BEFORE THE PATENT TRIAL AND APPEAL BOARD
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Trial No.:
`
`IPR 2015-01644
`
`In re:
`
`U.S. Patent No. 6,785,065
`
`Patent Owner:
`
`Toshiba Samsung Storage Technology Korea Corporation
`
`Petitioners:
`
`LG Electronics, Inc., and LG Electronics U.S.A., Inc.
`
`Inventors:
`
`Byung-youn Song and Kyung-sik Shin
`
`For: OPTICAL PICKUP ACTUATOR DRIVING METHOD AND APPARATUS
`THEREFOR
`
`* * * * * * * * * * *
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`
`IPR 2015-01644
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`
`
`
`CLAIM CONSTRUCTIONS ......................................................................... 1
`
`A.
`
`“On each of opposite side surfaces” (claim 1) ..................................... 3
`
`B.
`
`“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 . . . ” (claim 3) ............................................... 10
`
`
`
`OBVIOUSNESS LAW ................................................................................. 12
`
` AKANUMA AND THE APA DO NOT RENDER OBVIOUS CLAIMS
`1-2 AND 4-9. ................................................................................................ 13
`
`A. Akanuma and the APA lack coils over and in contact with each of
`opposite side surfaces. ........................................................................ 13
`
`B.
`
`Akanuma’s particular structure prevents both at least one focus and
`tilt coil and at least one track coil from being on each of opposite
`side surfaces of the bobbin. ................................................................ 18
`
` AKANUMA, THE APA, AND IKEGAME DO NOT RENDER
`OBVIOUS CLAIMS 1-2 AND 5-9. ............................................................. 23
`
` AKANUMA, THE APA, AND WAKABAYASHI DO NOT RENDER
`OBVIOUS CLAIMS 3-4. ............................................................................. 23
`
`A. Akanuma, the APA, and Wakabayashi do not teach the actuator
`being movable in both the focus direction and the tilt direction,
`simultaneously, when applying a first input signal and a second
`input signal. ........................................................................................ 24
`
`B.
`
`C.
`
`One skilled in the art at the time of the invention would not have
`modified Akanuma and the APA in view of Wakabayashi in order
`to achieve the subject matter of claim 3. ............................................ 26
`
`Petitioner’s rationales for the combination lack sound factual bases
`needed to support the legal conclusion of obviousness. .................... 30
`
`i
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`1.
`
`2.
`
`3.
`
`Petitioner fails to establish the factual showings needed for a
`“combining prior art elements according to known methods to
`yield predictable results” rationale............................................31
`
`Petitioner fails to establish the factual showings needed for a
`“use of known technique to improve similar devices in the same
`way” rationale. ..........................................................................35
`
`Petitioner fails to establish the factual showings needed for an
`“applying a known technique to a known device ready for
`improvement to yield predictable results” rationale. ................37
`
` AKANUMA, THE APA, IKEGAME, AND WAKABAYASHI DO NOT
`RENDER OBVIOUS CLAIMS 3-4. ............................................................ 38
`
` CONCLUSION ............................................................................................. 38
`
`PATENT OWNER’S EXHIBIT LIST
`
`CERTIFICATE OF SERVICE
`
`
`ii
`
`
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`
`IPR 2015-01644
`
`Toshiba Samsung Storage Technology Korea Corporation (“patent owner”
`
`or “PO”) submits this response to the petition. Petitioner has the burden of
`
`proving unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
`
`Petitioner has not met its burden for the reasons explained below. See also Ex.
`
`2003 (Bogy Decl.) at ¶¶ 48-89.
