Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 8
`
`Entered: January 29, 2016
`
`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 IPR2015-01644
`Patent 6,785,065 B1
`____________
`
`
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
` Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
` Paper No. 8
`
`Entered: January 29, 2016
`
`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 IPR2015-01644
`Patent 6,785,065 B1
`____________
`
`
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
` Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`IPR2015-01644
`Patent 6,785,065 B1
`
`
`I. INTRODUCTION
`Petitioner, LG Electronics, Incorporated and LG Electronics U.S.A.,
`Incorporated (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”), timely filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Taking into account the arguments presented in Toshiba’s Preliminary
`Response, we conclude that the information presented in the Petition
`establishes that there is a reasonable likelihood that LG will prevail in
`challenging claims 1–9 of the ’065 patent as unpatentable under 35 U.S.C.
`§ 103(a). Pursuant to § 314, we hereby authorize an inter partes review to
`be instituted as to these claims of the ’065 patent.
`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.); (2) Toshiba Samsung Storage
`Technology Korea Corp. v. LG Electronics Inc., Case 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”) (Case IPR2015-01642). Pet. 5.
`
`2
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`IPR2015-01644
`Patent 6,785,065 B1
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`
`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 12, 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 a focus coil, a
`track coil, and a tilt coil drive the optical pickup actuator in a focus
`direction, a track direction, and tilt direction, respectively. Ex. 1001,
`1:16–21. These coils are provided at two sides of a bobbin to secure the
`remaining sides of the bobbin, and also 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 coils, the track coils, or the 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. 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 purportedly addresses these problems by arranging
`the focus coils, the track coil, and the 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 allows the focus and tilt direction to be
`controlled together by a single coil. Ex. 1001, 3:10–18. Figure 3 of the ’065
`
`3
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`Patent 6,785,065 B1
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`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 base 10, bobbin 15, objective lens 14
`mounted on bobbin 15, and a magnetic driving portion that drives bobbin 15
`in a focus direction, a tilt direction, and a track direction. 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 or 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 independent. 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
`
`4
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`directly or indirectly depend from independent claim 1. Independent claim 1
`is illustrative of the challenged claims and is reproduced below:
`1.
`An optical pickup 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:
`
`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:
`
`Ikegame
`US 5,428,481
`June 27, 1995
`
`Wakabayashi US 5,905,255
`May 18, 1999
`
`Kim
`
`US 6,034,935
`Mar. 7, 2000
`
`Mohri
`
`US 6,134,058
`Oct. 17, 2000
`
`Akanuma
`US 6,343,053 B1 Jan. 29, 2002
`
`
`
`
`
`
`(filed Aug. 25, 1999)
`
`Ex. 1005
`Ex. 1007
`Ex. 1004
`Ex. 1006
`Ex. 1002
`
`5
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`
`D. Prior Art Relied Upon (cont.)
` Admitted Prior Art (“APA”)—Ex. 1001, 1:26–3:7 (Background of the
`Invention), Figs. 1, 2A, 2B (Prior Art).1
`
`
`E. Asserted Grounds of Unpatentability
`LG challenges claims 1–9 of the ’065 patent based on the asserted
`
`grounds of unpatentability (“grounds”) set forth in the table below. Pet. 7,
`16–59.
`Reference(s)
`Akanuma, either alone or in combination
`with one or more of: APA, Kim,
`Ikegame, and Mohri
`Akanuma, either alone or in combination
`with one or more of: APA, Kim,
`Ikegame, Mohri, and Wakabayashi
`
`Basis Challenged Claims
`§ 103(a) 1, 2, and 5–9
`
`§ 103(a) 3 and 4
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, we construe claims by applying the broadest
`
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms or phrases are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`
`
`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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`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 contends that the broadest reasonable interpretation
`
`of the claim term “bobbin” is “a structure where an objective lens is
`mounted.” Pet. 16. To support its construction, LG directs us to the 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
`response, Toshiba does not offer an alternative construction for this claim
`term, but indicates that it reserves the right to address LG’s proposed
`construction in more detail at a later point in this proceeding, if necessary.
`Prelim. Resp. 6.
