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 No. 6,785,065
`
`______________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial & Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
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`WEST\265554753.1
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`
`
`______________
`
`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 No. 6,785,065
`
`______________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial & Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
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`WEST\265554753.1
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`
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`Table of Contents
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`Page
`
`I.
`
`II.
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`INTRODUCTION .......................................................................................... 1
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`BACKGROUND ............................................................................................ 2
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`A. Overview of the ’065 Patent ................................................................. 2
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`III. A PERSON OF ORDINARY SKILL IN THE ART ..................................... 5
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`IV. CLAIM CONSTRUCTION ........................................................................... 6
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`A.
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`Construction of “radial, track, tilt and focusing directions” of
`claim 1 .................................................................................................. 7
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`V.
`
`THE PETITION HAS NOT ESTABLISHED A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE
`RENDERED OBVIOUS ................................................................................ 9
`
`A.
`
`B.
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`The Board should reject Petitioner’s obviousness challenge
`based on Akanuma alone or in combination with one or more of
`the AAPA and Ikegame (Challenge #1) ............................................. 10
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`The Board should deny Petitioner’s obviousness challenge
`based on Akanuma alone or in combination with Wakabayashi.
`(Challenge #2) .................................................................................... 22
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`VI. CONCLUSION ............................................................................................. 28
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`1
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`CASES
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`Table of Authorities
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`Page(s)
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`CBT Flint Partners, LLC v. Return Path, Inc.,
`654 F.3d 1353, 1358 (Fed. Cir. 2011) .................................................................. 7
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255, 1259-60 (Fed. Cir. 2010) ......................................................... 6, 7
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (U.S. 2007) ........................................................................... 14
`
`Novo Indus., L.P. v. Micro Molds Corp.,
`350 F.3d 1348, 1354 (Fed. Cir. 2003) .................................................................. 7
`
`United States v. Adams,
`383 U.S. 39, 51-52 (1966) .................................................................................. 22
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`OTHER AUTHORITIES
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`35 C.F.R. § 314 ................................................................................................ 1, 2, 11
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`35 U.S.C. § 313 ...................................................................................................... 1, 9
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`37 C.F.R. § 42 .................................................................................................... 1, 2, 6
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
`
`
`I.
`
`INTRODUCTION
`
`Toshiba Samsung Storage Technology Korea Corporation (“TSST” or
`
`“Patent Owner”) hereby submits this Preliminary Response to LG Electronics, Inc.
`
`and LG Electronics U.S.A., Inc. (“LG” or “Petitioner”)’s Petition for inter partes
`
`review of U.S. Patent No. 6,785,065 (the “’065 patent”) in accordance with 35
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`U.S.C. § 313 and 37 C.F.R. § 42.107.
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`On July 30, 2015, Petitioner filed a Petition, requesting inter partes review
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`of claims 1-9 of the ’065 patent based on two grounds of invalidity. Paper No. 1.
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`Petitioner filed a 179-page Declaration by Dr. Masud Mansuripur to support its
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`allegations. Ex. 1011. The Petition asserts the two challenges based upon various
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`combination of references. Paper No. 1 at 7. Each challenge fails to establish that
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`the claimed invention would have been obvious to one skilled in the art at the time
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`of the invention.
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`Petitioner bears the burden of proof to establish that it is entitled to
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`institution as sought in its petition. See 37 C.F.R. §42.20(c). The Board proceeds
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`on a ground-by-ground basis, and cannot institute trial for a ground of
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`unpatentability unless the petition supporting the ground demonstrates a reasonable
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`likelihood of prevailing. 37 C.F.R. § 42.108(c); 35 C.F.R. § 314(a).
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`For at least the reasons set forth below, no claim of the ’065 patent should be
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`found obvious over the prior arts. There can be no “reasonable likelihood that
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`Petitioner would prevail with respect to at least one of the claims challenged,” 35
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`U.S.C. 314(b), and Petitioner’s request for IPR should be denied. As such, trial
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`should not be instituted in this proceeding as the Petition has failed to demonstrate
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`a reasonable likelihood that any of the challenged claims of the ‘065 patent are
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`invalid. See 37 C.F.R. § 42.108(c).