`
` CLAIM CONSTRUCTIONS
`
`PO respectfully submits that the broadest reasonable construction standard
`
`should not apply in IPRs. Instead, the PTAB should construe claim terms in IPRs
`
`using the same Phillips standard used by district courts in litigations. See Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`The IPR procedure was designed to be a surrogate for litigation, where the
`
`broadest reasonable construction (BRC or BRI) standard does not apply. See, e.g.,
`
`H.R. Rep. No. 112-98, at 46-47. IPRs are in effect adjudications that test patent
`
`validity using the fixed meaning of legally operative property rights; they are not
`
`examinations in which the scope of patent claims is fluid and changeable. In IPRs,
`
`just like district court litigation, the applicant-and-examiner back-and-forth is
`
`absent. There is no robust right to amend, and there is no guaranteed ability to
`
`resolve claim scope ambiguity. Indeed, patentees do not have a right to amend
`
`their claims in an IPR; instead, they must seek permission from the Board –
`
`permission that in practice rarely has been granted. Even when permission is
`
`granted, the ability to amend is severely limited and subject to strict rules. As the
`
`
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`dissent in In re Cuozzo Speed Techs., infra, noted, all hallmarks justifying use of
`
`the broadest reasonable interpretation standard are absent from IPR proceedings.
`
`An IPR cannot be a surrogate for litigation when it uses a different claim
`
`construction standard that leads to different results. Further, it is respectfully
`
`submitted that 37 C.F.R. 42.100(b), which directs the PTAB to give claim terms
`
`the broadest reasonable construction rather than the Phillips standard, is not a valid
`
`exercise of the USPTO’s rulemaking authority. PO respectfully submits that the
`
`Phillips standard of claim interpretation should apply.
`
`The PTAB has taken the position that in IPRs, claim terms in an unexpired
`
`patent are to be given their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. See In re Cuozzo Speed Techs.,
`
`LLC, 793 F.3d 1268, 1277-79 (Fed. Cir. 2015), cert granted sub nom. Cuozzo
`
`Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446).
`
`But even under this standard, claim terms are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art, in the context
`
`of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007). The “broadest reasonable interpretation” does not mean the “broadest
`
`possible interpretation.” As the Federal Circuit has held, a proposed construction
`
`is “unreasonably broad” when it does not “reasonably reflect the . . . disclosure”
`
`and thus is inappropriate. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed.
`
`Cir. 2010).
`
`2
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`A. “On each of opposite side surfaces” (claim 1)
`
`The phase “on each of opposite side surfaces” in claim 1 should be
`
`interpreted to mean “over and in contact with each of opposite side surfaces.” Ex.
`
`2003 at ¶¶ 25-39. A broader definition would be inconsistent with the ‘065 patent
`
`specification. Id.
`
`The word “on” might arguably be susceptible to a broader meaning if it
`
`were read in the abstract. Ex. 2003 at ¶¶ 26-27. But PO respectfully notes that the
`
`claim term must be construed in the context of this specification. Id. That is,
`
`regardless of whether the Philips standard of claim construction or the BRC rubric
`
`is used, the context of the entire disclosure must be considered. In re Translogic
`
`Tech., Inc., 504 F.3d at 1257. Even under the BRC standard, a broad construction
`
`will be found unreasonable if it is inconsistent with the specification. In re Zletz,
`
`893 F.2d 319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358
`
`F.3d 1371 (Fed. Cir. 2004); see also MPEP 2111.01(I).
`
`In this case, the ‘065 drawings clearly illustrate that “on each of opposite
`
`side surfaces” means “over and in contact with each of opposite side surfaces.”
`
`Ex. 2003 at ¶ 28. Figs. 3-4, for example, show focus and tilt coils FC1-FC4 and
`
`track coils TC1-TC2 arranged over and in contact with each of the opposite side
`
`surfaces 15a of the bobbin 15. See Ex. 1001 at Figs. 3-4; 5:16-37. These drawings
`
`are reproduced below, for ease of reference.
`
`3
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`‘065 Patent Fig. 3
`
`‘065 Patent Fig. 4
`
`
`
`
`
`Apart from the claims and the consistent and repeated textual description
`
`and visual depiction of the focus and tilt coils FC1-FC4 and track coils TC1-TC2
`
`being arranged over and in contact with each of the opposite side surfaces 15a of
`
`the bobbin 15, the ‘065 patent uses the term “on” as a function word to indicate
`
`position a total of 17 times.1 Ex. 2003 at ¶¶ 29-31. And each of these other usages
`
`of the term “on” specifically “indicate[s] position over and in contact with.” Id.
