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`Filed on behalf of: LG Electronics, Inc. and Paper ____
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` LG Electronics U.S.A., Inc.
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`By: Brian A. Tollefson, Lead Counsel
`Michael V. Battaglia, Back-up Counsel
`Michael H. Jones, Back-up Counsel (Pro Hac Vice)
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: btollefson@rothwellfigg.com
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` mbattaglia@rothwellfigg.com
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` mjones@rothwellfigg.com
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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
`_______________
`
`
`
`PETITIONER REPLY TO PATENT OWNER RESPONSE
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................... iv
`
`EXHIBIT LIST .......................................................................................................... v
`
`INTRODUCTION ..................................................................................................... 1
`
`1.
`
`2.
`
`3.
`
`TSST-K’s construction of “on each of opposite side surfaces” (claim
`1) is overly narrow and does not comply with BRI. ....................................... 2
`
`Claim 3 does not require simultaneous focusing and tilting. ........................ 10
`
`The cited references render the claims obvious. ........................................... 10
`
`a.
`
`b.
`
`c.
`
`Under the proper construction, the coils of Akanuma are “on
`each of opposite side surfaces of the bobbin.” .................................... 10
`
`Even under TSST-K’s erroneous construction, the coils of
`Akanuma are over and in contact with opposite side surfaces of
`the bobbin. ........................................................................................... 11
`
`Even under TSST-K’s erroneous construction, Akanuma
`renders coils over and in contact with opposite side surfaces of
`the bobbin obvious. ............................................................................. 12
`
`4.
`
`Even if claim 3 were interpreted as driving an actuator in focus and
`tilt directions simultaneously, both Akanuma and Wakabayashi
`disclose driving an actuator in focus and tilt directions simultaneously. ...... 15
`
`CONCLUSION ........................................................................................................ 23
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`CERTIFICATE OF WORD COUNT ...................................................................... 24
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`CERTIFICATE OF SERVICE ................................................................................ 25
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`iii
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`In re Cuozzo Speed Technologies v. Lee,
`2016 U.S. Lexis 3927 (U.S. June, 20, 2016) ......................................................... 9
`
`Senmed, Inc. v. Richard-Allan Medical Industries, Inc.,
`888 F.2d 815 (Fed. Cir. 1989) ................................................................................ 8
`
`
`
`
`
`iv
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
`
`
`EXHIBIT LIST
`
`Reference
`
`U.S. Patent No. 6,785,065 to Song et al. (filed on Feb. 6, 2004)
`(issued on Aug. 31, 2004) (“the ’065 patent”)
`
`U.S. Patent No. 6,343,053 to Akanuma et al. (filed Aug. 25, 1999)
`(issued Jan. 29, 2002) (“Akanuma”)
`
`U.S. Patent No. 5,043,964 to Suzuki (filed May 8, 1990) (issued
`August 27, 1991) (“Suzuki”)
`
`U.S. Patent No. 6,043,935 to Kim et al. (filed December 31, 1998)
`(issued March 7, 2000) (“Kim”)
`
`U.S. Patent No. 5,428,481 to Ikegame et al. (filed November 1, 1990)
`(issued June 27, 1995) (“Ikegame”)
`
`U.S. Patent No. 6,134,058 to Mohri et al. (filed June 29, 1999) (issued
`October 17, 2000) (“Mohri”)
`
`U.S. Patent No. 5,905,255 to Wakabayashi et al. (filed January 14,
`1998) (issued May 18, 1999) (“Wakabayashi”)
`
`U.S. Patent No. 5,265,079 to Getreuer et al. (filed February 15, 1991)
`(issued November 23, 1993) (“Getreuer”)
`
`U.S. Patent No. 5,719,834 to Futagawa et al. (filed June 27, 1996)
`(issued February 17, 1998) (“Futagawa”)
`
`U.S. Patent No. 6,272,079 to Kanto et al. (filed December 1, 1998)
`(issued August 7, 2001) (“Kanto”)
`
`Ex.
`
`1001
`
`1002
`
`1003
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`1004
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`1005
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`1006
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`1007
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`1008
`
`1009
`
`1010
`
`1011
`
`Declaration of Masud Mansuripur, Ph.D.
