Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 10
`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 IPR2014-00303
`Patent RE40,927 E
`_______________
`
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`TOSHIBA CORP.
`EXHIBIT 1006 - PAGE 0001
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`

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`IPR2014-00303
`Patent RE40,927 E
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`A. Background
`
`I.
`
`INTRODUCTION
`
`Panasonic Corporation and Panasonic Corporation of North America
`
`(collectively, “Petitioner”) filed a petition (Paper 1, “Pet.”) to institute an
`
`inter partes review of claims 37-39, 48-53, 55-58, 60-61, 63-65, 67-69, and
`
`71 of Patent No. US RE40,927 E (Ex. 1007, “the ’927 patent”) pursuant to
`
`35 U.S.C. §§ 311-319. Pet. 5. Optical Devices, LLC (“Patent Owner”) filed
`
`a preliminary response (Paper 9, “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 ’927
`
`patent:
`
`
`Exhibits
`1001
`1002
`1003
`1004
`1005
`1006
`
`1011
`
`
`References and Declaration
`Patent No. US 3,552,857 to Hock (“Hock I”)
`Patent No. US 3,481,672 to Zoot (“Zoot”)
`Patent No. US 3,533,702 to Hock (“Hock II”)
`Patent No. US 3,215,842 to Thomas (“Thomas”)
`Patent No. US 3,020,792 to Kingsbury (“Kingsbury”)
`Electronics, vol. 39, No. 17, 209-210 (1966)
`(“Electronics”)
`Declaration of Masud Mansuripur, Ph.D
`
`2
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`EXHIBIT 1006 - PAGE 0002
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`IPR2014-00303
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`Petitioner asserts that the challenged claims are unpatentable on the
`
`following specific grounds (Pet. 5-7):
`
`References
`Hock I, Hock II
`
`
`
`Claims Grounds
`37
`Anticipated under 35 U.S.C. § 102(e),
`or obvious under 35 U.S.C. § 103(a)
` Zoot
`Anticipated under 35 U.S.C. § 102(e)
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e),
`Zoot, Electronics
`or obvious under 35 U.S.C. § 103(a)
`Obvious under 35 U.S.C. § 103(a)
`
`37
`38
`38
`
`39
`
`39
`48
`
`48
`49
`49
`50
`50
`51
`51
`52
`52
`53
`53
`
`55
`55
`56
`
`56
`57
`57
`58
`58
`60
`
`Hock I, Kingsbury,
`Thomas
`Zoot, Kingsbury, Thomas
`Hock I, Hock II
`
`Obvious under 35 U.S.C. § 103(a)
`Anticipated under 35 U.S.C. § 102(e),
`or obvious under 35 U.S.C. § 103(a)
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Obvious under 35 U.S.C. § 103(a)
`Zoot, Electronics
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e),
`Zoot, Electronics
`or obvious under 35 U.S.C. § 103(a)
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Obvious under 35 U.S.C. § 103(a)
`Hock I, Kingsbury,
`Thomas
`Zoot, Kingsbury, Thomas
`Obvious under 35 U.S.C. § 103(a)
`Hock I, Zoot, Electronics
`Obvious under 35 U.S.C. § 103(a)
`Zoot
`Obvious under 35 U.S.C. § 103(a)
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`
`3
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`60
`61
`
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e),
`Hock I, Hock II
`or obvious under 35 U.S.C. § 103(a)
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Obvious under 35 U.S.C. § 103(a)
`Hock I, Zoot, Electronics
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`Anticipated under 35 U.S.C. § 102(e) Hock I
`Anticipated under 35 U.S.C. § 102(e) Zoot
`
`61
`63
`63
`64
`64
`65
`65
`67
`67
`68
`68
`69
`69
`71
`71
`
`
`
`B. Related Proceedings
`
`The parties indicate that the ’927 patent is the subject of Optical
`
`Devices, LLC v. Panasonic Corp., Case No. 1:13-cv-00726 (D. Del. 2013).
`
`Pet. 3; Paper 8, 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
`
`Thereof, and Products Containing the Same, Inv. No. 337-TA-897. Paper 8,
`
`1. Further, Petitioner has filed another petition for inter partes review,
`
`IPR2014-00302, with respect to a related patent, Patent No. US RE42,913 E,
`
`involving the same Patent Owner. Id.