`
`Upon reviewing the specification of the ’065 patent, we do not find an
`explicit definition for the claim term “bobbin.” We, therefore, refer to its
`ordinary and customary meaning, 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. In our view, LG’s proposed construction is
`consistent with the ordinary and customary meaning of “bobbin” as would
`be understood by one with ordinary skill in the art in light of the
`specification and figures of the ’065 patent. See, e.g., Ex. 1001, 1:59
`(disclosing “bobbin 107 where . . . objective lens 105 is mounted”), 5:12–13
`(disclosing “bobbin 15 on which . . . objective lens 14 is mounted”), Figs. 3
`and 4 (illustrating objective lens 14 mounted on bobbin 15). Consequently,
`for purposes of this decision, we adopt LG’s construction of the claim term
`“bobbin” as “a structure where an objective lens is mounted.”
`
`7
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`
`2. “radial, track, tilt and focusing directions” (all challenged claims)
`In its Preliminary Response, Toshiba contends 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. (citing Ex. 1001, 8:50–51).
`Toshiba asserts that this proposed correction is not subject to reasonable
`debate based on consideration of the claim language and the specification,
`and the prosecution history does 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).
`Although LG contends that it is unclear what is meant by the claim phrase
`“radial, track, tilt and focusing directions,” it does not offer an alternative
`construction for this claim phrase. Pet. 28–29.
`
`We do not share Toshiba’s view that its proposed construction is not
`subject to reasonable debate based on consideration of the specification of
`the ’065 patent. The claim term “radial” appears in the specification on just
`two occasions. First, the specification discloses that an optical pickup
`actuator records or reproduces information on an optical disk that is “placed
`on a turntable in a non-contact manner while moving in a radial direction of
`the optical disk.” Ex. 1001, 1:26–31 (emphasis added). According to
`Toshiba, the “radial direction” in this cited disclosure is synonymous with
`“track direction.” Prelim. Resp. 8. We, however, disagree because there is
`no explicit indication in this cited disclosure that “radial direction” is
`referring to the track direction. It seems just as likely that “radial direction”
`in this context may be referring to the tilt direction.
`
`8
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`Second, the specification discloses a four axis driving actuator that is
`
`capable of driving an optical pickup “in the focus direction, the track
`direction, a tilt radial direction, and a tilt tangential direction.” Ex. 1001,
`1:51–53 (emphasis added). According to Toshiba, this cited disclosure
`indicates that two tilt directions are possible: (1) the tilt radial direction; and
`(2) the tilt tangential direction. Prelim. Resp. 8. Toshiba, nonetheless,
`asserts that “radial” in this context is describing the track direction. Id. We,
`however, disagree because it is clear from this cited disclosure that “radial”
`is describing the tilt direction—not the track direction.
`
`In summary, because each occurrence of the claim term “radial” in the
`specification of the ’065 patent is not used to describe explicitly the “track
`direction,” we decline Toshiba’s invitation to fix a purported typographical
`error in the claim phrase “radial, track, tilt and focusing directions.”
`B. Obviousness Over Akanuma and APA
`LG contends that claims 1, 2, and 5–9 of the ’065 patent are
`
`unpatentable under § 103(a) over the combination of Akanuma and APA.
`Pet. 24–52. LG explains how this proffered combination teaches the subject
`matter of each challenged claim (id.), and relies upon the Declaration of
`Professor Mansuripur (Ex. 1011) to support its positions. At this stage of
`the proceeding, we are persuaded by LG’s explanations and supporting
`evidence.
`
`We begin our analysis with brief overviews of Akanuma and APA,
`and then we address the parties’ contentions regarding the challenged
`claims.
`
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`
`1. Akanuma Overview
`Akanuma generally relates to an objective lens driving apparatus of an
`
`optical disk drive and, in particular, to an objective lens driving apparatus
`that includes an actuator for moving an objective lens in both focus and
`tracking directions. Ex. 1002, 1:7–11. According to Akanuma, one
`objective of the disclosed invention is to arrange a focus coil and a track coil
`in a parallel relationship with a thin, flat shape so that both coils may be
`moved by a single, flat magnet. Id. at 2:35–40.
`
`Figure 5A of Akanuma, reproduced below, illustrates an objective
`lens driving apparatus according to one embodiment. Ex. 1002, 5:26–29,
`6:41–43.