`
`1012
`
`Deposition Transcript of David B. Bogy
`
`v
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
`
`
`INTRODUCTION
`
`The arguments made by Toshiba Samsung Storage Technology Korea
`
`Corporation (“TSST-K” or “Patent Owner”) in its Patent Owner’s Response (POR)
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`are based entirely upon an overly narrow construction of the term “on.” TSST-K
`
`argues -- improperly applying Philips rather than BRI -- that “on each of opposite
`
`side surfaces” recited in independent claim 1 should be construed to require the
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`coils each to be “over and in contact with” the opposite side surfaces. POR (Paper
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`No. 21) at pp. 1-10. To support its construction, TSST-K primarily cites to a hand-
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`selected dictionary definition for “on” when the use of a dictionary is clearly
`
`unnecessary. A simple read of the ’065 patent (Ex. 1001) reveals that “on” is used
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`the same as “at” and that the focus is proximity ,not contact. Petitioner’s
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`construction of “on” as not requiring contact is fully supported by the specification,
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`which teaches that the coils are positioned at two opposite sides to open up space at
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`the other sides of the bobbin for the supporting wires. Ex. 1001 at 2:57-3:17, 8:21-
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`30. Indeed, the Board already agreed with Petitioner and rejected a similar
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`argument made by TSST-K in its Preliminary Response. Institution Decision
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`(Paper No. 8) at pp. 13-15. TSST-K offers no new evidence or arguments meriting
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`reversal of the Board’s construction. Because all of TSST-K’s arguments rely on
`
`its faulty construction of the word “on,” they should likewise be rejected.
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`1
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
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`TSST-K’s only other argument relates to dependent claim 3 and whether
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`U.S. Patent No. 5,905,255 to Wakabayashi et al. (“Wakabayashi”) (Ex. 1007)
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`discloses simultaneously tilting and focusing. See, e.g., POR at pp. 31-37. This
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`argument should be rejected for two reasons. First, claim 3 does not explicitly
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`require that tilting and focusing be simultaneous; and, second, even if it did, TSST-
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`K’s own expert admitted during his deposition that the control circuit of
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`Wakabayashi can control movement in both the tilt and focus directions at the
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`same time. See Ex. 1012 at 169:4-12, 172:12-18, 182:21-183:8, 184:5-185:17.
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`For example, TSST-K’s expert agreed that optical disk drives do not typically
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`perform focus and tilt error correction at different times (Ex. 1012 at 169:4-12),
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`and that the bobbin of Wakabayashi would “focus and tilt at the same time.” Id. at
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`184:5-185:17 (emphasis added).
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`Thus, for the reasons set forth herein and in its Petition, Petitioners submit
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`that claims 1-9 are unpatentable and should be cancelled.
`
`1.
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`TSST-K’s construction of “on each of opposite side surfaces” (claim 1)
`is overly narrow and does not comply with BRI.
`
`In its POR, TSST-K repackages the argument presented in its Preliminary
`
`Response, which the Board squarely rejected in the Institution Decision.
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`Institution Decision at pp. 14-15. TSST-K’s POR does not include any new
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`evidence or argument worth overturning this Board’s previous conclusions that the
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`2
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`
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`claims do not explicitly require the coils to be in a particular configuration (e.g.,
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
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`side-by-side) on a surface of the bobbin. See POR at pp. 3-10.
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`TSST-K does not point to any explicit recitation that requires the focusing
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`and tilt coils and the tracking coils to be “in contact with” the opposite side
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`surfaces of the bobbin. The specification of the ’065 patent also does not teach
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`that the focusing and tilt coils FC1-FC4 and the tracking coils TC1-TC2 must be
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`“in contact with” the opposite side surfaces 15a of the bobbin 15. Rather than
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`point to any explicit teaching in the ’065 patent, TSST-K argues that the use of
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`term “non-contact” in the ’065 patent “indicates that the then-applicant and
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`inventors knew how to avoid indicating a contacting relationship” and that the
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`inventors and then-applicant thus knew exactly how to distinguish between
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`positional relationships that are and are not “over and in contact with.” POR at pp.
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`6-7. But the inventors and then-applicant did not include “contact” in the claims,
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`and the claims should not be interpreted as requiring a contacting relationship.