`
`In fact, the usage of the term “on” is consistent throughout the ‘065 patent,
`
`regardless of whether the positional relationship pertains to (1) “form[ing] a light
`
`
`1 This count excludes the usage of the word “on” in the “Cross-Reference to
`
`Related Applications” Section, as well its appearances in the phrase “[o]n the other
`
`hand”.
`
`4
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`spot on the optical disk” (Ex. 1001 at 1:33-35), (2) “first and second magnets 117
`
`and 119 [being] installed on the base 100” (id. at 2:2-3), (3) “a bobbin 15 on which
`
`an objective lens 14 is mounted” (id. at 5:9-15), (4) or even a “fine pattern coil 20
`
`[being] manufactured by patterning a coil shape on a film” (id. at 6:10-13).
`
`The ‘065 patent consistently uses the word “on” to describe relationships
`
`“indicat[ing] position over and in contact with” – and consistently avoids using the
`
`word “on” to refer to non-contacting positional relationships. Ex. 2003 at ¶ 32.
`
`Consider, for example, the support members 30 shown in Figs. 3-4. According to
`
`the ‘065 patent, “[t]he support member may be arranged at other opposite side
`
`surfaces of the bobbin . . .” (Ex. 1001 at 4:1-2). The ‘065 patent mentions this
`
`non-specific positional relationship again, noting that “[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 5:30-33), and concludes by noting that “a support member can be easily
`
`installed at the other opposite side surfaces” (id. at 8:26-28).
`
`The ‘065 patent claims maintain this distinction, specifically contrasting (in
`
`at least claim 1) “at least one focus and tilt coil . . . and at least one track coil . . .
`
`arranged on each of opposite side surfaces of the bobbin”, with “support members
`
`. . . provided to the other side surfaces of the bobbin . . .” (id. at 8:54-60). The
`
`claims thus further evidence that the inventors were able to distinguish between
`
`different types of positional relationships – and did so in both the specification and
`
`5
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`in claims. The specification and claims thus support PO’s position that the term
`
`“on each of opposite side surfaces” should be interpreted to mean “over and in
`
`contact with each of opposite side surfaces.” Ex. 2003 at ¶¶ 33-36.
`
`By contrast, accepting that the term “on” may or may not indicate a position
`
`over and in contact with would result in two terms clearly intended to have
`
`different meanings in the claim’s context – “on . . . surfaces” and “provided to . . .
`
`surfaces” – meaning the same thing. Id. at ¶ 36. The Federal Circuit has
`
`specifically disapproved of this result, going so far as to call it “semantic antics.”
`
`See Senmed, Inc. v. Richard-Allan Medical Industries, Inc., 888 F.2d 815, 819
`
`(1989). Rather remarkably, it did so in the context of a case finding that the term
`
`“on” meant “in physical contact with”. Id. at 820.
`
`Not only does the ‘065 patent consistently use the word “on” to describe
`
`relationships that “indicate position over and in contact with”, and not only does
`
`the ‘065 patent consistently avoid using the word “on” to refer to non-contact
`
`positional relationships, the ‘065 patent specification actually indicates that the
`
`then-applicant and inventors knew how to avoid indicating a contacting
`
`relationship. Ex. 2003 at ¶¶ 33-36. Significantly, the ‘065 patent states that “[a]n
`
`optical pickup performs recording and/or reproduction of information with respect
`
`to a recording medium . . . in a non-contact manner while moving in a radial
`
`direction of the optical disk.” Ex. 1001 at 1:27-32. This careful use of language
`
`clearly and unequivocally indicates a “non-contact” positional relationship. The
`
`6
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`inventors and then-applicant thus knew exactly how to distinguish between (1) a
`
`positional relationship indicating “over and in contact with,” (2) a positional
`
`relationship that might be over and in contact with, and (3) a positional relationship
`
`that is not “over and in contact with.”
`
`In view of the foregoing, PO respectfully submits that the specification as a
`
`whole confirms that the term “on each of opposite side surfaces” in claim 1 should
`
`be interpreted to mean “over and in contact with each of opposite side surfaces.”