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`
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`II. BACKGROUND
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`A. Overview of the ’065 Patent
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`In one aspect, the ’065 Patent is generally directed to an apparatus and a
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`method of driving an optical pickup actuator, and more particularly, to an
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`apparatus and a method of driving an optical pickup actuator in which a focus coil,
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`a track coil, and a tilt coil which drive an optical pickup in a focus direction, a
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`track direction, and a tilt direction, respectively, are provided at both sides of a
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`bobbin to secure the remaining sides of the bobbin, and the focus coil is also used
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`as the tilt coil. Ex. 1001, Abstract.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`As can be appreciated from FIG. 3 and 4 of the ’065 patent, the invention is
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`directed to an optical pickup actuator including “a base 10, a holder 12 provided at
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`one side of the base 10, a bobbin 15 on which an objective lens 14 is mounted, and
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`a magnetic driving portion which drives the bobbin 14 in a focus direction, a tilt
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`direction, and a track direction.” Ex. 1001, 5:9-15.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`With reference to FIG. 4 of the ’065 patent, which is reproduced here, an
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`exemplary “magnetic driving portion includes at least one focus and tilt coil and at
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`least one track coil provided at each of opposite side surfaces 15a of the bobbin 15,
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`and a magnet 22 installed to face each combination of the focus and tilt coil and
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`the track coil provided on each of the opposite side surfaces.” Ex. 1001, 5:16-21.
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`Here, “at least one focus and tilt coil which drives the bobbin in focus and tilt
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`directions and at least one track coil which drives the bobbin in a track direction
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`arranged on each of opposite side surfaces of the bobbin”. Ex. 1001, 8:54-58.
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`(emphasis added) The ‘065 patent also discloses “outer yokes 25 and inner yokes
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`27 may be further provided to guide lines of a magnetic force generated by the
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`magnets 22 in a desired direction.” Ex. 1001, 6:33-36.
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`In another aspect, the ’065 patent is directed to a method of driving an
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`optical pickup actuator having the structure above. The ’065 patent further
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`Preliminary Response to LG’s Petition for IPR of
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`provides “a method of independently applying a signal to each of the first through
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`fourth focus and tilt coils FC1, FC2, FC3, and FC4. That is, where the focus signal
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`is identically applied to the first through fourth focus and tilt coils FC1, FC2, FC3
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`and FC4, the bobbin 15 move up and down and is driven in the focus direction F.”
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`Ex. 1001, 7:46-52. “In contrast, the driving in the tilt radial direction Tir and the
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`driving in the tilt tangential direction Tit can be controlled by selectively inputting
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`an input signal to each of the first through fourth focus and tilt coils FC1, FC2,
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`FC3, and FC4.” Ex. 1001, 7:54-57.
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`
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`III. A PERSON OF ORDINARY SKILL IN THE ART
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`Petitioner proposed “a person of ordinary skill in the relevant field would
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`have had familiarity with optical data storage and retrieval devices, including
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`optical recording and/or reproducing apparatuses having optical pickup actuators,
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`and at least a Bachelor of Science degree in electrical engineering, computer
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`engineering, and/or physics and 2-5 years of experience working in the field of
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`optical data storage and retrieval, or a comparable amount of combined education
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`and equivalent industry experience in optical data storage and retrieval.” Paper
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`No.1 ,14-15.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`For purposes of this paper, Patent Owner applies Petitioner’s proposed
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`standard without prejudice, and reserves the right to present evidence and
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`arguments in this proceeding or any other proceeding as to Petitioner’s above
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`definition or an alternative definition as to the level of ordinary skill in the art.
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`
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`IV. CLAIM CONSTRUCTION
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`A claim should be given its broadest reasonable construction in light of the
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`specification during an inter partes review. See 37 C.F.R. § 42.100(b). The
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`broadest reasonable interpretation of the claims must also be consistent with the
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`interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d
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`1353, 1359 (Fed. Cir. 1999). The focus of the inquiry regarding the broadest
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`reasonable meaning of a claim should be what would be reasonable from the
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`perspective of one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d
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`1255, 1260 (Fed. Cir. 2010).