`
`
`As shown in Figure 5A, objective lens 13 is supported by objective
`
`lens supporting member 14, which, in turn, is supported elastically by four
`wire springs 16 extending from stem 15. Ex. 1002, 6:51–55. Objective lens
`supporting member 14 includes side walls 20 on opposite sides in an
`extending direction of wire springs 16. Id. at 6:61–63. Each of side walls
`
`10
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`Patent 6,785,065 B1
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`20 serves as a base board for mounting drive coil assembly 21. Id. at
`6:63–64. Yoke 25 and drive magnet 26 are provided on each side of side
`walls 20 such that the drive magnet faces drive coil assembly 21 with a
`small air gap there between. Id. at 7:13–16.
`
`Figure 6 of Akanuma, reproduced below, illustrates the relationship
`between drive magnet 26, a focusing coil, and a tracking coil. Ex. 1002,
`5:30–33, 6:41–43.
`
`
`As shown in Figure 6, drive coil assembly 21 (not illustrated) includes
`
`two focusing coils 27 and two tracking coils 28. Ex. 1002, 7:25–27.
`Focusing coils 27, tracking coils 28, and drive magnet 26 collectively form
`drive motor or actuator 29. Id. at 7:37–39.
`2. APA Overview
`Figure 1 of APA, reproduced below, illustrates a conventional optical
`
`pickup actuator. Ex. 1001, 1:57, 4:39–40.
`
`11
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`
`
`As shown in Figure 1, the conventional optical pickup actuator
`
`includes, among other things, base 100, holder 103 fixed to the base, and
`bobbin 107 with objective lens 105 mounted thereon. Ex. 1001, 1:58–60.
`APA further discloses a spindle motor (not illustrated) that rotates a disc. Id.
`at 3:3–7.
`
`3. Claim 1
`In its Petition, LG contends that Akanuma’s objective lens driving
`
`apparatus teaches all the limitations recited in independent claim 1, except
`“a spindle motor for rotating a recording medium,” and “a base.” Pet.
`24–40. LG then turns to APA’s disclosure of a spindle motor that rotates a
`disc to teach the claimed “spindle motor.” Id. at 26 (citing Ex. 1001, 2:7–12,
`3:3–7, Figs. 1, 2). LG also turns to APA’s disclosure of a conventional
`optical pickup actuator, which includes bobbin 107 with objective lens 105
`mounted thereon that is arranged moveably on base 100, to teach the
`claimed “base.” Id. at 34 (citing Ex. 1001, 1:57–63, Fig. 1).
`
`12
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`LG further argues that inserting APA’s spindle motor into the disk
`
`drive of Akanuma’s objective lens driving apparatus would have been well
`within the skill level of an ordinary skilled artisan, and would have yielded
`the predictable result of rotating Akanuma’s optical recording medium 30.
`Id. at 26 (citing Ex. 1011 ¶ 81). In addition, LG further argues that it would
`have been obvious to one of ordinary at the time of the invention to include
`APA’s base 100 in Akanuma’s objective lens driving apparatus so that its
`objective lens supporting member 14 may be arranged moveably. Id. at 35
`(citing Ex. 1011 ¶ 107). LG asserts that one of ordinary skill in the art
`would have had a sufficient reason to include such a base in Akanuma’s
`objective lens driving apparatus to provide support for at least yokes 25, and
`one of ordinary skill in the art would have had a reasonable expectation that
`including this base in Akanuma’s objective lens driving apparatus would
`successfully support yokes 25. Id. at 36 (citing Ex. 1011 ¶ 108). LG also
`asserts that one of ordinary skill in the art would have recognized that
`applying APA’s base 100 to support Akanuma’s yokes 25 would have
`yielded the predictable result of supporting these yokes. Id.
