and detected by said
`
`detecting means and the output thereof is coupled to said
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`
` measuring means.
`Ex. 1001, 12:55–13:2 (disputed limitation emphasized). Claims 37, 48, and
`61 are independent. The remaining challenged claims depend, directly or
`indirectly, from one of these independent claims.
`
`G.
`
`Claim Construction
`
`In an inter partes review, the Board construes 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 following terms.
`
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`
`“Optical Gain”
`1.
`In the context of a retroreflecting optical system, Petitioner proposes
`that we construe “optical gain” as “‘an actual increase in the radiant flux
`density of the retroreflected beam due to the narrowing thereof.’” Pet. 16.
`Petitioner argues that retroreflected light inherently has the attribute of
`optical gain because the lens concentrates rays into a smaller solid angle that
`otherwise would be reflected into a larger one. Id at 20.
`In support of its position, Petitioner provides the following image
`comparing retroreflected light with Lambertian scattered light at Petition
`page 21 and at Exhibit 1008 ¶ 47:
`
`
`
`According to Petitioner, the comparison depicted in this image 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. 21.
`Patent Owner argues for a broader construction of “optical gain” that
`it asserts would be consistent with various “embodiments” described in the
`Specification of the ’927 patent. PO Resp. 6−19. Patent Owner proposes
`that the broadest reasonable construction of the term “optical gain” in the
`context of the ’927 patent is “a change in radiant flux density of reflected
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`radiant energy.” PO Resp. 6 (citing Ex. 2104 ¶¶ 20–21).
`Patent Owner’s declarant, Dr. Leger, 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 can be
`compared with the reflected [radiant] flux density at another scanned
`location.” Ex. 2104 ¶ 21. Dr. Leger explains further that “a change in the
`detected reflected [radiant] flux density from one location to another can
`signal the presence or absence of a retroreflective instrument.” Id.
`According to Dr. Leger, one of ordinary skill would appreciate that a
`photodetector signal increase would represent “an increase in the radiation
`flux density when the scanning radiation is moved from an object that is not
`a retroreflector onto an adjacent object that exhibits a retroreflective
`characteristic (e.g., a binocular).” Id. On the other hand, a signal decrease
`would represent “a decrease in the radiation flux density when the scanning
`radiation is moved from an object that has a retroreflective characteristic to
`an adjacent object that does not have such a characteristic.” Id. According
`to Dr. Leger, the fact that an 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 relative decrease in the reflected radiant flux density. Id. In
`another example, in order to track an object associated with some level of
`retroreflectivity, a relative decrease in the retroreflectivity is detected when
`the object moves away from the initially detected location. Id. Therefore,
`Dr. Leger reasons that one of ordinary skill would have understood that the
`concept of “optical gain” as used in the ’927 patent “covers both an increase
`and a decrease in the reflected radiant flux density.” Id.
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`
`Petitioner, relying upon the testimony of its declarant, Dr. Hesselink,
`disagrees with Patent Owner. Pet. 16–22; Pet. Reply 4–8. According to Dr.
`Hesselink, the inventor of the ’927 patent acted as a lexicographer by
`providing 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 ¶ 39 (emphasis omitted). Dr. Hesselink refers
`to the following passage from the ’927 patent to support his view:
`
`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 flux 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, 3:59–63 (emphasis added).
`Patent Owner 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. 10 (citing Ex. 2104 ¶ 23). Restricting the
`construction of “optical gain” in the context of the ’927 patent 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 ’927 patent. Id.
`Patent Owner asserts that Dr. Hesselink’s view requires that “optical
`gain” be measured relative to a Lambertian radiator. Id. (citing Ex. 1008
`¶ 40). Dr. Hesselink refers to the following passage from the ’927 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. ¶ 40
`(citing Ex. 1001, 4:27–30). However, Dr. Leger interprets this passage
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`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 ’927 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 ’927 patent has
`chosen the Lambertian radiator as an illustrative reference only in the
`context of the particular example, and not as a way of determining optical
`gain in all cases. Id.
`Patent Owner further asserts that Dr. Hesselink relies upon the plain
`meaning “gain” in construing “optical gain” to indicate a positive change.
`PO Resp. 11 (citing Ex. 1008 ¶ 44). Patent Owner argues, however, that, in
`the field of microwave antennas, for example, the “gain” of an antenna can
`be positive or negative. Id. For example, in the field of microwave
`antennas, the “gain” of an antenna can be positive or negative. Id. (citing
`Ex. 2104 ¶ 25). The Specification of the ’927 patent explains that its
`teachings are applicable to the detection of microwave apparatus, such as
`antennas. Id. (citing Ex. 1001, 9:5–8). Thus, according to Patent Owner,
`one of ordinary skill would understand that the concept of “optical gain” as
`used in the ’927 patent covers both an increase and a decrease in the
`reflected radiant flux density as compared to a standard or reference. Id. at
`11–12 (citing Ex. 2104 ¶ 24).