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`TSST-K argues that “[t]he ’065 patent consistently uses the word ‘on’ to
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`describe relationships ‘indicat[ing] position over and in contact with’ – and
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`consistently avoids using the word ‘on’ to refer to non-contacting positional
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`relationships.” POR at p. 5 (citing Ex. 2003, Declaration of David B. Bogy (“Bogy
`
`Decl.”) at ¶ 32). However, to reach this conclusion, TSST-K ignored usage of the
`
`term “on” in the claims of the ’065 patent. POR at p. 4 (“Apart from the claims
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`3
`
`
`
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`…”); Bogy Decl. at ¶ 30 (“Ignoring the appearance of the word ‘on’ in the claims
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
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`…”). In claim 1 of the ’065 patent, the “bobbin [is] movably arranged on a base
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`of the actuator.” Ex. 1001 at 8:53 (emphasis added). It is indisputable that the
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`bobbin is suspended over the base. Ex. 1001 at 5:33-34; Ex. 1012 at 50:20-51:6
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`(TSST-K’s expert agreeing that the bobbin is “[s]uspended” by the support
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`members 30). The bobbin cannot be in contact with the base because, if it were,
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`the bobbin could not be driven downward in the focus direction F. Ex. 1001 at
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`6:45-54, 7:52-53; see also id. at 53:15-19, 65:15-66:6, 109:7-17, 110:2-10. TSST-
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`K’s expert confirmed this: “you couldn’t move [the bobbin] up and down relative
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`to the base if it were already on the base….[i]t has to have some space between the
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`bobbin and the base 10 in order for it to be able to move in the focus direction both
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`ways.” Ex. 1012 at 109:18-110:1, 11-22.
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`TSST-K also attempts to distinguish between the use of “on” and “at” in the
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`’065 patent, with “on” referring to a contacting positional relationship and “at”
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`referring to a “non-specific positional relationship.” POR at p. 5. TSST-K
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`additionally asserted that the claims maintain this distinction by using “on” for the
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`coils and opposite side surfaces of the bobbin and using “provided to” for the
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`support members and other side surfaces of the bobbin. Id. at pp. 5-6. See also id.
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`at pp. 7-8. However, the ’065 patent does not distinguish between “on” as
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`meaning one thing and “at” or “provided to” as meaning another. Instead, the ’065
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`4
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`
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`patent uses these terms interchangeably and specifically describes the coils as
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
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`being each of “provided at,” “provided on,” and “arranged at” the opposite sides
`
`surfaces:
`
`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 15 b of the bobbin (where the focus and tilt coils FC1-FC4
`and the tracks coils TC1-TC2 are not arranged).
`
`Ex. 1001 at col. 5, ll. 16-32 (emphasis added).1
`
`
`1 See also Ex. 1001 at Abstract (installing coils “at opposite side surfaces of the
`
`bobbin”); 1:16-24 (coils “are provided at both sides of a bobbin”); 3:9-17 (coils
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`“are arranged at both side surfaces of a bobbin”); 5:57-63 (coils “provided at the
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`one side surface” and coils “provided at the other side surface”); col. 6, ll. 38-41
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`(coils “arranged at both side surfaces 15a of the bobbin 15”); 8:21-25 (“coils are
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`provided at opposite side surfaces of a bobbin to secure a free space at the other
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`opposite side surfaces of the bobbin”).
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`5
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
`
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`Accordingly, one of ordinary skill in art would have understood “arranged
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`on,” “arranged at,” “provided on,” “provided at,” and “provided to,” as used in the
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`’065 patent, as all describing the same non-specific, positional relationship (i.e.,
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`proximity) that could include but does not require direct contact.2
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`It is unsurprising that TSST-K never argues why the coils must be “in
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`contact with” the opposite side surfaces. That is because there is no reason. The
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`’065 patent focuses on the location of the coils, i.e., on which side surface they are
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`located, rather than whether the coils are each in physical contact with the opposite
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`side surfaces. See Ex. 1001 at 2:57-3:17, 8:21-30. The coils “arranged on”
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`opposite side surfaces claim feature relates to the coils being located at each of two
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`opposite side surfaces of the bobbin and not at the other side surfaces to which the
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`support members are attached, to address purported shortcomings of arranging
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`coils at all four side surfaces of the conventional bobbin. Id. at 2:57-3:7. For
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`2 This point is further supported by (i) the recitation of “arranged on” in claim 1 to
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`describe the non-contacting positional relationship of the bobbin and base, as
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`explained above, and (ii) by the use “on” in Akanuma. See, e.g., Ex. 1002 at 7:12-
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`15 (describing a yoke 25 and a drive magnet 26 of Figs. 5A and 5B as “provided
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`on each side of the side walls 20” despite not being in contact with the sides of the
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`side walls 20).