`
`Independent claim 1 recites, in relevant part, “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.” Ex. 1001, 8:54–58. Toshiba
`contends that Akanuma does not teach this spatial relationship between the
`bobbin, the focus and tilt coil, and the track coil. Prelim. Resp. 10. In
`particular, Toshiba argues that the embodiments of Akanuma relied upon by
`LG to account for this spatial relationship—specifically, Figures 6 and 8 of
`Akanuma—do not illustrate that both focusing coils 27 and tracking coils 28
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`13
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`may be arranged on each of opposite side surface 20 of objective lens
`supporting member 14 simultaneously. Id. at 12. In other words, Toshiba
`argues that Figures 6 and 8 of Akanuma both illustrate that focusing coils 27
`are always over tracking coils 28 in what Toshiba terms “a layered
`structure,” but does not illustrate that these coils are arranged on the same
`surface level of the bobbin in a side-by-side configuration. Id.
`Consequently, Toshiba asserts that LG’s mere correspondence of elements
`in Akanuma does not render obvious the spatial relationship between the
`bobbin, the focus and tilt coil, and the track coil, as required by independent
`claim 1. Id. at 13–14.
`
`On the current record, we are not persuaded by Toshiba’s argument
`that Akanuma does not teach the spatial relationship between the bobbin, the
`focus and tilt coil, and the track coil, as required by independent claim 1.
`Toshiba’s argument is predicated on the notion that independent claim 1
`requires that both the focus and tilt coil and the track coil are arranged on
`opposite side surfaces of the bobbin, albeit in a particular configuration—
`namely, on the same surface level as the bobbin in a side-by-side
`configuration and not in “a layered structure.” Toshiba’s argument,
`however, is not commensurate in scope with the spatial relationship required
`by this claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that
`limitations not appearing in the claims cannot be relied upon for
`patentability). Independent claim 1 only requires that the focus and tilt coil
`and the track coil are arranged on opposite side surfaces of the bobbin, but
`does not state explicitly how these coils should be configured on each
`opposite side surface of the bobbin. Absent an explicit recitation in
`independent claim 1 that requires a particular configuration, we decline
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`Toshiba’s invitation to read this claim as requiring that the focus and tilt coil
`and the track coil to be arranged on the same surface level of the bobbin in a
`side-by-side configuration.
`
`In its Petition, LG relies upon Akanuma’s disclosure of drive coil
`assembly 21, which includes focusing coils 27 and tracking coil 28 arranged
`on each of side walls 20 of objective lens supporting member 14, to account
`for the spatial relationship between the bobbin, the focus and tilt coil, and
`the track coil, as required by independent claim 1. Pet. 37 (citing Ex. 1002,
`6:63–65, 7:24–27, Figs. 5A, 5B; Ex. 1011 ¶¶ 112, 113). In light of our
`analysis above, we are persuaded that LG has presented sufficient evidence
`that would support a finding that Akanuma teaches this spatial relationship
`required by independent claim 1.
`
`Next, Toshiba argues that Akanuma’s disclosures of drive coil
`assembly 21 and the magnetic polarizations both teach away from the
`invention embodied in independent claim 1. Prelim. Resp. 14. Toshiba’s
`teaching away argument is divided into three parts. We note, however, that
`each part of Toshiba’s teaching away argument is predicated on our reading
`independent claim 1 as requiring that the focus and tilt coil and the track coil
`to be arranged on the same surface level of the bobbin in a side-by-side
`configuration. See, e.g., id. at 15–16 (arguing that it would not have been
`obvious to one ordinary skill in the art to separate Akanuma’s drive coil
`assembly 21 into several pieces and spread those pieces across the surface of
`a bobbin), id. at 16 (arguing that other embodiments disclosed in Akanuma
`that use magnets teach away from placing tracking coils and focusing coils
`directly on the surface of the bobbin in a side-by-side configuration), id. at
`17 (arguing that Akanuma’s disclosure of a single, flat magnet having four
`
`15
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`magnetization areas teaches away from arranging both focusing foils and
`tracking coils on the same surface level of the bobbin).
`
`As we explained previously, we decline to read the spatial relationship
`recited in independent claim 1 as requiring that the focus and tilt coil and the
`track coil to be arranged on the same surface level of the bobbin in a
`side-by-side configuration. Given that each part of Toshiba’s teaching away
`argument is based on an overly narrow claim construction, Toshiba in
`essence has read into Akanuma a teaching away where no such language
`exists. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
`Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (stating that we should
`not “read into a reference a teaching away from a process where no such
`language exists”).