`Dr. Hesselink acknowledged Patent Owner’s argument that in various
`fields of science and engineering, the term “gain” may be employed to
`denote both positive and negative change, but testified that such an
`interpretation is not appropriate here. See Ex. 2119, 60:10–61:8.
`
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`Specifically, Dr. Hesselink testified that
`
`“Gain” in general, unrelated to what is here, my understanding
`of that from physics and optics is that “gain” and “loss” are two
`words that are opposite of each other. “Gain” would mean that
`I would increase the value of something. “Loss” would mean I
`would have lost the value of something.
`Ex. 2119, 60:22–61:3 (emphasis added); see id. at 61:13–16; see also
`WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 341 (1967) (Ex. 3002)1
`(the noun “gain” defined as “an increase in amount, magnitude, or degree;
`specif : the ratio of increase in output over input in an amplifier” (emphasis
`added)).
`Patent Owner’s arguments notwithstanding, we conclude that the
`strongest evidence for construing the term “optical gain” comes from the
`Specification itself which defines the term. As the Federal Circuit has
`explained,
`[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
`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
`
`
`1 This Final Written Decision does not reference Exhibit 3001.
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`light of the specification). Given the plain language of the claims, in
`particular the emphasis on “optical”; the testimony of the parties’ declarants,
`and the clear definition of the Specification, we are not persuaded here by
`Patent Owner’s argument that all disclosed embodiments should be
`embraced by our construction. “It is not necessary that each claim read on
`every embodiment.” Baran v. Med. Device Techs., Inc., 616 F.3d 1309,
`1316 (Fed. Cir. 2010); Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,
`689 (Fed. Cir. 2008) (“‘[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.’”) (quoting Ventana Med. Sys., Inc. v. Biogenex
`Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)).
`The ’927 patent includes a description of a radar system embodiment
`with respect to Figures 13 and 14. Ex. 1001, 9:25–57. The radar system is
`detected by means of the “retroreflection principles” of the invention. Id. at
`9:25–27. 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) (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. The challenged claims are directed to either a method of or an
`apparatus for measuring or detecting characteristics of an “optical system.”
`As noted above, we construe “optical system” to mean “a collection of
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`optical elements including at least a lens and a reflective surface.” In this
`context, we conclude that “optical gain” is limited to the optical spectrum
`and does not apply to other portions of the electromagnetic 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.”
`
`Unchallenged Constructions
`2.
`We provided the following constructions in the Institution Decision:
`
`(a) “‘focal plane’” as “‘a plane through the focus perpendicular to the
`axis of an optical element.’” Dec. Inst. 8.
`(b) “‘retroreflected’” as “‘having undergone reflection of an incident
`ray in a manner such that the reflected ray is parallel to the incident ray of
`any angle of incidence,’ . . . wherein any angle of incidence is ‘within the
`field-of-view’ of the retroreflector.’” Id.
`(c) “‘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, . . . wherein any angle of incidence is ‘within the field-of-view’ of
`the retroreflector.’” Id.
`(d) “‘optical system’” as “‘a collection of optical elements including
`at least a lens and a reflective surface.’” Id.
`(e) “‘substantially concentric’” as “‘having an axis, or axes, aligned
`coaxially or nearly coaxially therewith.’” Id. at 9.
`The parties do not challenge those constructions in the Patent Owner’s
`Response or in the Petitioner’s Reply. Nor do we find any reason to depart
`from those constructions in this Final Written Decision. Accordingly, we
`maintain each of those unchallenged constructions as the broadest
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`reasonable interpretation, consistent with the Specification, in this Decision.
`Based on our analysis, we determine that no express claim
`construction is necessary for any remaining claim term.
`
`H.
`
`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) and 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 ’729 patent 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. 26–27 (citing Ex. 1008 ¶ 32) (emphasis added).
`
`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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`
`II. ANALYSIS
`
`Petitioner contends that claims 37, 38, 48, 49, 51–53, 55–58, 60, 61,
`63, 64, 67–69, and 71 of the ’927 patent are anticipated by Ando. Pet. 27;
`Pet. Reply 9–15. In the Patent Owner’s Response, Patent Owner challenges
`Petitioner’s contentions only with respect to claims 37, 38, 58, and 69, i.e.,
`only the challenged claims requiring that “the reflected radiant energy has an
`optical gain.” PO Resp. 33–37. As explained in the Scheduling Order, “any
`arguments for patentability not raised in the response will be deemed
`waived.” Paper 9, 3 (discussing due date for Patent Owner’s Response).
`Accordingly, Patent Owner has waived arguments relating to Petitioner’s
`challenge of claims 48, 49, 51–53, 55–57, 60, 61, 63, 64, 67, 68, and 71.
`“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. v. Union Oil Co. of California, 814 F.2d
`628, 631 (Fed. Cir. 1987).
`
`A.
`
` Ando
`
`Ando is directed to “[a] contactless probe system for determining the
`configuration of an object comprising a laser scanner scanning the surface of
`the object with a beam of light focused at a point which is a fixed distance
`from the scanner.” Ex. 1007, 1:15–19.
`Ando’s Figure 1 is reproduced below.
