Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 37
`Entered: January 25, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., and
`LG ELECTRONINCS U.S.A., INC.,
`Petitioner,
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA
`CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01642
`Patent 6,721,110 B2
`____________
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
` Paper No. 37
`Entered: January 25, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., and
`LG ELECTRONINCS U.S.A., INC.,
`Petitioner,
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA
`CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01642
`Patent 6,721,110 B2
`____________
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
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`IPR2015-01642
`Patent 6,721,110 B2
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`
`I. BACKGROUND
`Petitioner, LG Electronics, Inc. and LG Electronics U.S.A., Inc.
`(collectively, “LG”), filed a Petition requesting an inter partes review of
`claims 40–45, 47, and 48 of U.S. Patent No. 6,721,110 B2 (“the ’110
`patent,” Ex. 1001). Paper 1 (“Pet.”). Patent Owner, Toshiba Samsung
`Storage Technology Korea Corporation (“Toshiba”), timely filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking into account the
`arguments presented in Toshiba’s Preliminary Response, we determined that
`the information presented in the Petition established that there was a
`reasonable likelihood that LG would prevail in challenging claims 40–45,
`47, and 48 of the ’110 patent as unpatentable under 35 U.S.C. § 103(a).
`Pursuant to 35 U.S.C. § 314, we instituted this inter partes review on
`January 29, 2016, as to all the challenged claims. Paper 8 (“Dec. on Inst.”).
`During the course of trial, Toshiba filed a Patent Owner Response
`(Paper 21, “PO Resp.”) and LG filed a Reply to the Patent Owner Response
`(Paper 24, “Pet. Reply”). A consolidated oral hearing was held on October
`6, 2016, and a transcript of the hearing is included in the record. Paper 36
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims
`40–45, 47, and 48 of the ’110 patent. For the reasons discussed below, we
`hold that LG has demonstrated by a preponderance of the evidence that these
`claims are unpatentable under § 103(a).
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`A. Related Matters
`The ’110 patent is involved in the following district court cases: (1)
`
`LG Electronics, Inc. v. Toshiba Samsung Storage Technology Korea Corp.,
`No. 1:12-cv-01063 (LPS) (D. Del.); and (2) Toshiba Samsung Storage
`Technology Korea Corp. v. LG Electronics, Inc., No. 1:15-cv-0691 (LPS)
`(D. Del.). Pet. 4; Paper 6, 1. In addition to this Petition, LG filed another
`petition challenging the patentability of a certain subset of claims in U.S.
`Patent No. 6,785,065 B1 (“the ’065 patent”), which is a continuation of the
`’110 patent. Pet. 4. In that case, we instituted an inter partes review as to
`claims 1–9 of the ’065 patent. LG Elecs., Inc. v. Toshiba Samsung Storage
`Tech. Korea Corp., Case IPR2015-01644 (PTAB Jan. 29, 2016) (Paper 8).
`B. The ’110 Patent
`The ’110 patent, titled “Optical Pickup Actuator Driving Method and
`Apparatus Therefor,” issued April 13, 2004, from U.S. Patent Application
`No. 10/173,958, filed on June 19, 2002. Ex. 1001, at [54], [45], [21], [22].
`The ’110 patent claims foreign priority to Korean Patent Application No.
`2001-34687, filed on June 19, 2001. Id. at [30].
`As the title suggests, the ’110 patent generally relates to an apparatus
`and method of driving an optical pickup actuator in which focus, track, and
`tilt coils drive the optical pickup actuator in focus, track, and tilt directions,
`respectively. Ex. 1001, 1:15–20. These coils are provided at two sides of a
`bobbin to secure the remaining sides of the bobbin, and also to allow the
`focus coil to be used as the tilt coil. Id. at 1:21–23. According to the ’110
`patent, a conventional optical pickup actuator is very small and uses all four
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`side surfaces of the bobbin to install the focus, track, or tilt coils. Id. at
`2:56–58, Fig. 1. Consequently, it becomes very difficult to install the
`necessary wiring in such a small space. Id. at 2:59–62, Fig. 1. In addition,
`when these coils are arranged on all four side surfaces of the bobbin, the
`wiring of the coils becomes more complicated. Id. at 2:64–65, Fig. 1.