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`For purposes of this Preliminary Response only, Patent Owner does not
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`object to the construction of “bobbin,” but Patent Owner reserves the right to
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`address the construction of that term in more detail at a later point at a later point in
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`the proceedings if necessary.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`A. Construction of “radial, track, tilt and focusing directions” of
`claim 1
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`Patent Owner respectfully submits that the phrase “radial, track, tilt and
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`focusing directions” should be construed to mean: “radial track, tilt, and focusing
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`directions.” This construction would fix an obvious typographical error on the face
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`of the ’065 patent. Ex. 1001, 8:50-51. This construction is consistent with the
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`teaching of the specification. See In re Suitco Surface, Inc., 603 F.3d 1255, 1259-
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`60 (Fed. Cir. 2010) (enjoining the Board from ignoring the teachings of the
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`specification).
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`The Federal Circuit has noted that “it is well-settled law that, in a patent
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`infringement suit, a district court may correct an obvious error in a patent claim.”
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`CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir.
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`2011). A district court can do so only if (1) the correction is not subject to
`
`reasonable debate based on consideration of the claim language and the
`
`specification and (2) the prosecution history does not suggest a different
`
`interpretation of the claims. Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d
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`1348, 1354 (Fed. Cir. 2003).
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`Here, Patent Owner's proposed correction is not subject to reasonable debate
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`based on consideration of the claim language and the specification and the
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`prosecution history does not suggest a different interpretation of the claims.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`First, the construction is consistent with the claim language and the
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`specification. The specification refers to the optical pickup actuator being movable
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`in three directions: the focus direction, the track direction, and the tilt direction.
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`See Ex. 1001, Abstract; 3:9-17. The specification further indicates that two tilt
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`directions are possible: the tilt radial direction or the tilt tangential direction. Id.,
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`1:50-52. The patent refers to a "radial direction" only one time and does so in a
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`manner that is synonymous with "track direction." See Ex. 1001, 1:26-31. (“An
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`optical pickup performs recording and/or reproduction of information with respect
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`to a recording medium, such as an optical disk, placed on a turntable in a non-
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`contact manner while moving in a radial direction of the optical disk.”). Thus, the
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`specification does not refer to a "radial direction" that is distinct from a "track
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`direction," and the most logical understanding of "radial, track…direction"
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`therefore is that such language means "radial track…direction."
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`Second, the prosecution history does not suggest a different interpretation of
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`the claims. The ’065 was granted at the first action allowance. Therefore, the
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`prosecution history does not suggest inconsistent meaning. It is therefore clear that
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`it is typographical error in drafting.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`In conclusion, Patent Owner respectfully submits that the appropriate
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`meaning of “radial, track, tilt and focusing directions” is: “radial track, tilt, and
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`focusing directions.”
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`V. THE PETITION HAS NOT ESTABLISHED A REASONABLE
`LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE
`RENDERED OBVIOUS
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`“The Director may not authorize an inter partes review to be instituted
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`unless the Director determines that the information presented in the petition filed
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`under section 311 and any response filed under section 313 shows that there is a
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`reasonable likelihood that Petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. §314(a).
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`In Petitioner’s two asserted challenges, Petitioner alleges that each of claims
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`1-9 of the ’065 patent is obvious over at least one of (1) Akanuma alone or in
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`combination with one or more of the Applicants’ Admitted Prior Art (“AAPA”)
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`and Ikegame, and (2) Akanuma alone or in combination with Wakabayashi.
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`Petitioner has not met the burden for initiation of inter partes review.