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`6
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`
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`instance, due to the very small size of the optical pickup actuator, there may be
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
`
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`insufficient space to install the wires, and “wiring of the coils is complicated.” Id.
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`at 2:57-61, 2:65-66. Also, because a magnet is provided at the coils on all four
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`sides of bobbin, the number of parts constituting the optical pickup actuator
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`increases, and productivity decreases. Id. at 2:67-3:3. Additionally, the magnets
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`can interfere with the operation of the spindle motor. Id. at 3:3-7. See also Exhibit
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`1011, Declaration of Professor Masud Mansuripur, Ph.D. (“Mansuripur Decl.”) at
`
`¶ 45. The ’065 patent purportedly solves the problems with the prior art by
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`exclusively providing coils at opposite side surfaces 15a of a bobbin 15, thereby
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`securing a free space at the other opposite sides 15b of bobbin 15 (where the coils
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`are not arranged) for easy installation of the support members 30. Ex. 1001 at
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`Figs. 3-4; 3:9-17; 8:21-30. See also Mansuripur Decl. (Ex. 1011) at ¶ 46. The
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`coils being “arranged on” opposite side surfaces of the bobbin thus defines a
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`positional relationship with respect to sides of the bobbin that has nothing to do
`
`with whether the coils are “in contact with” the opposite side surfaces.
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`For example, TSST-K’s expert admitted that the bobbin of the ’065 patent
`
`would still work if the coils were not in contact with the bobbin and instead
`
`mounted to a backing plate glued to the bobbin. Ex. 1012 at 86:21-87:4. TSST-
`
`K’s expert also agreed that the ’065 patent discloses the importance of the coils
`
`being located at two sides of the bobbin as opposed to being located at four sides
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`7
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`
`
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`as in the prior art. Id. at 95:3-13. Moreover, when asked why it was important for
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
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`the coils to be in direct contact with the side surfaces, TSST-K’s expert gave the
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`puzzling answer: “the inventors thought it was important that [the coils] be in
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`contact [with the bobbin] for some reason [which] is not revealed.” Ex. 1012 at
`
`96:9-97:6 (emphasis added)).
`
`TSST-K cited Senmed, Inc. v. Richard-Allan Medical Industries, Inc., 888
`
`F.2d 815 (Fed. Cir. 1989) to attempt to support its position with respect to the
`
`construction of “on each of opposite side surfaces.” POR at pp. 6 & 8. Senmed is
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`inapplicable here because (1) in Senmed, the Federal Circuit did not apply the
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`broadest reasonable construction standard applied in IPR proceedings, (2) the
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`specification of the ’065 patent does not use “on” interchangeably with “upon” (as
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`did the patent specification at issue in Senmed) and instead uses “on” and “at”
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`interchangeably, and (3) unlike the claims in Senmed, the claims of the ’065 patent
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`were not amended during prosecution to distinguish the claims from a reference
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`that disclosed coils at but not in physical contact with side surfaces of a bobbin.3
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`See Senmed, 888 F.2d at 819-820.
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`3 The ’065 patent and its parent, U.S. Patent No. 6,721,110 (“the ’110 patent”),
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`issued after receiving First-Action Notices of Allowance.
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`8
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
`
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`TSST-K also argues that an interpretation of coils arranged “on each of
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`opposite side surfaces” that does not require the coils to be in “actual ‘contact’
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`would render superfluous the word ‘surfaces.’” POR at p. 9. This argument makes
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`no sense. Obviously, you may be “on the surface of the Earth” without being in
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`direct contact with the ground.
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`TSST-K’s reliance on the dictionary definition should be ignored. Besides
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`the definition being hand-picked to attempt to distinguish the ’065 patent from
`
`Akanuma,4 TSST-K’s claim construction must be rejected because it is not based
`
`on the BRI standard but rather on one expressly disavowed by the U.S. Supreme
`
`Court. See In re Cuozzo Speed Technologies v. Lee, 2016 U.S. Lexis 3927 (U.S.
`
`June, 20, 2016).
`
`Thus, TSST-K’s proposed construction of “on each of opposite side
`
`surfaces” is improperly narrow and inconsistent with the usage of “on” in the ’065
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`patent and, therefore, inconsistent with the broadest reasonable interpretation.
`
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`4 TSST-K’s exert testified that he first took the disclosure of U.S. Patent No.