`
`16
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`IPR2014-01443
`Patent RE40,927 E
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`Figure 1 is a block diagram of a “contactless probe system” constructed in
`accordance with the teachings of Ando’s specification. Ex. 1007, 2:30–32.
`Ando explains that its “contactless probe system” determines the contour of
`the surface of object 20 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. Light source 12 may be an electric lamp or a laser. Id. at
`1:15–19, 2:43–44. Servo control of the probe system is affected by
`superimposing a frequency on the radiation reflected from the object and
`passing through lens 24 by vibrating 28 pinhole 27 through which the
`received radiation passes. The probe system is moved so as to minimize the
`frequency imposed by vibrator 28. Ando states,
`More specifically, when an illuminated point on the surface of
`the object 20 is at a distance from the lens 18 substantially equal
`to the focal length f1 thereof, the corresponding beam of light
`passing through the lens 24 has a minimum diameter at the center
`of vibration about which the pinhole 27 is vibrating. This causes
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`17
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`IPR2014-01443
`Patent RE40,927 E
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`the output from the photocell 30 to have no component of the
`fundamental frequency at which the pinhole 27 is vibrating
`whereby the phase comparator 34 provides a null output.
`
`Id. at 3:49–57 (emphasis added). The movement of table 10 of the probe
`system, while object 20 is kept in focus, maps the contour, i.e., three-
`dimensional configuration, of object 20. Id. at 4:19–25. Thus, a
`characteristic, i.e., the surface contour, of object 20 is determined from the
`reflected light and manipulation of the probe system so as to maintain focus.
`
`B. Independent Claim 37 and Dependent Claim 38
`
`Claims 37 and 38 of the ’927 patent are directed to apparatus for
`measuring the retroreflective characteristics of an optical system. Petitioner
`asserts that Ando discloses each limitation of claims 37 and 38, as set forth
`in its claim charts. Pet. 30–35. In particular, referring to Ando’s Figure 1,
`Petitioner asserts that the claim limitation, “radiant energy is retroreflected
`with an optical gain by said optical system” is met by Ando’s disclosure of a
`retroreflector having a reflective surface 20 in the focal plane of lens 18,
`wherein the incoming light to the lens 18 is collimated, “which shows
`radiant energy retroreflected with optical gain.” Id. at 34. To illustrate this
`point, Petitioner reverses a portion of Ando’s Figure 1 and juxtaposes it with
`Figure 1 of the ’927 patent (Pet. 29), as follows:
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`18
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`According to Petitioner, both figures show incoming collimated light
`focused onto a surface of an object substantially in the focal plane of a lens,
`whereby reflected light is collimated by the lens, so that retroreflected light
`rays are parallel to the incoming light rays. Pet. 29–30 (citing Ex. 1008
`¶ 60).
`Light from electric lamp 12 passes through pinhole 15, enters lens 16,
`and is collimated and directed through lens 18. Ex. 1007, 2:8–13, 37–52.
`Lens 18 then focuses this collimated light onto the surface of object 20. Id.
`at 2:52–63. Petitioner asserts that light reflected from the object 20 back
`through lens 18 is split by half-silvered reflector plate 22 and ultimately is
`received by photosensitive device 30. Pet. 28–30. A servo system
`comprising oscillator 34, vibrator 28, slit 27 of aperture plate 26,
`photosensitvie device 30, phase comparator 36, amplifier 38, and servo
`motor 40 moves table 10 of the probe system so as to re-focus light
`continuously on object 20, thereby mapping its contour.
`Petitioner argues that light reflected from object 20 is received with an
`optical gain because retroreflection is occurring and optical gain is “an
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`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.
`20, 34 (citing Ex. 1008 ¶¶ 45–48). According to Petitioner, when optical
`gain is present in the retroreflected light, then the retroreflected light
`ultimately received by photosensitive device 30 necessarily must have an
`optical gain also. Id. We agree.
`Patent Owner asserts that Ando fails to disclose at least one limitation
`of claim 37. PO Resp. 35. In particular, Patent Owner asserts that one of
`ordinary skill would understand the recitation in claim 37 that “radiant
`energy is retroreflected with an optical gain by said optical system and
`detected by said detecting means” requires the “detecting means” to detect
`an optical gain of the retroreflected energy, i.e., detecting a change in the
`radiant flux density of the retroreflected energy. Id. at 33. According to
`Patent Owner, because Ando does not disclose detecting optical gain, it
`would not anticipate this limitation. Id. at 34. In particular, Patent Owner
`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. Further, Patent Owner relies on Dr. Leger’s
`explanation that
`
`the operation of Ando’s comparator 36 does not even 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 35 (citing Ex. 2104 ¶ 65).
`
`20
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`Although we agree with Patent Owner’s description of Ando’s
`operation, we disagree with Patent Owner’s conclusion that Ando does not
`disclose the disputed claim limitation. Specifically, we do not find sufficient
`evidence to read into claim 37 a requirement of detecting optical gain. The
`invention of the ’927 patent involves discerning a retroreflector from its
`background. The retroreflector provides a brighter spot than does its
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