`
`This interpretation is consistent with the specification and every embodiment
`
`shown and described therein. By contrast, an interpretation that reads the term
`
`more broadly would conflict with the specification, at least because it would blur
`
`together the specification’s teachings concerning when something may or may not
`
`be provided over and in contact with, the express disclaimer of non-contact
`
`portions, and the claim 1 language identified above, which draws a distinction
`
`between something that is “provided to” something else (and thus may or may not
`
`be over and in contact with it) and an element that is actually “on” something else
`
`(and thus is over and in contact with it).
`
`In this latter regard, claim 1 itself, when read carefully and completely,
`
`supports PO’s proposed interpretation. For example, as noted above, claim 1
`
`specifically requires both “at least one focus and tilt coil . . . and at least one track
`
`coil . . . arranged on each of opposite side surfaces of the bobbin” and “support
`
`members . . . provided to the other side surfaces of the bobbin . . .” (id. at 8:54-
`
`7
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`60; Ex. 2003 at ¶ 37.). Accepting that the term “on” may or may not indicate a
`
`position over and in contact with would result in two terms clearly intended to
`
`have different meanings in the claim’s context – “on . . . surfaces” and “provided
`
`to . . . surfaces” – meaning the same thing. See Senmed, 888 F.2d at 819. The
`
`Federal Circuit has specifically disapproved of this result, going so far as to call it
`
`“semantic antics” in a case finding that the term “on” meant “in physical contact
`
`with.” Id. at 820.
`
`Moreover, the purpose of a patent claim is to define the precise scope of a
`
`claimed invention, “giv[ing] notice both to the examiner at the U.S. Patent and
`
`Trademark Office during prosecution, and to the public at large, including potential
`
`competitors, after the patent has issued.” Johnson & Johnston Assocs., Inc. v. R.E.
`
`Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002) (en banc). Allowing one to argue
`
`that physical structures and characteristics specifically described in a claim are
`
`merely superfluous would leave examiners and the public to guess about which
`
`claim language the drafter deemed necessary to the claimed invention and which
`
`language is merely superfluous, non-limiting elaboration. See Stumbo v. Eastman
`
`Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim
`
`constructions that render phrases in claims superfluous); Bicon, Inc. v. Straumann
`
`Co., 441 F.3d 945, 950 (Fed.Cir.2006) (refusing to interpret the claim language in
`
`a manner covering any kind of “abutment”). Thus, claims are interpreted with an
`
`8
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`eye toward giving effect to all terms in the claim. See, e.g., Elekta Instrument S.A.
`
`v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1305, 1307 (Fed.Cir.2000).
`
`In this case, the above-quoted ‘065 patent claim language is specific in twice
`
`referring to “side surfaces,” not just “sides.” The inclusion of the term surfaces is
`
`significant, and further emphasizes the existence of a physical contact surface, as
`
`opposed to generally orientation “at” or “near” or “in” or “adjacent” a side. Ex.
`
`2003 at ¶ 37. The careful and repeated use of the term “side surfaces” is important
`
`and should not be overlooked.
`
`Indeed, a broader definition of the claim 1 term “on each of opposite side
`
`surfaces” that does not take into account actual “contact” would render
`
`superfluous the word “surfaces.” Ex. 2003 at ¶ 38. That is, an attempt to read the
`
`claim broadly and in a manner that does not take into account actual “contact”
`
`with a “surface” would instead refer to “at each of opposite sides” – thereby
`
`allowing the structures to be anywhere near the sides as a result of the improper
`
`rendering as superfluous the claim requirement for a relationship to the “side
`
`surfaces.” Id. Again, this approach is inappropriate, regardless of whether the
`
`Phillips standard of claim construction is used, or whether the BRI controls. See,
`
`e.g., Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
`
`(cited with approval in numerous PTAB / BPAI cases in connection with ex parte
`
`prosecution of patent applications where the BRI was applied).
`
`9
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`Furthermore, Webster’s Third New International Dictionary (unabridged)
`
`defines the word “on” in its definition 1a as “used as a function word to indicate
`
`position over and in contact with that which supports from beneath.” Ex. 2001;
`
`see also Ex. 2003 at ¶ 39. The fact that this specific definition appears first is yet
`
`further evidence that the ordinary and customary meaning of the word “on,” as
`
`would be understood by one of ordinary skill in the art, should “indicate position
`
`over and in contact with.”
