Trials@uspto.gov
`571-272-7822
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` Paper No. 39
`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 ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA
`CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01644
`Patent 6,785,065 B1
`____________
`
`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. 39
`Entered: January 25, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., and
`LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA
`CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01644
`Patent 6,785,065 B1
`____________
`
`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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`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 1–9 of U.S. Patent No. 6,785,065 B1 (“the ’065 patent,” Ex. 1001).
`Paper 1 (“Pet.”). Patent Owner, Toshiba Samsung Storage Technology
`Korea Corporation (“Toshiba”), 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 1–9 of the ’065 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 38
`(“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
`1–9 of the ’065 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 ’065 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. 6,721,110 B2 (“the ’110 patent”), which is a parent of the ’065
`patent. Pet. 5. In that case, we instituted an inter partes review as to claims
`40–45, 47, and 48 of the ’110 patent. LG Elecs., Inc. v. Toshiba Samsung
`Storage Tech. Korea Corp., Case IPR2015-01642 (PTAB Jan. 29, 2016)
`(Paper 8).
`
`B. The ’065 Patent
`The ’065 patent, titled “Optical Pickup Actuator Driving Method and
`Apparatus Therefor,” issued August 31, 2004, from U.S. Patent Application
`No. 10/772,339, filed on February 6, 2004. Ex. 1001, at [54], [45], [21],
`[22]. The ’065 patent is a continuation of U.S. Patent Application No.
`10/173,958, filed on June 19, 2002—now the ’110 patent. Id. at [63]. The
`’065 patent also claims foreign priority to Korean Patent Application No.
`2001-34687, filed on June 19, 2001. Id. at [30].
`As the title suggests, the ’065 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, 1:16–21. These coils are provided at two sides of a
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`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 1:22–24. According to the ’065
`patent, a conventional optical pickup actuator is very small and uses all four
`side surfaces of the bobbin to install the focus, track, or tilt coils. Id. at
`2:57–59, Fig. 1. Consequently, it becomes very difficult to install the
`necessary wiring in such a small space. Id. at 2:60–63, 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 2:65–66, Fig. 1.
`The ’065 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, 3:10–18. Figure 3 of the ’065 patent, reproduced
`below, illustrates an optical pickup actuator according to one embodiment of
`the invention. Id. at 4:44–46, 5:9–10.
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`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
`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 Claim
`Of the challenged claims, claim 1 is the only independent claim at
`
`issue. Independent claim 1 is directed to an optical recording or reproducing
`apparatus for use with transferring information with respect to a recording
`medium. Claims 2–9 directly or indirectly depend from independent claim
`1. Independent claim 1 is illustrative of the challenged claims and is
`reproduced below:
`1.
`An optical recording and/or reproducing apparatus
`for use with transferring information with respect to a recording
`medium, comprising:
`a spindle motor rotating the recording medium;
`an optical pickup including an objective lens and an
`actuator which actuates the objective lens so as to transfer the
`information with respect to the recording medium; and
`a control unit driving the spindle motor and the optical
`pickup to transfer information with respect to the recording
`medium and controlling the actuator of the optical pickup in the
`radial, track, tilt and focusing directions;
`wherein the actuator comprises:
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`a bobbin movably arranged on a base of actuator;
`
`at least one focus and tilt coil which drives the
`
`bobbin in the focus and tilt directions and at least one
`track coil which drives the bobbin in the 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, 8:39–65.
`
`
`
`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
`
`5,428,481
`
`Exhibit No.
`1002
`
`1005
`
`1007
`
`
`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 7, 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. 27–28.
`References
`Basis
`Claims Challenged
`Akanuma and APA
`§ 103(a) 1, 2, and 5–9
`Akanuma, APA, and Ikegame
`§ 103(a) 1, 2, and 5–9
`Akanuma, APA, Wakabayashi § 103(a) 3 and 4
`Akanuma, APA, Ikegame, and
`§ 103(a) 3 and 4
`Wakabayashi
`
`
`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
`
`
`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 ’065 patent. For simplicity, we refer to APA and its disclosure
`generally in our analysis that follows.
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`claim construction standard to be applied in an inter partes review
`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. 16. To support its proposed construction, LG
`directed us to various disclosures in the specification and certain figures of
`the ’065 patent, as well as the supporting testimony of its expert witness,
`Masud Mansuripur, Ph.D. Id. (citing Ex. 1001, 1:59, 5:12–13, Figs. 1, 3, 4;
`Ex. 1011 ¶ 54). 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 ’065 patent.