`The ’110 patent addresses these problems by arranging the focus,
`track, and tilt coils on just two side surfaces of the bobbin in a manner that
`secures a sufficient space provided at the other side surfaces of the bobbin,
`and also allows the focus and tilt direction to be controlled together by a
`single coil. Ex. 1001, 3:9–17. Figure 3 of the ’110 patent, reproduced
`below, illustrates an optical pickup actuator according to one embodiment of
`the invention. Id. at 4:44–46, 5:9–10.
`
`
`As shown in Figure 3, the optical pickup actuator includes base 10,
`holder 12 located on one side of the base, bobbin 15 suspended over the
`base, objective lens 14 mounted on the bobbin, and a magnetic driving
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`portion that drives the bobbin in focus, tilt, and track directions. Ex. 1001,
`5:10–15. The magnetic driving portion further includes at least one focus
`and tilt coil FC1–FC4 and at least one track coil TC1, TC2 at each of
`opposite side surfaces 15a of bobbin 15. Id. at 5:16–18. Magnets 22 are
`installed to face the at least one focus and tilt coil and at least one track coil
`provided on each of the opposite side surfaces. Id. at 5:18–21.
`C. Illustrative Claims
`Of the challenged claims, claims 40 and 48 are the only independent
`
`claims at issue. Independent claim 40 is directed to an optical pickup
`actuator, whereas independent claim 48 is directed to a method of driving an
`optical pickup actuator. Claims 41–45 and 47 directly depend from
`independent claim 40. Independent claims 40 and 48 are illustrative of the
`challenged claims and are reproduced below:
`40. An optical pickup actuator comprising:
`a bobbin movably arranged on a base of the optical pickup
`actuator;
`at least one focus and tilt coil which drives the bobbin in
`focus and tilt directions and at least one track coil which drives
`the bobbin in a track direction arranged on each of opposite side
`surfaces of the bobbin;
`support members which move the bobbin and are provided
`to the other side surfaces of the bobbin, wherein the focus and tilt
`coils and the track coils are not arranged on the other side
`surfaces of the bobbin; and
`magnets arranged to face corresponding sides of the
`opposite side surfaces of the bobbin.
`Ex. 1001, 11:10–22.
`48. A method of driving an optical pickup actuator
`comprising a support member, a bobbin having at least one focus
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`and tilt coil and at least one track coil on each of opposite side
`surfaces of the bobbin, wherein the focus and tilt coils and the
`track coils are not arranged on other sides of the bobbin, and
`magnets arranged to face corresponding sides of the opposite
`side surfaces of the bobbin, the method comprising:
`applying an input signal to the focus and tilt coils to drive
`the optical pickup actuator in focus and tilt direction, wherein the
`applying of the input signal comprise one of:
`
`inputting the input signal to each of sets, wherein
`the focus and tilt coils are divided into at least two sets of
`coils, and
`
`inputting the input signal independently to each
`focus and tilt coil.
`
`Id. at 11:49–65.
`
`
`
`
`
`
`5,428,481
`
`D. Prior Art Relied Upon
`LG relies upon the following prior art references:
`Inventor1
`U.S. Patent No. Relevant Dates
`Akanuma
`6,343,053 B1
`issued Jan. 29, 2002,
`
`filed Aug. 25, 1999
`Ikegame
`issued June 27, 1995,
`filed Nov. 1, 1990
`issued May 18, 1999,
`filed Jan. 14, 1998
`
`Wakabayashi
`
`5,905,255
`
`Exhibit No.
`1002
`
`1004
`
`1005
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
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`
`Admitted Prior Art (“APA”) 2
`“Description of the Related Art” section spanning
`column 1, line 25, through column 3, line 6, as well as
`Figures 1, 2A, 2B (each labeled Prior Art)
`
`Exhibit No.
`1001
`
`E. Instituted Grounds of Unpatentability
`We instituted a trial based on the asserted grounds of unpatentability
`(“grounds”) set forth in the table below. Dec. on Inst. 26.