`
`Lastly, we recognize that Toshiba argues that Akanuma does not
`disclose, either explicitly or inherently, “a base,” as required by independent
`claim 1, and LG does not present a sufficient rationale to combine the
`teachings of Akanuma and Ikegame. Prelim. Resp. 18–22. As we explained
`previously, LG relies upon APA’s base 100 to teach the claimed “base.” In
`addition, LG presents more than one articulated reason with a rationale
`underpinning to combine the teachings of Akanuma and APA that would
`support a conclusion of obviousness. At this juncture of the proceeding,
`Toshiba does not address separately LG’s explanations and supporting
`evidence regarding the aforementioned finding and conclusions.
`
`Based on the record before us, LG has demonstrated a reasonable
`likelihood that it will prevail on its assertion that independent claim 1 would
`have been obvious over the combination of Akanuma and APA.
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`
`4. Claims 2 and 5–9
`At this juncture in the proceeding, Toshiba does not address
`
`separately LG’s explanations and supporting evidence regarding challenged
`claims 2 and 5–9. See generally Prelim. Resp. 10–22. Based on the record
`before us, LG has demonstrated a reasonable likelihood that it will prevail
`on its assertion that these claims would have been obvious over the
`combination of Akanuma and APA.
`C. Obviousness Over Akanuma, APA, and Ikegame
`LG contends that claims 1, 2, and 5–9 of the ’065 patent are
`
`unpatentable under § 103(a) over the combination of Akanuma, APA, and
`Ikegame. Pet. 24–52. LG explains how this proffered combination teaches
`the subject matter of each challenged claim (id.), and relies upon the
`Declaration of Professor Mansuripur (Ex. 1011) to support its positions. At
`this stage of the proceeding, we are persuaded by LG’s explanations and
`supporting evidence.
`
`We begin our analysis with a brief overview of Ikegame, and then we
`address the parties’ contentions regarding the challenged claims.
`1. Ikegame Overview
`Ikegame generally relates to an optical system supporting device for
`
`use in an optical information recording apparatus. Ex. 1005, 1:6–11. Figure
`3 of Ikegame, reproduced below, illustrates an optical system supporting
`device according to one embodiment. Id. at 3:6–8, 3:24–26.
`
`17
`
`
`
`IPR2015-01644
`Patent 6,785,065 B1
`
`
`
`As shown in Figure 3, the optical system supporting device includes,
`
`among other things, object lens 1 arranged in lens holder 2, focusing coil 4,
`tracking coils 5, springs 6, fixing member 7, base plate 8, inner yokes 9b,
`and outer yokes 9a. Ex. 1005, 3:27–50. In particular, Ikegame discloses
`that fixing member 7 is located at one side of base plate 8. Id. at 3:44–45.
`Four springs 6 extend from fixing member 7 to lens holder 2 so that the lens
`holder is supported by springs 6 in a manner that enables it to move in at
`least two directions. Id. at 3:45–48.
`2. Claim 1
`In its Petition, LG contends that Akanuma’s objective lens driving
`
`apparatus teaches all the limitations recited in independent claim 1, except
`“a spindle motor for rotating a recording medium,” and “a base.” Pet.
`24–40. LG then turns to APA’s disclosure of a spindle motor that rotates a
`disc to teach the claimed “spindle motor.” Id. at 26 (citing Ex. 1001, 2:7–12,
`3:3–7, Figs. 1, 2). LG turns to Ikegame’s disclosure of an optical system
`supporting device, which includes lens holder 2 that is arranged moveably
`on base plate 8, to teach the claimed “base.” Id. at 34–35 (citing Ex. 1005,
`3:27–28, 3:34–37, 3:44–48, Fig. 3).
`
`18
`
`
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`IPR2015-01644
`Patent 6,785,065 B1
`
`LG further argues that inserting APA’s spindle motor into the disk
`
`drive of Akanuma’s objective lens driving apparatus would have been well
`within the skill level of an ordinary skilled artisan, and would have yielded
`the predictable result of rotating Akanuma’s optical recording medium 30.
`Pet. 26 (citing Ex. 1011 ¶ 81). In addition, LG argues that it would have
`been obvious to one of ordinary at the time of the invention to include
`Ikegame’s base plate 8 in Akanuma’s objective lens driving apparatus so
`that its objective lens supporting member 14 may be arranged moveably. Id.