`
`4
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`C. The ’927 Patent
`
`The application that eventually issued as the ’927 patent was filed on
`
`March 10, 1967. Pet. 1, 9. This application was subject to a secrecy order
`
`for many years. Id. at 9.
`
`Figure 1 of the ’927 patent is reproduced below:
`
`
`
`
`
`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. 1007, col. 2, ll. 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 ll. 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 col. 2, l. 66-col. 3, l. 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. 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 ll. 4-8.
`
`
`
`Figure 3 of the ’927 patent is reproduced below:
`
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`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 col. 3, ll. 28-44;
`
`col. 3, l. 66-col. 4, l. 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 col. 3, ll. 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 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.
`
`
`
`Ex. 1007, col. 3, ll. 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, ll. 59-65. In particular, according to the ’927 patent, “[i]n order to
`
`obtain a measure of the optical gain we must compare the retroreflector to a
`
`standard or reference.” Prelim. Resp. 4 (quoting Ex. 1007, col. 4, ll. 28-29);
`
`6
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`see also Ex. 1007, col. 3, l. 66- col. 4, l. 43 (describing an example of the
`
`calculation of the difference in radiant flux density).
`
`D. Illustrative Claims
`
`
`
`Independent claims 37, 48, and 61 are illustrative and are reproduced
`
`below, with emphases added:
`
`
`
`
`
`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
` measuring means.
`
`48. A method of detecting characteristics or properties of
`an optical system based on a retroreflected beam, comprising:
`transmitting radiant energy at an optical system having
` retroreflective characteristics;
` receiving reflected radiant energy after retroreflection of
`the radiant energy;
` detecting the reflected radiant energy after retroreflection
`to determine at least one characteristic or property of the
`optical system.
`
`
`61. An apparatus for detecting characteristics or properties of
`an optical system based on a retroreflected beam, comprising:
`transmitting radiant energy at an optical system having
` a source of radiant energy;
`a detector; and
`
`7
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`an optical system that directs radiant energy from the source
`toward a retroreflective surface and returns reflected radian
`energy to the detector;
` wherein the detector determines at least one characteristic
`or property of the optical system.
`
`
`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 asserts how the challenged claims should be construed, i.e.,
`
`according to their broadest reasonable interpretation consistent with the
`
`Specification, but does not propose what the specific constructions should
`
`be. Pet. 7. Instead, Petitioner only proposes a definition for the term
`
`“retroreflector” (id. at 7-8), which term does not appear in the challenged
`
`claims.
`
`1 Pub. L. No. 112-29 (2011).
`
`8
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`Patent Owner, however, proposes constructions for the claim terms
`
`“optical system,” “optical gain,” “retroreflected,” “retroreflection,” “focal
`
`plane,” and “substantially concentric,” as follows:
`
`1. 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. 9. Petitioner does 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 ’927 patent.
`
`Id. (citing Ex. 1007, col. 2, ll. 48-58; col. 5, ll. 34-37; col. 8, ll. 11-14; Figs.
`
`1-4, 6-12).
`
`2. Optical Gain
`
`Patent Owner proposes to construe “optical gain” as “a change in
`
`radiant flux density of reflected radiant energy.” Prelim. Resp. 9. 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.
`
`Id. at 9-10 (citing Ex. 1007, col. 4, ll. 28-30). Petitioner does 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 ’927 patent. Id. at 9 (citing Ex. 1007, col. 3, l. 50-col. 5,
`
`l. 10).
`
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`3. Retroreflected
`
`Patent Owner proposes to construe “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.” Prelim. Resp.
`
`11. Petitioner does 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 ’927 patent. Id. (citing
`
`Ex. 1007, col. 1, ll. 10-15; col. 2, l. 65-col. 3, l. 13; col. 3, ll. 37-50; col. 6, ll.
`
`19-31; col. 7, ll. 4-11).
`
`4. 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. 11. Petitioner does
`
`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 ’927 patent. Id. (citing Ex. 1007, col. 1, ll. 10-15;
`
`col. 2, l. 65-col. 3, l. 13; col. 3, ll. 37-50; col. 6, ll. 19-31; col. 7, ll. 4-11).