`Reference(s)
`Basis
`Claim(s) Challenged
`Akanuma and APA
`§ 103(a) 40–45 and 47
`Akanuma and Ikegame
`§ 103(a) 40–45 and 47
`Akanuma
`§ 103(a) 48
`Akanuma and Wakabayashi
`§ 103(a) 48
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review proceeding, claim terms of an unexpired
`patent are given their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard as the
`claim construction standard to be applied in an inter partes review
`
`
`2 As we explained in the Decision on Institution (Dec. on Inst. 6 n.1), we
`consider APA as a relevant admission by Toshiba of the background
`knowledge of a person of ordinary skill in the art at the time of the invention
`of the ’110 patent. For simplicity, we refer to APA and its disclosure
`generally in our analysis that follows.
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`proceeding). Absent any special definitions, claim terms are generally 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).
`1. “bobbin” (all challenged claims)
`In its Petition, LG contended that the broadest reasonable
`interpretation of the claim term “bobbin” is “a structure where an objective
`lens is mounted.” Pet. 17. To support its proposed construction, LG
`directed us to various disclosures in the specification and certain figures of
`the ’110 patent, as well as the supporting testimony of its expert witness,
`Masud Mansuripur, Ph.D. Id. (citing Ex. 1001, 1:58, 5:12–13, Figs. 1, 3, 4;
`Ex. 1006 ¶ 53). In its Patent Owner Preliminary Response, Toshiba did not
`propose an alternative construction for this claim term. For purposes of the
`Decision on Institution, we agreed with LG’s construction of the claim term
`“bobbin” because it was consistent with the ordinary and customary
`meaning of this claim term, as would be understood by one with ordinary
`skill in the art, in light of the specification and figures of the ’110 patent.
`Dec. on Inst. 7 (citing Ex. 1001, 1:58, 5:12–13, Figs. 3, 4).
`
`In its Patent Owner Response, Toshiba does not address separately
`our initial construction of the claim term “bobbin” as “a structure where an
`objective lens is mounted.” In its Reply, LG did not present additional
`arguments or evidence as to the construction of this claim term.
`Consequently, we discern no reason to further address or alter our initial
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`construction of the claim term “bobbin” for purposes of this Final Written
`Decision.
`2. “on each of opposite side surfaces” (all challenged claims)
`In its Patent Owner Response, Toshiba contends that the broadest
`reasonable interpretation of the claim phrase “on each of opposite side
`surfaces” is “over and in contact with each of opposite side surfaces.” PO
`Resp. 3. Relying on the testimony of its expert witness, David B. Bogy,
`Ph.D., Toshiba presents the following arguments: (1) Figures 3 and 4 of the
`’110 patent illustrate that focus and tilt coils FC1–FC4 and track coils TC1,
`TC2 are arranged “over and in contact with” each of opposite side surfaces
`15a of bobbin 15; (2) the ’110 patent consistently uses the word “on” to
`describe relationships that indicate a position “over and in contact with,” and
`consistently avoids using this word to refer to non-contact positional
`relationships; (3) the patentees knew how to avoid indicating a contacting
`relationship, as evidenced by their use of a “non-contact” positional
`relationship in the specification of the ’110 patent; (4) the use of the word
`“surfaces” in each of independent claims 40 and 48 is significant because it
`further emphasizes the existence of actual contact with the surfaces, and any
`construction that does not take into account actual contact would render the
`claim term “surfaces” superfluous; and (5) at least one dictionary definition
`of the word “on” (Ex. 2001) supports a construction of “over and in contact
`with.” PO Resp. 3–10 (citing Ex. 2003 ¶¶ 25–39).
`In its Reply, LG contends that Toshiba’s proposed construction of the
`claim phrase “on each of opposite side surfaces” is overly narrow and does
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`not comply with the broadest reasonable interpretation standard. Pet.