`
`In view of the foregoing, PO respectfully submits that the term “on each of
`
`opposite side surfaces” in claim 1 should be interpreted to mean “over and in
`
`contact with each of opposite side surfaces.” This interpretation is consistent with
`
`dictionary definitions and this specification, and gives full meaning to each and
`
`every word in claim 1. A broader interpretation of this term that allows for mere
`
`proximity, by contrast, would be inconsistent and would actually conflict with the
`
`specification, while rendering the word “surfaces” in claim 1 mere surplusage.
`
`PO’s proposed construction of “over and in contact with each of opposite side
`
`surfaces” for the claim 1 term “on each of opposite side surfaces” therefore should
`
`be adopted.
`
`B. “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 . . . ” (claim 3)
`
`Claim 3 specifies that, inter alia, “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
`
`10
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`signal is applied to a second set . . .” (Ex. 1001 at 9:6-8). This language should be
`
`interpreted to require, inter alia, that the actuator is driven 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. Ex. 2003 at ¶¶ 40-43. This
`
`interpretation is consistent with the plain and ordinary meaning of claim 3 and the
`
`specification, and is needed to give full weight to all claim terms therein. Id.
`
`The specification of the ‘065 patent, in Figs. 7C and 8C and col. 7:21-45 for
`
`example, clearly describes the supporting embodiment where applying first and
`
`second input signals to the first and second coils sets, respectively, simultaneously
`
`drives the actuator in both the focus and tilt directions. Ex. 2003 at ¶ 42-43. That
`
`is, as explained in the ‘065 patent specification in connection with Figs. 7C and
`
`8C:
`
`[T]he driving of the bobbin 15 in the focus and tilt directions can be
`
`simultaneously controlled by applying a sum signal of the first and
`
`second input signals for driving in the tilt direction as a signal for
`
`driving in the focus direction. That is, a sum signal (FIG. 7C) of the
`
`focus driving signal (FIG. 7A) and the first input signal (FIG. 7B) for
`
`driving in the tilt direction is input to the first set coil. A sum signal
`
`(FIG. 8C) of the focus driving signal (FIG. 8A) and the second input
`
`signal (FIG. 7C) for driving in the tilt direction is input to the second
`
`set coil. Thus, driving in the focus direction F, and the tilt radial
`
`direction Tir or the tangential tilt direction Tit can be controlled
`
`simultaneously.
`
`Ex. 1001 at 7:21-35 (emphasis added).
`
`11
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`Additional claim constructions may be reflected in the arguments below.2
`
` OBVIOUSNESS LAW
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co.
`
`v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved
`
`on the basis of underlying factual determinations, including (1) the scope and
`
`content of the prior art; (2) differences between the claimed subject matter and the
`
`prior art; (3) the level of skill in the pertinent art; and (4) secondary considerations
`
`such as commercial success, long felt need, copying by others, etc. Graham v.
`
`John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
`
`
`2 The language of ‘065 patent claim 1 involving “a control unit driving the
`
`spindle motor and the optical pickup to transfer the information with respect to the
`
`recording medium and controlling the actuator of the optical pickup in the radial,
`
`track, tilt and focusing directions” need not be construed to resolve the issues in
`
`this IPR. However, contrary to petitioner’s apparent allegation, this language is
`
`clear on its face as explained in Bogy Decl. ¶ 44-47.
`
`12
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
` AKANUMA AND THE APA DO NOT RENDER OBVIOUS CLAIMS
`1-2 AND 4-9.
`
`Claim 1 requires, inter alia, “at least one focus and tilt coil which drives the
`
`bobbin in the focus and the 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.” As explained above, “on each of opposite side surfaces” should be
`
`interpreted to mean “over and in contact with each of opposite side surfaces.” This
`
`interpretation is needed to be consistent with the ‘065 patent specification, the ‘065
`
`patent figures, and to avoid rendering as merely superfluous the term “surfaces” as
`
`it appears in claim 1. Akanuma and the APA, alone and in combination, fail to
`
`render obvious this subject matter of claim 1. In fact, the particular structure of
`
`Akanuma prevents this arrangement from ever being realized. The Akanuma/APA
`
`combination therefore does not render obvious claim 1 (and the claims depending
`
`therefrom). See Ex. 2003 at ¶¶ 48-64.