`
`5. 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. 11-
`
`12. Petitioner does 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 ’927 patent (see, e.g., Ex.
`
`1007, Figs. 1-4).
`
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`6. Substantially Concentric
`
`Patent Owner proposes to construe “substantially concentric” as
`
`“having an axis, or axes, aligned coaxially or nearly coaxially therewith.”
`
`Prelim. Resp. 12. Petitioner does 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 ’927 patent.
`
`Id. at 12 (citing Ex. 1007, col. 6, ll. 5-18; and Figs. 7, 7a, 7b).
`
`II. ANALYSIS
`
`A. Independent Claim 37 and Dependent Claims 38, 39
`
`Claims 37-39 of the ’927 patent are directed to apparatuses for
`
`measuring the retroreflective characteristics of an optical system.
`
`1. Hock I
`
`Petitioner contends that independent claim 37 is anticipated by Hock
`
`I, or would have been obvious over Hock I alone, or in combination with
`
`Hock II. Pet. 5. Petitioner also contends that dependent claim 38 is
`
`anticipated by Hock I. Id. Additionally, Petitioner contends that dependent
`
`claim 39 would have been obvious over Hock I alone, or in combination
`
`with Kingsbury or Thomas. Id. at 6.
`
`Hock I 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 I is
`
`reproduced below:
`
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`Figure 1 of Hock I 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 I,
`
`[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
`a dichroic device for splitting the beam as a function of wave
`length.
`
`
`Id. at col. 3, ll. 6-23.
`
`Hock I’s Figure 3a is reproduced below:
`
`12
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`Figure 3a of Hock I depicts another embodiment of a measuring device in
`
`the form of 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. Another embodiment of the reflector, reflector 23, is
`
`depicted in Figure 2 (not shown) of the ’927 patent. Id. at col. 2, ll. 15-24;
`
`Fig. 2.
`
`Petitioner’s arguments are set forth in its claim charts. Pet. 11-47.
`
`We observe a number of issues regarding Petitioner’s assertion that Hock I
`
`discloses each and every element of independent claim 37. In particular, we
`
`agree with Patent Owner (Prelim. Resp. 16), that Petitioner has not indicated
`
`where or how Hock I discloses an apparatus “whereby said radiant energy is
`
`retroreflected with an optical gain by said optical system,” as recited by
`
`claim 37. Instead, Petitioner only asserts the following for this element:
`
`
`
`whereby said radiant
`energy is retroreflected
`with an optical gain by said
`optical system and detected
`by said detecting means
`
`Hock [I] discloses that retroreflected rays are
`detected by the detecting means. Specifically,
`Hock discloses a detection means (19), which
`is describes as “a photoelectric transducer.”
`(Ex. 1001, Col. 1, ll.[sic] 20). Hock [I] also
`
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`and the output thereof is
`coupled to said measuring
`means.
`
`discloses in an additional embodiment that the
`lens and reflector combination has “telecentric
`qualities.” (Ex. 1001, Col. 4, [l.] 28).
`See also Figure 3a.
`
`
`
`
`
`
`Pet. 13-14. Petitioner has not explained how the disclosures set forth in this
`
`portion of the claim chart, i.e., Hock I’s disclosure of (1) a detection means
`
`described as a photoelectric transducer, and (2) an embodiment wherein the
`
`lens and reflector combination has “telecentric qualities,” disclose that
`
`“radiant energy is retroreflected with an optical gain.” Id. Patent Owner
`
`explains that “these features of Hock [I]do not address any change in the
`
`radiant flux density of the reflected radiant energy,” as is required to
`
`demonstrate that the retroreflected radiant energy exhibits an optical gain.
`
`Prelim. Resp. 17. It is not self-evident, nor is it explained, how the
`
`disclosure cited in the claim chart meets the claim limitations. For at least
`
`this reason, Petitioner fails to demonstrate that Hock I discloses each and
`
`every element of independent claim 37 or its dependent claim 38. See
`
`Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
`
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`1987) (“A claim is anticipated only if each and every element as set forth in
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`the claim is found, either expressly or inherently described, in a single prior
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`art reference.”).