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`Accordingly, the Board should deny the Petition as to the obviousness of claims 1-
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`2 and 5-9 in view of Akanuma alone or in combination with one or more of the
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`AAPA and Ikegame and claim 3 and 4 by Akanuma alone or in combination with
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`Wakabayashi.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`A. The Board should reject Petitioner’s obviousness challenge based
`on Akanuma alone or in combination with one or more of the
`AAPA and Ikegame (Challenge #1)
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`The Petition alleges that claims 1-2 and 5-9 are obvious over Akanuma
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`alone or in combination with one or more of the AAPA and Ikegame. Petitioner,
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`however, has failed to demonstrate a reasonable likelihood that the cited references
`
`render obvious any of these challenged claims.
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`1.
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`Akanuma does not disclose “at least one focus and tilt coil
`which drives the bobbin in focus and tilt directions and at
`least one track coil which drives the bobbin in a track
`direction arranged on each of opposite side surfaces of the
`bobbin”
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`Akanuma does not teach the spatial relationship between the bobbin, the
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`focus and tilt coil, and the track coil that the ’065 patent discloses. Rather,
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`Akanuma teaches those skilled in the art away from the spatial relationship
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`disclosed by the ‘065 patent.
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`Petitioner asserts that independent claim 1 is rendered obvious by Akanuma
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`in view of Ikegame. For the reasons set forth below, claim 1 of the ’065 patent
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`would not have been obvious under 35 U.S.C. § 103(a) over Akanuma alone or
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`with one or more of the AAPA and Ikegame.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`As can be appreciated from FIG. 3 of the ’065 patent, which is reproduced
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`here, claim 1 of the ’065 patent discloses “at least one focus and tilt coil” and “at
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`least one track coil” are arranged “on each of opposite side surfaces of the bobbin.”
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`Ex. 1001, 8:54-58. In contrast, Akanuma does not disclose each and every feature
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`of claims 1 of the ‘065 patent as depicted in the embodiments relied upon by
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`Petitioner.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`Petitioner asserts that Akanuma discloses in FIG. 6 and 8 of Akanuma
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`reproduced above, that “the objective lens driving apparatus includes focusing
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`coils 27 […] and tracking coils 28 […] arranged on each of opposite side surfaces
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`20 of the objective lens supporting member 14.” Ex. 1001, 8:54-58. However, the
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`embodiments in Akanuma relied upon by Petitioner do not disclose that both
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`focusing coils 27 and tracking coils 28 may be arranged on each of opposite side
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`surface 20 simultaneously as required by ’065 claim.
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`According to the embodiments of Akanuma cited by Petitioner as with FIG.
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`6 and 8 above, focusing coils 27 are always over tracking coils 28. Ex. 1002, Figs.
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`6, 8. The embodiments in Akanuma relied upon by the Petition do not show that
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`both focusing coil and tracking coil are arranged on the surface of the bobbin. In
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`fact, the focusing coil and tracking coil are in a layered structure in all
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`embodiments in Akanuma relied upon by Petitioner. Id. Consequently, the
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`embodiments in Akanuma relied upon by Petitioner teach away from what claim
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`40 of the ‘065 patent discloses, i.e., both coils are arranged on the surface side-by-
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`side. It could not have been obvious for those skilled in the art that the
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`embodiments relied upon by Petitioner would teach both that the focusing coil and
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`the tracking coil may be arranged on the surface simultaneously.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`Petitioner merely alleged corresponding disclosures between the elements
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`in ’065 patent and Akanuma without showing the spatial relationship of “focus and
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`tilt coil” and “track coil” required by the ‘065 patent. Paper No. 1, 36-37. In other
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`words, Petitioner failed to demonstrate that the configuration of “focusing coils
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`27” and “tracking coils 28” of both embodiments cited by Petitioner would have
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`been obvious that both are arranged on the same surface level.
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`Petitioner states: “the focusing coils 27 […] of Akanuma correspond to the
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`recited at least one focus and tile coil,” “the tracking coils 28 […] of Akanuma
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`correspond to the recited at least one track,” and “the side walls 20 of the objective
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`lens supporting member 14 of Akanuma correspond to the recited opposite side
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`surfaces of the bobbin.” Paper No. 1, 36-37. Next, with no explanation, Petitioner
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`concludes: “Akanuma discloses that the drive coil assembly 21 including the
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`focusing coils 27 and tracking coils 28 is arranged on each of the side walls 20.”