`Dec. on Inst. 7 (citing Ex. 1001, 1:59, 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. “radial, track, tilt and focusing directions” (all challenged claims)
`In its Petition, LG did not propose an alternative construction for the
`claim phrase “radial, track, tilt and focusing directions,” even though LG
`asserted that it is unclear what is meant by this claim phrase. Pet. 28–29. In
`its Preliminary Response, Toshiba contended that the claim phrase “radial,
`track, tilt and focusing directions” should be construed as “radial track, tilt,
`and focusing directions.” Prelim. Resp. 7, 9. According to Toshiba, its
`proposed construction would fix a purported typographical error in
`independent claim 1 of the ’065 patent. Id. at 7 (citing Ex. 1001, 8:50–51).
`Toshiba further asserted that its proposed correction is consistent with the
`specification and claims of the ’065 patent, and the prosecution history did
`not suggest a different interpretation of the claims. Id. at 7–8 (citing
`Ex. 1001, Abstract, 1:26–31, 1:50–52, 3:9–17). For purposes of the
`Decision on Institution, we declined Toshiba’s invitation to fix a purported
`typographical error in the claim phrase “radial, track, tilt and focusing
`directions” because each occurrence of the claim term “radial” in the
`specification of the ’065 patent is not used to describe explicitly the “track
`direction.” Dec. on Inst. 8–9 (citing Ex. 1:26–31, 1:51–53).
`During the course of trial, neither Toshiba nor LG presented
`additional arguments or evidence as to the construction of the claim phrase
`“radial, track, tilt and focusing directions.” Consequently, we discern no
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`reason to further address this claim phrase for purposes of this Final Written
`Decision.
`3. “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
`’065 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 ’065 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 ’065 patent; (4) the use of the word
`“surfaces” in independent claim 1 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 ’065 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 1, 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 ’065 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 ’065
`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 ’065
`patent. See Translogic, 504 F.3d at 1257.
`Beginning with the intrinsic record, the parties direct us to Figures 3
`and 4 of the ’065 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 1, 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. 14–15, 19–20.
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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 ’065 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
`’065 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, 1:27–31 (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 1 recites, in relevant part, “a
`bobbin moveably arranged on a base of the actuator.” Ex. 1001, 8:53
`(emphasis added). In this independent claim, although the word “on” is used
`to describe the positional relationship between bobbin 15 and base 10, it is
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`undisputed that the bobbin does not contact the base directly. See Ex. 1012,
`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 it 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 ’065
`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 ’065 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, 2:57–3:7); Pet. Reply 6–7 (citing the same).
`Given that the primary objective of the ’065 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. 1012, 96:22–97:6 (In response to
`a question posed by LG’s counsel regarding the “important part” of the
`invention disclosed and claimed in the ’065 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)).
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`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 ’065
`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
`one that focuses on proximity and not contact; and (3) the primary objective
`of the ’065 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
`
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`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
`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. . . .
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`IPR2015-01644
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`
`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 ’065 patent, means “over
`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
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`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.
`4. “in order to drive the actuator in the focus and tilt directions, a first
`input signal is applied to a first set and a second input signal is
`applied to a second set” (claims 3 and 4)
`In its Patent Owner Response, Toshiba contends that the claim phrase
`“in order to drive the actuator in the focus and tilt directions, a first input
`signal is applied to a first set and a second input signal is applied to a second
`set” should be construed to require simultaneously controlling the driving of
`the actuator “in both the focus direction and the tilt direction when the
`recited first and second input signals are applied to the first and second coil
`sets, respectively.” PO Resp. 10–11. To support its proposed construction,
`Toshiba directs us to an embodiment disclosed in the specification of the
`’065 patent, as well as the supporting testimony from Dr. Bogy. Id. at 11
`(citing Ex. 1001, 7:21–35, Figs. 7C, 8C, Ex. 2003 ¶¶ 40–43).
`In its Reply, LG contends that Toshiba’s proposed construction for
`this claim phrase improperly imports a limitation into dependent claim 3 that
`is not found in the claim itself. Pet. Reply 10. According to LG, when
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`applying the broadest reasonable interpretation standard, this claim phrase
`does not require simultaneously controlling the driving of the actuator in
`both the focus and tilt directions. Id.
`We understand Toshiba to argue that the disputed claim phrase
`includes a specific temporal requirement—namely, simultaneously
`controlling the
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