`Reply 2. In particular, LG counters with the following arguments: (1) the
`specification of the ’110 patent does not disclose explicitly that focus and tilt
`coils FC1–FC4 and track coils TC1, TC2 must be “in contact with” each of
`opposite side surfaces 15a of bobbin 15; (2) Toshiba ignores that the use of
`the claim term “on” in independent claim 40, particularly with respect to the
`claimed “bobbin,” does not indicate actual contact; (3) the specification uses
`the words “on” and “at” interchangeably to describe proximity that could
`include, but does not require, actual contact with each of opposite side
`surfaces 15a of bobbin 15; (4) the problem addressed by the ’110 patent—
`namely, moving coils to two opposite side surfaces of a bobbin in order to
`free up space on the other opposite side surfaces of the bobbin—has nothing
`to do whatsoever with whether the coils are “over and in contact with” the
`two opposite side surfaces of the bobbin; and (5) Toshiba’s reliance on at
`least one hand-picked dictionary definition for the word “on” should be
`ignored because it does not comply with the broadest reasonable
`interpretation standard (i.e., this dictionary definition does not comport with
`how the claim term “on” should be understood by one of ordinary skill in the
`art in light of the specification and claims). Id. at 2–9.
`We note that the parties’ dispute regarding the claim phrase “on each
`of opposite side surfaces” centers on the scope and meaning of the word
`“on.” Based on the record developed during trial, we agree with LG that
`there are a number of reasons to adopt its proposed construction of the word
`“on” to mean proximity with respect to each of the opposite side surfaces of
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`the bobbin, and decline to adopt Toshiba’s proposed construction of this
`word as “over and in contact with” each of the opposite side surfaces of the
`bobbin.3
`As an initial matter, the parties agree that the specification of the ’110
`patent does not set forth an explicit definition of the word “on.” See, e.g.,
`Tr. 7:10 (counsel for LG states that “[there is] no specific definition” for the
`word “on”), 19:20–21 (counsel for Toshiba agrees that “[there is] no your
`own lexicographer issue here”). We, therefore, determine the ordinary and
`customary meaning of the word “on,” as would be understood by one of
`ordinary skill in the art, in the context of the entire disclosure of the ’110
`patent. See Translogic, 504 F.3d at 1257.
`Beginning with the intrinsic record, the parties direct us to Figures 3
`and 4 of the ’110 patent, along with the corresponding description of these
`figures in the specification. See PO Resp. 3–4; Pet. Reply 4–5. Figure 3,
`reproduced above (see supra Section I.B), illustrates an optical pickup
`actuator according to one embodiment of the invention. Ex. 1001, 4:44–46,
`5:9–10. Figure 4, reproduced below, further illustrates a plan view of the
`optical pickup actuator depicted in Figure 3. Id. at 4:47–48, 5:9–10.
`
`
`3 Adopting LG’s proposed construction of the word “on” to mean proximity
`with respect to each of opposite side surfaces of the bobbin also is consistent
`with independent claim 40, which does not require that the coils be arranged
`on the same surface level of the bobbin in a side-by-side configuration. See
`Dec. on Inst. 12, 17.
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`Figure 4 shown above is similar to Figure 3 because it illustrates that the
`optical pickup actuator includes base 10, holder 12 provided at one side of
`the base, bobbin 15 on which objective lens 14 is mounted, and a magnetic
`driving portion that drives the bobbin in focus, tilt, and track directions. Id.
`at 5:10–15. The ’110 patent further describes Figures 3 and 4 as follows:
`The magnetic driving portion includes at least one focus
`and tilt coil and at least one track coil provided at each of
`opposite side surfaces 15a of the bobbin 15, and a magnet 22
`installed to face each combination of the focus and tilt coil and
`the track coil provided on each of the opposite side surfaces. For
`example, the focus and tilt coils may include first, second, third,
`and fourth focus and tilt coils FC1, FC2, FC3, and FC4 and the
`track coils may include first and second track coils TC1 and TC2
`each of which is provided at the corresponding opposite side
`surfaces of the bobbin 15, as shown in FIG. 4. Here, the first
`through fourth focus and tilt coils FC1, FC2, FC3, and FC4 and
`the first and second track coils TC1 and TC2 are all arranged at
`the opposite side surfaces 15a of the bobbin 15. A support
`member 30 is arranged at each of the other opposite side surfaces
`15b of the bobbin (where the focus and tilt coils FC1-FC4 and
`the tracks coils TC1-TC2 are not arranged).
`Id. at 5:16–32 (bolding omitted; emphases added).