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`6,343,053 to Akanuma et al. (“Akanuma”) (Ex. 1002) into consideration and,
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`specifically, that he was “trying to figure out how Akanuma is different that the
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`’065 patent” when he formed his opinion that “on” in claim 1 means “over and in
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`contact with.” Ex. 1012 at 82:17-83:18.
`
`9
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
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`Claim 3 does not require simultaneous focusing and tilting.
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`2.
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`TSST-K argued that the recitation in claim 3 that, “in order to drive the
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`actuator in the focus and tilt directions, a first input signal is applied to a first set
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`and a second set and a second input signal is applied to a second set … ” should be
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`interpreted to require, inter alia, that the actuator is driven in both the focus
`
`direction and the tilt direction simultaneously when the recited first and second coil
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`sets, respectively. POR at pp. 11, 24-26. TSST-K is attempting to read a
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`limitation into a claim that is not found in the claim itself. That is, claim 3 recites
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`“driv[ing] the actuator in the focus and tilt directions” and does not specify that the
`
`actuator be driven in the focus and tilt directions simultaneously. Therefore, the
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`language of claim 3, when given its broadest reasonable construction, does not
`
`require simultaneous driving in the focus and tilt directions. Thus, TSST-K’s
`
`arguments that Wakabayashi fails to show the features of claim 3, which are based
`
`on this construction, should be rejected.
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`3.
`
`The cited references render the claims obvious.
`
`a. Under the proper construction, the coils of Akanuma are “on
`each of opposite side surfaces of the bobbin.”
`
`As set forth above, the claims merely require the coils to be located at each
`
`of opposite side surfaces of the bobbin, which is indisputably taught by Akanuma.
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`See Mansuripur Decl. (Ex. 1011) at ¶¶ 109-113. In particular, the focusing coils 27
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`10
`
`
`
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`and tracking coils 28 of Akanuma are arranged on each of the opposite sides
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
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`surfaces 20 of the bobbin 14 of Akanuma simply because the coils 27 and 28 are
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`located at each of the opposite sides surfaces. Ex. 1002 at Figs. 5A-6. Moreover,
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`the focusing coils 27 and tracking coils 28 of Akanuma are arranged on each of the
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`opposite sides surfaces 20 of the bobbin 14 of Akanuma because the coils 27 and
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`28 are part of the drive coil assemblies 21, which are “mounted” to the opposite
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`sides surfaces 20 of the bobbin 14 of Akanuma. Ex. 1002 at Figs. 5A-5B; col. 6, ll.
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`63-64; col. 7, ll. 24-25. Therefore, everything that is part of the drive coil
`
`assemblies 21 mounted on the opposite sides surfaces 20 of Akanuma is “arranged
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`on each of opposite side surfaces of the bobbin,” as required by the claims.
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`b. Even under TSST-K’s erroneous construction, the coils of
`Akanuma are over and in contact with opposite side surfaces of
`the bobbin.
`
`In addition, even under TSST-K’s proposed construction, Akanuma
`
`discloses focusing coils 27 and tracking coils 28 arranged “over and in contact with
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`each of opposite side surfaces” of the bobbin. TSST-K argued that, due to their
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`stacked nature, at least one of the focusing coils 27 and the tracking coils 28 in the
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`drive coil assemblies 21 of Akanuma is not in contact with the side surfaces 20 of
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`the bobbin 14 (e.g., because tracking coils 28 are between the side surfaces 20 and
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`the focusing coils 27). POR at pp. 13-18.
`
`11
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
`
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`As shown in Figs. 5A-6 of Akanuma, by virtue of the stacked nature of the
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`focusing coils 27 and tracking coils 28 in the drive coil assemblies 21, both the
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`focusing coils 27 and the tracking coils 28 are (directly or indirectly) in contact
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`with opposite side surfaces of the objective lens supporting member 14. See Ex.
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`1002 at Figs. 5A-6. Specifically, the tracking coils 28 in the drive coil assemblies
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`21 mounted to opposite side surfaces of the objective lens supporting member 14
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`of Akanuma are in direct contact with the surfaces of the side walls 20, and the
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`focusing coils 27 in the drive coil assemblies 21 are indirect contact with the
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`opposite surfaces of the side walls 20. Thus, even under TSST-K’s proposed
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`construction, the coils 27 and 28 of Akanuma contact (directly or indirectly) the
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`opposite side surfaces of the objective lens supporting member 14, and the claims
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`are invalid over the combinations.