`at 35 (citing Ex. 1011 ¶ 107). LG asserts that one of ordinary skill in the art
`would have had a sufficient reason to include such a base in Akanuma’s
`objective lens driving apparatus to provide support for at least yokes 25, and
`one of ordinary skill in the art would have had a reasonable expectation that
`including this base in Akanuma’s objective lens driving apparatus would
`successfully support yokes 25. Id. at 36 (citing Ex. 1011 ¶ 108). LG also
`asserts that one of ordinary skill in the art would have recognized that
`applying Ikegame’s base plate 8 to support Akanuma’s yokes 25 would have
`yielded the predictable result of supporting these yokes. Id.
`
`Toshiba relies upon essentially the same arguments it presented
`against LG’s asserted ground based on obviousness over the combination of
`Akanuma and APA to rebut LG’s asserted ground based on obviousness
`over the combination of Akanuma, APA, and Ikegame. See Prelim. Resp.
`10–22. That is, Toshiba contends that Akanuma does not teach the spatial
`relationship between the bobbin, the focus and tilt coil, and the track coil, as
`required by independent claim 1. See Prelim. Resp. 10–14. As we
`explained previously, Toshiba’s argument is not commensurate in scope
`with the spatial relationship required by this claim. See Self, 671 F.2d at
`
`19
`
`
`
`IPR2015-01644
`Patent 6,785,065 B1
`
`1348. Independent claim 1 only requires that the focus and tilt coil and the
`track coil are arranged on opposite side surfaces of the bobbin, but does not
`state explicitly how these coils should be configured on each opposite side
`surface of the bobbin. Absent an explicit recitation in independent claim 1
`that requires a particular configuration, we decline Toshiba’s invitation to
`read this claim as requiring that the focus and tilt coil and the track coil to be
`arranged on the same surface level of the bobbin in a side-by-side
`configuration.
`
`In addition, Toshiba contends that Akanuma’s disclosures of drive
`coil assembly 21 and the magnetic polarizations both teach away from the
`invention embodied in independent claim 1. See Prelim. Resp. 14–18. As
`we explained previously, Toshiba’s teaching away argument is predicated on
`our reading independent claim 1 as requiring that the focus and tilt coil and
`the track coil to be arranged on the same surface level of the bobbin in a
`side-by-side configuration. We, however, decline to limit the spatial
`relationship recited in independent claim 1 as Toshiba suggests. Given that
`Toshiba’s teaching away argument is based on an overly narrow claim
`construction, Toshiba in essence has read into Akanuma a teaching away
`where no such language exists. See DyStar, 464 F.3d at 1364.
`
`Lastly, Toshiba contends that combining Ikegame’s base plate 8 with
`Akanuma’s objective lens driving apparatus would not have been predictable
`to one of ordinary skill in the art. Prelim. Resp. 21. Toshiba argues this
`proffered combination would not have been predictable because Akanuma is
`silent as to whether an inner yoke is unnecessary to guide a path of
`magnetism generated by Akanuma’s drive magnet 26. Id. at 22.
`
`20
`
`
`
`IPR2015-01644
`Patent 6,785,065 B1
`
`The United States Supreme Court has emphasized “the need for
`
`caution in granting a patent based on the combination of elements found in
`the prior art,” and stated that “[t]he combination of familiar elements
`according to known methods is likely to be obvious when it does no more
`than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`415–16 (2007). The operative question is “whether the improvement is
`more than the predictable use of prior art elements according to their
`established functions.” Id. at 417.
`
`On this record, we are persuaded that LG’s rationales for combining
`the teachings of Akanuma, APA, and Ikegame each suffices as an articulated
`reasoning with a rational underpinning that would support the legal
`conclusion of obviousness. The principle from KSR identified above
`supports LG’s argument that one of ordinary skill in the art would have
`recognized that incorporating both APA’s spindle motor and Ikegame’s base
`plate 8 into Akanuma’s objective lens driving apparatus is nothing more than
`the predictable use of prior art elements according to their established
`functions––an obvious improvement. See Pet. 26, 35–36 (citing Ex. 1011
`¶¶ 81, 107, 108).
`
`
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