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`Given this description of Figures 3 and 4 in the specification,
`Toshiba’s reliance on these figures to support its assertion that focus and tilt
`coils FC1–FC4 and track coils TC1 and TC2 are arranged “over and in
`contact with” each of opposite side surfaces 15a of bobbin 15 is
`inconclusive, at best. See PO Resp. 3–4. In other words, Toshiba’s
`reasoning solely based on the positional relationship of the coils and bobbin
`as illustrated in Figures 3 and 4 is problematic, especially considering there
`is nothing in the specification that assigns significance to the positional
`relationship of these components. See Advanced Cardiovascular Sys., Inc. v.
`Scimed Life Sys., Inc., 261 F.3d 1329, 1339 (Fed. Cir. 2001) (“[Because]
`nothing in the specification assigns significance to the fact that the drawings
`align [certain elements in the claims], we will not allow this aspect of the
`drawings to be imported into the claims as a limitation.”); see also TI Grp.
`Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C., 375 F.3d 1126, 1136 (Fed.
`Cir. 2004) (“The drawings, without more, are insufficient to cabin the scope
`of the ordinary and customary meaning of [a claim term].”).
`Notably absent from the description of Figures 3 and 4 in the
`specification is a disclosure that focus and tilt coils FC1–FC4 and track coils
`TC1, TC2 are arranged “over and in contact with” each of opposite side
`surfaces 15a of bobbin 15. Instead, the corresponding description of Figures
`3 and 4 uses the words “on” and “at” interchangeably (i.e., the specification
`explicitly discloses that focus and tilt coils FC1–FC4 and track coils TC1,
`TC2 are “provided at,” “provided on,” or “arranged at” each of opposite side
`surfaces 15a of bobbin 15). Ex. 1001, 5:16–32. Given the specification’s
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`silence as to how the coils are configured in relation to each of opposite side
`surfaces 15a of bobbin 15, we decline to limit the positional relationship
`between these components to direct, physical contact.
`We do not agree with Toshiba’s argument that the specification of the
`’110 patent consistently uses the word “on” to describe relationships that
`indicate a position “over and in contact with,” and consistently avoids using
`this word to refer to non-contact positional relationships. See PO Resp. 5;
`see also id. at 6 (arguing the patentees knew how to avoid indicating a
`contacting relationship, as evidenced by their use of a “non-contact”
`positional relationship in the specification). The word “contact” appears just
`once in the specification. The relevant portion of the specification states that
`“[a]n optical pickup performs recording and/or reproduction of information
`with respect to a recording medium, such as an optical disk, placed on a
`turntable in a non-contact manner while moving in a radial direction of the
`optical disk.” Ex. 1001, 1:26–30 (emphases added). Contrary to Toshiba’s
`assertions, this cited disclosure in the specification uses the word “on” to
`reference a “non-contact” positional relationship. Toshiba, therefore, is
`incorrect when it asserts that the specification consistently avoids using the
`word “on” to refer to non-contact positional relationships.
`Toshiba also ignores the use of the word “on” in the context of the
`claims. See Pet. Reply 3–4. Independent claim 40 recites, in relevant part,
`“a bobbin moveably arranged on a base of the optical pickup actuator.”
`Ex. 1001, 11:11–12 (emphasis added). Independent claims 1 and 24, which
`are not challenged in this proceeding, each recite a similar limitation. Id. at
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`8:41–42 (“arranging the bobbin on a base of the optical pickup actuator”),
`10:1–2 (reciting the same). In these independent claims, although the word
`“on” is used to describe the positional relationship between bobbin 15 and
`base 10, it is undisputed that the bobbin does not contact the base directly.
`See Ex. 1007, 109:18–110:22 (In response to a question posed by LG’s
`counsel during cross-examination as to whether bobbin 15 is on the surface
`of base 10, Toshiba’s expert witness Dr. Bogy, confirmed that “[y]ou
`couldn’t focus it up--you couldn’t move [the bobbin] up and down relative
`to the base if it were already on the base . . . . It has to have some space
`between the bobbin and the base [] in order for it to be able to move in the
`focus direction both ways.”).