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`Therefore, we conclude that Petitioner fails to demonstrate a
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`reasonable likelihood of prevailing in showing that claims 37 and 38 of the
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`’927 patent are anticipated by Hock I, and we decline to institute trial as to
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`these claims based on this ground.
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`Further, Petitioner relies upon Hock I as disclosing each and every
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`element of claim 37 for its obviousness grounds regarding claims 37 and 39
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`over Hock I alone, or in combination with secondary references. Pet. 11-14
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`(Claim 37), 21 (Claim 39). Therefore, we also determine that Petitioner fails
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`to demonstrate a reasonable likelihood of prevailing in showing that claims
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`37 and 39 of the ’927 patent would have been obvious over Hock I alone, or
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`in combination with the cited secondary references, and we also decline to
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`institute trial as to these claims based on these grounds.
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` 2. Zoot
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`Petitioner contends that independent claim 37 is anticipated by Zoot.
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`Pet. 5. Petitioner also contends that dependent claim 38 is anticipated by
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`Zoot, or would have been obvious over Zoot alone, or in combination with
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`Electronics. Id. at 6. Additionally, Petitioner contends that dependent claim
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`39 would have been obvious over Zoot alone, or in combination with
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`Kingsbury or Thomas. Id.
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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 of Zoot depicts an embodiment of that apparatus, which includes
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`light source 10, e.g., a laser, whose radiation is directed to object 11. Ex.
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`1002, col. 3, ll. 45-57. Primary lens 12 and composite lens-reticle 13 are
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`disposed in the optical path between light source 10 and object 11. Id. at
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`
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`col. 3, ll. 58-60. “The composite lens-reticle structure 13, in turn, comprises
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`an annular transmitting objective lens 14, an annular transmitting reticle 15
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`and a receiving objective lens 16, which is located within the central region
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`of annular transmitting lens 14.” Id. at col. 3, ll. 61-65. The depicted
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`apparatus includes “reflecting members 18 and 19, a nutating plate 20, a
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`receiving reticle 21 and an optical filter 22.” Id. at col. 4, ll. 1-4. The
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`depicted apparatus also includes an “optical detector 17, which is capable of
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`generating an electrical output signal, the magnitude of which varies in
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`response to the intensity of the light 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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`Here again, Petitioner’s arguments are set forth in its claim charts.
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`Pet. 11-47. Petitioner asserts that Zoot discloses each and every element of
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`independent claim 37 and dependent claim 38. Pet. 14-16, 18-21. In
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`particular, regarding the claim limitation requiring that “said radiant energy
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`is retroreflected with an optical gain by said optical system,” Petitioner only
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`asserts the following for this element:
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`
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`whereby said radiant
`energy is retroreflected
`with an optical gain by
`said optical system and
`detected by said
`detecting means and the
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`Zoot discloses that retroreflected rays are detected
`by the detecting means. Specifically, Zoot
`discloses: “The reflected light from the
`illuminated point 41 is transmitted back through
`the receiving objective lens 16 … and reaches
`detector 17.” (Ex. 1002, Col, 5, ll. 23-32).
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`output thereof is
`coupled to said
`measuring means.
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`See also Figure 1.
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`
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`Pet. 13-14. Petitioner has not explained how the disclosures set forth in this
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`portion of the claim chart disclose that “radiant energy is retroreflected with
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`an optical gain.” Consequently, and for reasons similar to those set forth
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`above with respect to Hock I, we determine that Petitioner fails to
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`demonstrate that Zoot discloses “optical gain,” as recited by claims 37 and
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`38.
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`Therefore, we conclude that Petitioner fails to demonstrate a
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`reasonable likelihood of prevailing in showing that claims 37 and 38 of the
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`’927 patent are anticipated by Zoot, and we decline to institute trial as to
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`these claims based on this ground.
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`Further, Petitioner relies upon Zoot as disclosing each and every
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`element of claim 37 for its obviousness grounds regarding dependent claims
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`38 and 39 over Zoot alone, or in combination with secondary references.