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`c. Even under TSST-K’s erroneous construction, Akanuma
`renders coils over and in contact with opposite side surfaces of
`the bobbin obvious.
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`In its POR, TSST-K argues that “[i]t could not have been obvious for those
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`skilled in the art to arrange both the focusing coils and the tracking coils [of
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`Akanuma] to meet the language of claim 1, absent any teaching or suggestion of
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`either arranging different magnets with various polarizations or arranging coils
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`without being restricted to the boundary line “a” and “b”, [sic] as doing so
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`certainly would have changed Akanuma’s principle operation.” POR at 22-23
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`12
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`citing to Ex. 2003 ¶ 63. However, Akanuma teaches and suggests the very thing
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`that TSST-K says is absent.
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` In Akanuma’s seventh embodiment, drive coil assemblies 70 comprising 3
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`coils (coil 61 and two tracking coils 62) are each mounted to opposite side surfaces
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`of the objective lens supporting member 14. Ex. 1002 at Figs. 19A-20, 13:46-47.
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`“[T]he tracking coils 62 and 63 are not overlapped with the focusing coil 61.” Id.
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`at 14:57-58. Moreover, Akanuma discloses that, “since the tracking coils 62 and
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`63 are not overlapped with the focusing coil 61, the thickness of the drive coil
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`assembly 70 is small and an area adjacent to the drive magnet 60 in which area a
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`magnetic flux density is large can be effectively used.” Id. at 14:57-61.
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`13
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`U.S. Patent No. 6,785,065
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`Contrary to the assertions of TSST-K, one of ordinary skill in the art would
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`have found it obvious to modify the focusing coils 27 and tracking coils 28 of
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`Akanuma such that both are in direct contact with the opposite side surfaces of the
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`objective lens supporting member 14 (or to replace the focusing coils 27 and
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`tracking coils 28 of the drive coil assemblies 21 and the magnet 26 of the first
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`embodiment of Akanuma with the focusing coils 61 and tracking coils 62 and 63
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`14
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`of the drive coil assemblies 70 and the magnet 60, respectively, of the seventh
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`embodiment of Akanuma). The motivation would have been, for example, for the
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`drive coil assemblies 21 to have a small thickness and to effectively use an area
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`adjacent to the drive magnet 26 in which the magnetic flux density is large. See
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`Ex. 1002 at 14:57-61.
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`This was confirmed by TSST-K’s expert at his deposition. When presented
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`with Figs. 19A-20 and asked whether Akanuma includes a teaching or suggestion
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`of either arranging different magnets with various polarizations or arranging coils
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`without being restricted to the boundary line “a” and “b,” TSST-K’s expert agreed
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`that Akanuma “shows a configuration that deals with both of [the] issues.” Ex.
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`1012 at 128:6-15. See also id. at 120:20-121:7. Thus, TSST-K’s own expert
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`acknowledges its arguments about Akanuma are incorrect.
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`4.
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`Even if claim 3 were interpreted as driving an actuator in focus and tilt
`directions simultaneously, both Akanuma and Wakabayashi disclose
`driving an actuator in focus and tilt directions simultaneously.
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`TSST-K argues that the cited references do not disclose and would not have
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`suggested that, “in order to drive the actuator in the focus and tilt directions, a first
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`input signal is applied to a first set and a second input signal is applied to a second
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`set,” as recited in claim 3. POR at pp. 23-38. TSST-K’s arguments are based on
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`their improper construction of claim 3 as requiring driving of the actuator in the
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`focus and tilt directions simultaneously. See, e.g., id. at pp. 23-26. It is
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`15
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`indisputable that Akanuma and Wakabayashi control focus and tilt. However,
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
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`even if claim 3 were interpreted as driving an actuator in focus and tilt directions
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`simultaneously, Akanuma and Wakabayashi also disclose driving an actuator in
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`focus and tilt directions simultaneously. Ex. 1002 at 7:42-52; Ex. 1007 at Abstract,
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`Fig. 2, 6:26-30, 6:38-7:33, 8:52-54; Ex. 1011 at ¶¶ 94-97, 127-132.