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`However, the above assertions are not sufficient to warrant that both focusing coils
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`27 and tracking coil 28 are arranged on the surface. Id.
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`Petitioner makes no showing why mere correspondence of elements
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`warrants any obviousness between the ’065 patent and the embodiments of
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`Akanuma cited by Petitioner. The mere fact that a component having two sub-
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`components therein was arranged on the surface neither provides logical
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`justification nor makes it obvious that both of the two sub-components do not
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`necessarily teach those skilled in the art to arrange them both on the surface.
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`Petitioner has failed to demonstrate how the vaguely-referenced disclosures of
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`Akanuma teach “at least one focus and tilt coil which drives the bobbin in focus
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`and tilt directions and at least one track coil which drives the bobbin in a track
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`direction arranged on each of opposite side surfaces of the bobbin.”
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`Challenge #1 by Petitioner should therefore be denied at least because the
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`Petition has failed to provide any “articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (U.S. 2007). The Petition must be denied as
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`Petitioner proffered motivations fail to provide any rational reason why a person of
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`ordinary skill in the art would have practiced the side-by-side arrangement when
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`the prior art only teaches a layered structure.
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`2.
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`“A drive coil assembly” and the polarization disclosure in
`Akanuma teach away from both types of coils are arranged
`as required by the ’065 patent.
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`In addition to Petitioner’s failure to establish that Akanuma discloses the two
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`coils are on the same surface level of the bobbin, Akanuma actually teaches away
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`the disclosure for reasons below.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`First, the ’065 patent requires that “at least one focus and tilt coil which
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`drives the bobbin in focus and tilt directions and at least one track coil which
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`drives the bobbin in a track direction arranged on each of opposite side surfaces of
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`the bobbin.” It discloses “a drive coil assembly,” which is mounted on “an
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`objective lens supporting member” and that the drive coil assembly includes the
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`focusing coil and the tracking coil. Ex. 1002, 2:65-67. The ’065 patent further
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`discloses that the drive coil assembly has a flat shape. Id.
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`An assembly ordinarily refers to “the process of putting together the parts of
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`a machine or structure, or the thing produced by this process.” CAMBRIDGE
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`DICTIONARY ONLINE, Definition of Assembly in American English,
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`http://dictionary.cambridge.org/us/dictionary/english/assembly (last visited Oct. 31,
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`2015). The embodiments cited in Akanuma by Petitioner in effect stacked the
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`focusing coil and the tacking coil together into one flat shape. In contrast, the ’065
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`patent arranges both “at least one focus and tilt coil” and “at least on track coil” on
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`the surface at a distance. The two types of coils are not arranged into one
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`“assembly” in the ’065 patent.
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`Therefore, it could not have been obvious for those skilled in the art that
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`Akanuma’s description of the member, also referred to as an “assembly,” would
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`teach that it may be separated into several pieces spread across a surface as in
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`the ’065 patent. In other words, it could not have been obvious that an assembly
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`consisting of two sets of coils having a flat shape may teach both focusing coils
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`and tracking coils may be separated by a distance from each other and also be
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`attached directly to the surface.
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`Second, other embodiments of Akanuma that utilize magnets teach away
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`from placing the tracking coils and focusing coils directly on the surface side-by-
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`side. The embodiment of Akanuma relied upon by Petitioner only teach the
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`formation of a quadrupole magnet and arrangement of several “the third tracking
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`coils 52” according to the single quadrupole magnet. Ex. 1002, 10:9-11:15. To be
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`more precise, it discloses arranging the tracking coils side-by-side along “the
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`magnetization boundary line b” in FIG. 8, reproduced below, while the focusing
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`coils are still stacked above the tracking coils. Id.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`The embodiments of Akanuma relied upon by Petitioner discourage those
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`skilled in the art from arranging different types of coils, i.e., tracking coils and
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`focusing coils, side-by-side on the same surface level because, according to
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`Akanuma, each type of coils must extend over the proper magnetization boundary
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`lines, i.e., boundary line a or b in FIG. 6, which are perpendicular to each other.