`We also note that the objective of the invention disclosed in the ’110
`patent supports adopting LG’s proposed construction of the word “on” as a
`broad, but reasonable interpretation. See Pet. Reply. 6–7. As LG explains,
`the ’110 patent addresses the problem associated with conventional optical
`pickup actuators that include focus, track, and tilt coils on all four sides of a
`bobbin by arranging these coils on just two side surfaces of the bobbin in
`order to free up space at the other two side surfaces of the bobbin. See
`Pet. 8–10 (citing Ex. 1001, 2:56–3:17); Pet. Reply 6–7 (citing the same).
`Given that the primary objective of the ’110 patent is the location of coils on
`only two of the four side surfaces of a bobbin, LG asserts—and we agree—
`that there is no explanation in the specification as to the importance of the
`coils being arranged “over and in contact” with each opposite side surface of
`the bobbin. See Pet. Reply 6; see also Ex. 1007, 96:22–97:6 (In response to
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`a question posed by LG’s counsel regarding the “important part” of the
`invention disclosed and claimed in the ’110 patent, Dr. Bogy stated that “I
`think the inventors thought it was important that [the coils] be in contact for
`some reason which is not revealed here.” (emphasis added)).
`Lastly, we do not agree with Toshiba’s argument that any construction
`that does not take into account actual contact would render the claim term
`“surfaces” superfluous. See PO Resp. 9. As we have explained above,
`based on the use of the word “on” in the specification and claims of the ’110
`patent, one of ordinary skill in the art would have understood that this word
`is used interchangeably with the word “at,” and that both of these words
`focus on proximity and not contact. Consequently, the claim phrase “on
`each of opposite side surfaces” does not require necessarily that the coils
`make direct, physical contact with each of the opposite side surfaces of the
`bobbin, but instead merely requires that the coils are located proximate to
`each of opposite side surfaces of the bobbin.
`In summary, upon consulting the intrinsic evidence in its entirety, we
`reach the following conclusions: (1) the description of Figures 3 and 4 in
`the specification does not state explicitly that focus and tilt coils FC1–FC4
`and track coils TC1, TC2 are arranged “over and in contact with” each of
`opposite side surfaces 15a of bobbin 15, but rather this corresponding
`description uses the words “on” and “at” interchangeably to indicate
`proximity and not contact; (2) contrary to Toshiba’s assertions, the
`specification and claims do not use the word “on” to delineate clearly
`between a positional relationship that is “over and in contact with” versus
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`one that focuses on proximity and not contact; and (3) the primary objective
`of the ’110 patent is the location of coils on only two of the four side
`surfaces of a bobbin—not whether the coils must be arranged “over and in
`contact” with each of the opposite side surfaces of the bobbin. For all these
`reasons, we agree with LG that the intrinsic evidence supports adopting its
`proposed construction of the word “on” to mean proximity with respect to
`each of the opposite side surfaces of the bobbin. See Pet. Reply 2–8.
`Turning now to the extrinsic evidence, although the U.S. Court of
`Appeals for the Federal Circuit has instructed that this type of evidence may
`be useful in determining the meaning of a claim term to one of ordinary skill
`in the art, it is “less significant than the intrinsic [evidence] in determining
`the ‘legally operative meaning of disputed claim language.’” C.R. Bard, Inc.
`v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quoting
`Vanderlande Indus. Nederland BV v. Int’l Trade Comm’n, 366 F.3d 1311,
`1318 (Fed. Cir. 2004)). Toshiba directs us to at least one dictionary
`definition of the word “on” to support its assertion that focus and tilt coils
`FC1–FC4 and track coils TC1, TC2 are arranged “over and in contact with”
`each of opposite side surfaces 15a of bobbin 15. PO Resp. 10. Toshiba
`asserts that WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (2002)
`defines “on” as “used as a function word to indicate position over and in
`contact with that which supports from beneath.” Id. (emphasis omitted)
`(quoting Ex. 2001, 1574).
`Although Toshiba asserts that this particular definition “appears first”
`in the dictionary it introduced as extrinsic evidence (PO Resp. 10), the scope
`
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`
`of the word “on” must encompass “all consistent meanings.” TI Grp. Auto.
`Sys. (N. Am.), Inc., 375 F.3d at 1136. This same dictionary provides the
`following additional definitions of the word “on”: (1) “used as a function
`word to indicate position with regard to place, direction, or time; esp. . . .