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`Akanuma discloses driving the objective lens supporting member 14 in the
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`focus and tilt directions simultaneously by separately providing currents to each of
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`the focusing coils 27. Ex. 1002 at 7:42-52 (disclosing “providing a current to the
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`focusing coils 27” to generate a drive force and move “the objective lens
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`supporting member 14 … in the focusing direction” and “[a]dditionally” separately
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`providing currents to each of the focusing coils 27 to tilt the objective lens 13
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`(emphasis added)). See also Mansuripur Decl. (Ex. 1011) at ¶¶ 94-97, 127.
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`Wakabayashi discloses applying (i) the sum of a focus error signal and a tilt
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`error signal to a first set of focusing coils (i.e., focusing coils 7a and 7c) and (ii) the
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`difference between the focus and tilt error signals to a second set of focusing coils
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`(i.e., focusing coils 7b and 7d). Ex. 1007 at Abstract (“stable focusing control,
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`tracking control and tilt correction control are realized in an objective lens driver
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`capable of correcting a tilt), Fig. 2, 6:26-30, 6:38-7:33, 8:52-54 (“applying
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`superposed focus error signal and tilt error signal to the focusing coils). See also
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`Ex. 1011 at ¶¶ 128-129.
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`U.S. Patent No. 6,785,065
`Petitioner’s Reply to Patent Owner’s Response
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`With respect to Wakabayashi, TSST-K asserted that “Wakabayashi merely
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`teaches that tangential tilt5 can be controlled using a first input signal and a second
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`input signal” and that “Wakabayashi is not configured to control movement in both
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`the focus direction and the tilt direction, simultaneously, when applying a first
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`5 Wakabayashi discloses “[t]ilt drive, i.e., rotation drive around the tangent
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`direction K.” Ex. 1007 at 7:21-22. TSST-K (and TSST-K’s expert) refer
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`mistakenly to this “rotation … around the tangent direction K” as being “tangential
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`tilt” when it is actually radial tilt. As shown in Fig. 1 of Wakabayashi, the tangent
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`direction K is “the tangent direction perpendicular to the focusing direction F and
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`the tracking direction T.” Ex. 1007 at 5:29-34. Although the tangent direction K
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`is not shown in Fig. 3 of the ’065 patent, Fig. 3 of the ’065 shows the radial tilt
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`direction Tir as rotation around the direction perpendicular to the focusing
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`direction F and the tracking direction T. See Ex. 1012 at 44:4-17 (TSST-K’s
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`expert acknowledging that radial tilt is “rotating about an axis that’s perpendicular
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`to the directions shown by F and T”), 61:5-7. Thus, the radial tilt direction Tir of
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`the ’065 patent, like the tilt of the Wakabayashi, is rotation around the tangent
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`direction. In contrast, in the ’065 patent, as shown in Fig. 3, the tangential tilt
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`direction Tit is rotation around the tracking direction T.
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`17
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`input and a second input signal to respective coils sets.” POR at p. 26. TSST-K in
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`U.S. Patent No. 6,785,065
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`incorrect.
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`First, TSST-K asserted that Wakabayashi does not control movement in
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`focusing direction F and instead only controls movement in the tilt and tracking
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`directions. POR at p. 26. Here, TSST-K (and TSST-K’s expert) have
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`misunderstood completely the disclosure of Wakabayashi. TSST-K’s assertion
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`that Wakabayashi does not control movement in the focusing direction is in direct
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`conflict with numerous statements in the disclosure in Wakabayashi, which
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`include, for example:
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`(i)
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`“stable focusing control, tracking control and tilt correction control
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`are realized in an objective lens driver capable of correcting a tilt,”
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`Ex. 1007 at Abstract (emphasis added);
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`(ii)
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`“[i]n order to correct focusing error due to vertical motion of a disk-
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`type recording medium … , an objective lens driver drives the
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`objective lens in … the direction perpendicular to the disk (hereinafter
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`referred to as ‘focusing direction’),” id. at 1:10-17;
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`(iii) “a plurality of driving coils for moving the objective lens in the
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`focusing direction and tilting the objective lens to the focusing
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`direction by driving the holder in response to voltages applied
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`thereto,” id. at 1:64-2:1;
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`Petitioner’s Reply to Patent Owner’s Response
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`(iv) “focusing coils 7a to 7d,” id. at 5:45;
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`(v)
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`“the moveable member 20 is supported moveably in the focusing
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`direction F and the tracking direction T and rotatably in the rotative
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`direction around the tangent direction K,” id. at 6:26-30;
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`(vi) “a focus error signal (focus driving signal),” id. at 6:46;
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`(vii) “driving the objective lens in the fo