`
`A. Akanuma and the APA lack coils over and in contact with each of
`opposite side surfaces.
`
`Petitioner asserts that Akanuma’s focusing coil 27 and tracking coil 28
`
`correspond to the claimed at least one focus and tilt coil and at least one track coil,
`
`respectively. Pet. 36-37. Akanuma’s drive coil assemblies 21 include focusing
`
`coils 27 and tracking coils 28. Ex. 1002 at Figs. 5A-8; 6:63-65; 7:24-27; 8:10-13;
`
`and 8:17-18.
`
`13
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`The Petition seems to rely on two different embodiments of Akanuma. Pet.
`
`18-19. The first relied-on embodiment in Akanuma is shown in Figs. 5A-6, and
`
`the second relied-on embodiment in Akanuma is shown in Figs. 7A-8. Petitioner
`
`asserts that:
`
`In the first embodiment of Akanuma, drive coil assemblies 21 each
`
`including focusing coils 27 and tracking coils 28 are arranged on the
`
`outer surface of two side walls 20 on opposite-sides of the objective
`
`lens supporting member 14 by mounting the drive coil assemblies to
`
`the side walls 20. . . . In the second embodiment, the drive coil
`
`assemblies 21 including the focusing coils 27 and the tracking coils 28
`
`are again arranged on surfaces of the side walls 20 on opposite-sides
`
`of the objective lens supporting member 14. . . .
`
`Pet. 18-19. At best, these assertions are misleading. They certainly do not reflect
`
`what is shown in and described in connection with the relevant figures of
`
`Akanuma. See Ex. 2003 at ¶ 49.
`
`Fig. 5A and Fig. 7A of Akanuma are reproduced below for ease of
`
`reference.
`
`
`
`
`
`14
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`Fig. 5A of Akanuma
`
`Fig. 7A of Akanuma
`
`
`
`
`
`Akanuma explains that the drive coil assembly 21 in its entirety is mounted
`
`to the side walls 20 of the objective lens supporting member 14 in the first
`
`embodiment, as shown by Fig. 5A. Ex. 1002 at Fig. 5A; 6:63-65; see also Ex.
`
`2003 at ¶¶ 49-50. By contrast, Akanuma clearly shows that the drive coil
`
`assembly 21 in its entirety is embedded within the side walls 20 in the second
`
`embodiment, as shown by Fig. 7A. Ex. 1002 at Fig. 7A; 8:17-18; see also Ex.
`
`2003 at ¶¶ 49-50.
`
`At the outset, then, regardless of the arrangement of Akanuma’s focusing
`
`coils 27 and tracking coils 28 in its drive coil assembly 21 in its second
`
`embodiment, it should be clear that the above-quoted language of claim 1 cannot
`
`be met. Ex. 2003 at ¶ 51-52. That is, because Akanuma’s second embodiment
`
`15
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`involves both of the focusing coils 27 and tracking coils 28 being embedded in its
`
`side walls 20 (i.e., by virtue of their being included in the drive coil assembly 21
`
`clearly shown as being embedded in the side walls 20 in Fig. 7A and being
`
`described as such in Akanuma), these focusing coils 27 and tracking coils 28
`
`cannot possibly be said to be “on each of opposite side surfaces of the bobbin.” Id.
`
`Embedding within side walls is not providing “on . . . side surfaces” as required by
`
`‘065 patent claim 1. This is particularly true when “on each of opposite side
`
`surfaces” is properly interpreted to mean “over and in contact with each of
`
`opposite side surfaces,” as embedding within side walls clearly lacks an “over and
`
`in contact with” relationship.
`
`Visual inspection of the positional relationship of the focusing coils 27 and
`
`tracking coils 28 that compose the drive coil assembly 21 confirms that the
`
`focusing coils 27 and tracking coils 28 are not on each of opposite side surfaces of
`
`the side walls 20 of the objective lens supporting member 14, in either relied-upon
`
`embodiment of Akanuma. Ex. 2003 at ¶¶ 53-54. Figs. 6 and 8 of Akanuma are
`
`exploded views, showing the positional relationship of the focusing coil 27 and the
`
`tracking coil 28 relative to one another. These drawings are reproduced below for
`
`ease of reference.