`position near a specified part of something”; and (2) “in or into the position
`of being in contact with the upper surface of something or of being
`supported from beneath by the upper surface <the plates are ~>.”
`Ex. 2001, 1574–75 (emphases added). Arguably, these particular definitions
`of the word “on” could be used to support LG’s assertion that this word
`means proximity with respect to each of the opposite side surfaces of the
`bobbin. For instance, using the “plates” example associated with the latter
`definition of the word “on,” a plate would be on the surface of a table even if
`the plate only made contact with a table cloth situated between the table
`surface and the plate because the plate is “supported from beneath by the
`upper surface.” Id. at 1575. Consequently, because the dictionary
`introduced as extrinsic evidence by Toshiba includes multiple definitions for
`the word “on” that reasonably could be read to support both parties’ claim
`construction positions, we do not view the particular dictionary definition
`relied upon by Toshiba as dispositive in ascertaining the scope and meaning
`of this word.
`Lastly, we note that Toshiba directs to us to the decision by the
`Federal Circuit in Senmed, Inc. v. Richard-Allan Medical Industries, Inc.,
`888 F.2d 815 (Fed. Cir. 1989) as support for its assertion that the word “on,”
`in the context of the specification and claims of the ’110 patent, means “over
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`IPR2015-01642
`Patent 6,721,110 B2
`
`and in contact with.” See PO Resp. 6. The Senmed case, however, is
`distinguishable from the circumstances presented here because it is based on
`a different record that involves different claim language, a different
`specification, and a unique prosecution history that allowed for a different
`construction of the word “on.” See id. at 819–20.
`Accordingly, upon weighing all the evidence bearing on the
`construction of the word “on,” the extrinsic evidence is inconclusive and
`does not overcome the intrinsic evidence. Applying the broadest reasonable
`interpretation, we adopt LG’s proposed construction of the word “on” and,
`as a result, we construe the claim phrase “on each of opposite side surfaces”
`to mean proximity with respect to each of the opposite side surfaces of the
`bobbin.
`
`3. “focus and tilt coils” and “optical pickup actuator”
`(preamble of independent claim 48)
`In its Petition, LG contends that the preamble of independent claim 48
`includes certain statements relating to the structural elements of the optical
`pickup actuator for performing the method steps recited in the body of this
`claim that should not be treated as limiting. Pet. 50. Alternatively, LG
`contends that, even if these statements in the preamble were treated as
`limiting, Akanuma discloses all the structure elements of the optical pickup
`actuator recited in the preamble of independent claim 48. Id. at 51 (citing
`Ex. 1006 ¶ 130). In its Patent Owner Response, Toshiba contends that the
`“focus and tilt coils” and “optical pickup actuator” language recited in the
`preamble of independent claim 48 should be treated as limiting because the
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`IPR2015-01642
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`method steps recited in the body of this claim require the operation or
`manipulation of these particular structural elements. PO Resp. 22–23.
`In considering whether a preamble is limiting, we analyze the
`preamble to ascertain whether it states a necessary and defining aspect of the
`invention, or whether it is simply an introduction to the general field of the
`claim. On Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331,
`1343 (Fed. Cir. 2006); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945,
`950 (Fed. Cir. 2006) (whether a preamble limits a claim is determined on a
`claim-by-claim basis). We construe a preamble as limiting “if it recites
`essential structure or steps, or if it is ‘necessary to give life, meaning, and
`vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-
`Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however,
`is not limiting “‘where a patentee defines a structurally complete invention
`in the claim body and uses the preamble only to state a purpose or intended
`use for the invention.”’ Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed.
`Cir. 1997).
`We agree with Toshiba that certain language recited in the preamble
`of independent claim 48 is limiting because it states necessary and defining
`aspects of the invention embodied in this challenged claim. Indeed, “[w]hen
`[the] limitations in the body of the claim rely upon and derive antecedent
`basis from the preamble, then the preamble may act as a necessary
`component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332, 1339 (Fed. Cir. 2003). Here, the “focus and tilt coils”
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`language recited in the preamble of independent claim 48 provides
`antecedent basis for the same claim phrase recited in the body of this claim.
`We also view the “optical pickup actuator” language re
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