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`Pet. 18-20 (Claim 38), 22-23 (Claim 39). Therefore, we also determine that
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`Petitioner fails to demonstrate a reasonable likelihood of prevailing in
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`showing that claims 38 and 39 of the ’927 patent would have been obvious
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`over Zoot in combination with the cited secondary references, and we also
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`decline to institute trial as to these claims based on these grounds.
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`B. Independent Claim 48 and Dependent Claims 49-53, 55-58, 60
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`Claims 48-53, 55-58, and 60 of the ’927 patent are directed to
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`methods of detecting characteristics or properties of an optical system based
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`on a retroreflected beam.
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`1. Hock I
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`Petitioner contends that independent claim 48 is anticipated by Hock I
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`or would have been obvious over Hock I alone, or in combination with Hock
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`II. Pet. 6. Petitioner also contends that dependent claims 49-53, 55, 58, and
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`60 are anticipated by Hock I. Id. Additionally, Petitioner contends that
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`dependent claims 56 and 57 would have been obvious over Hock I alone, or
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`in combination with (a) Kingsbury or Thomas, or (b) Zoot or Electronics,
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`respectively. Id.
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`Hock I’s optical measuring device is disclosed as a “device in which
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`an image of an oscillating luminous scanning mark is projected, via a beam
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`splitter and an objective lens, onto a reflecting surface.” Hock I, col. 1, ll.
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`17-20. As discussed previously, Figure 3a of Hock I depicts an embodiment
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`of its measuring device in the form of a telescopic magnifier that includes
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`optical system 40, i.e., a lens or focusing means, with reflector 41, i.e., a
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`surface exhibiting some degree of reflectivity, “being positioned in the focal
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`plane” of optical system 40. Id. at col. 3, ll. 61-65. Hock I discloses, in all
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`of its illustrated embodiments, light source 10, i.e., a radiant energy source,
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`that “illuminates a moving diaphragm 12 . . . which defines the scanning
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`mark,” and photoelectric transducer 19, which is “for detecting changes in
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`reflected light proportional to object displacement.” Id. col. 3, ll. 4-20, col.
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`6, ll. 25-28. Hock I teaches that the signal emitted by element 19 is
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`“evaluated by a well-known means either for control purposes or to indicate
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`the position of mark 21a [light absorbing graduation] on a well-known
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`indicting means,” i.e., determining at least one characteristic property of the
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`optical system. Id. at col. 3, ll. 57-60.
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`Petitioner identifies each of these Hock I disclosures in its claim chart.
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`See Pet. 24-26. On this record, we are persuaded that these disclosures
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`identify where in Hock I each and every element of independent claim 48 is
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`disclosed, and we determine that Petitioner demonstrates a reasonable
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`likelihood of prevailing in showing that Hock I anticipates independent
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`claim 48 of the ’927 patent. For this reason, we consider Petitioner’s
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`grounds that claim 48 would have been obvious over Hock I alone, or in
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`combination with Hock II, redundant, and we decline to institute trial as to
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`this claim based on these grounds.
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`We determine further that Petitioner demonstrates a reasonable
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`likelihood of prevailing on its assertion that dependent claims 49, 51-53, 55,
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`and 60 also are anticipated by Hock I, based upon the Hock I disclosures
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`identified by Petitioner regarding the limitations of independent claim 48,
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`and upon the additional Hock I disclosures identified in the Petition
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`regarding the additional limitations of these dependent claims. See Pet. 28-
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`37.
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`a. Claim 50
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`Claim 50 of the ’927 patent recites, “[t]he method of claim 48,
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`wherein the at least one characteristic or property is determined based on
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`spectral properties of the reflected radiant energy.” Petitioner asserts that
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`Hock I anticipates this claim limitation because Hock I discloses the
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`following:
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`It is advisable to provide means by which the amplitude and/or
`number of oscillations per time unit of the scanning mark may
`be varied. This means is shown schematically in FIG. 1. It is
`thus possible to control the amplitude and/or the number of
`oscillations per time unit or to control them as a function of a
`signal obtained from the photosensitive element 19.” (Ex. 1001,
`Col. 5:35-41).
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`Hock [I] also discloses: “Thus, there may be provided
`according to the invention a fast-acting, high-precision analyzer
`for spectrographic plate