`
`
`
`
`
`16
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`Fig. 6 of Akanuma
`
`Fig. 8 of Akanuma
`
`
`
`
`
`As can be seen from these perspective views, the focusing coil 27 and the
`
`tracking coil 28 are stacked one on top of another. Ex. 2003 at ¶ 55. This makes
`
`sense in the context of how Akanuma’s drive force is generated and designed to
`
`work using its coils and the magnets. Id. For example, with respect to the first
`
`embodiment as shown and described in connection with Fig. 6, each of the
`
`focusing coils 27 is designed to extend over the magnetization boundary line “b”
`
`and each of the track coils 28 is designed to extend over the magnetization
`
`boundary line “a”. Ex. 1002 at 7:27-41. The ability to provide tilt in connection
`
`with this arrangement is predicated on the ability to provide separate / individual
`
`currents to each of the focusing coils 27 and/or track coils 28. Id. at 48-57. The
`
`drive force is generated by providing current to the focusing coils 27 and/or the
`
`tracking coils 28, due to magnetic fields generated by the drive magnet 26. Id. at
`
`42-47. See also Ex. 2003 at ¶ 55. Note that the second embodiment as shown and
`
`described in connection with Fig. 8 apparently is designed in a like manner. Ex.
`
`1002 at 8:31-47; Ex. 2003 at ¶ 55.
`
`17
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`But this stacked structure for the focusing coils 27 and the tracking coils 28,
`
`and the required position of these coils 27 and 28 relative to the magnet 26,
`
`prevents the ‘065 patent claim 1 language from being met in both relied-upon
`
`embodiments of Akanuma. Ex. 2003 at ¶ 56. That is, although one of the focusing
`
`coils 27 and the tracking coils 28 might possibly be provided on opposite side wall
`
`20 surfaces in Akanuma (at least in Fig. 6), the other cannot be because it must be
`
`stacked with the other coil in order to have an arrangement appropriate for being
`
`influenced by the magnet 26. Id. Indeed, Petitioner’s expert does not dispute that
`
`both of focusing coils 27 and tracking coils 28 cannot contact side surfaces of the
`
`objective lens supporting member 14. See Ex. 2002 at p. 83, line 15 to p. 84, line
`
`14. Akanuma thus lacks “at least one focus and tilt coil . . . and at least one track
`
`coil . . . on each of opposite side surfaces of the bobbin,” since at least one of the
`
`focusing coils 27 and the tracking coils 28 therein must be stacked on the other,
`
`making it impossible for both to be over and in contact with each of opposite side
`
`surfaces. Akanuma, with or without the APA, cannot meet this language of claim
`
`1, when it is properly construed.
`
`B. Akanuma’s particular structure prevents both at least one focus and tilt
`coil and at least one track coil from being on each of opposite side
`surfaces of the bobbin.
`
`As discussed above, with respect to the first embodiment as shown and
`
`described in connection with Fig. 6 of Akanuma, each of the focusing coils 27 is
`
`designed to extend over the magnetization boundary line “b” and each of the track
`
`18
`
`2618419
`
`

`
`Patent Owner’s Response (U.S. Pat. No. 6,785,065)
`
`
`
`
`
`
`
`IPR 2015-01644
`
`coils 28 is designed to extend over the magnetization boundary line “a”. Ex. 1002
`
`at 7:27-41; Ex. 2003 at ¶ 57. The ability to provide tilt in connection with this
`
`arrangement is predicated on the ability to provide separate / individual currents to
`
`each of the focusing coils 27 and/or track coils 28. Ex. 1002 at 7:48-57; Ex. 2003
`
`at ¶ 57. The drive force is generated by providing current to the focusing coils 27
`
`and/or the tracking coils 28, due to magnetic fields generated by the drive magnet
`
`26. Ex. 1002 at 7:42-47; Ex. 2003 a