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`Ex. 1002, 7:15-40. The embodiments of Akanuma relied upon by Petitioner leave
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`no option for those skilled in the art but to form a layered structure in which all
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`tracking coils are directly positioned on the surface of the bobbin extending along
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`the boundary line b and all focusing coils are formed over the tracking coils along
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`the boundary line a. Therefore, Akanuma not only fails to disclose each and every
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`feature of the ‘065 patent but also discourages from arranging “at least one focus
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`and tilt coil which drives the bobbin in focus and tilt directions and at least one
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`track coil which drives the bobbin in a track direction arranged” to be placed “on
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`each of opposite side surfaces of the bobbin” as required by the ’065 patent.
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`Lastly, the purpose of having a single flat magnet having four magnetization
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`areas in Akanuma also teaches away those skilled in the art to arrange both
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`focusing coils and tracking coils on the same surface level. Akanuma discloses: “a
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`more specific object … is to provide an objective lens driving apparatus in which a
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`focusing coil and a tracking coil can be arranged in a parallel relationship with a
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`thin, flat shape so that both the focusing coil and the tracking coil can be moved by
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`a single flat magnet.” Ex. 1002, 2:35-40. Akanuma also discloses: “the drive
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`magnet having a surface divided into four magnetization areas and the drive coil
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`assembly having a flat shape.” Id., 3:5-7. As a result, “both the focusing coil and
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`the tracking coil can be positioned in the vicinity of the drive magnet and parallel
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`to the flat surface so that both the focusing coil and the tracking coil generate a
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`drive force by being subjected to the magnetic fields in the vicinity of the drive
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`magnet.” Id., 3:9-14. It is evident that the purpose of the invention in Akanuma
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`was to have “a single flat magnet” “having a surface divided into four
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`magnetization areas” that was capable of moving “both the focusing coil and the
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`tracking coil.” Therefore, it could not have been obvious for those skilled in the art
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`to arrange both focusing coils and the tracking coils on the surface level without
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`any further disclosure of either arranging different magnets with various
`
`polarizations or arranging coils without being restricted to the boundary line a and
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`b. Challenge #1 by Petitioner should therefore be denied.
`
`3.
`
`Petitioner does not allege or advance persuasive evidence
`that Akanuma inherently discloses a base and there is no
`apparent reason to combine Akanuma and Ikegame.
`
`For the reasons set forth below, claim 8 of the ’065 patent could not have
`
`been obvious under 35 U.S.C. § 103(a) over Akanuma alone or with one or more
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`of the AAPA and Ikegame. Akanuma does not expressly or inherently disclose
`
`each and every feature disclosed by claim 8 of the ’065 patent. Though Petitioner
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`appears to recognize that Akanuma does not explicitly disclose a base, Petitioner
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`does not expressly rely in the doctrine of inherency to fill that gap. Inherency is a
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`high bar. Petitioner should have advanced persuasive objective evidence.
`
`
`
`
`
`As can be appreciated from FIG. 5A of Akanuma reproduced above,
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`Akanuma does not disclose “a base of the optical pickup actuator so as to be
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`moved by the support member.” Ex. 1002, Fig. 5A. It would not have been
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`obvious to modify Akanuma to include a “base of the optical pickup actuator so as
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`to be moved by the support member” that receives all of the yoke, the drive magnet,
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`the additional yoke, the additional drive magnet, and the stem when Akanuma
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`lacks any disclosure about the spatial relationship between the “bobbin,” “holder,”
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`“support member,” “outer yokes,” and “inner yokes.”
`
`Furthermore, the embodiment in FIG. 5A of Akanuma does not disclose the
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`“inner yokes” in the ’065 patent and the “openings” disclosed in Ikegame. Ex.
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`1002, Fig. 5A. The objective of Akanuma was to eliminate “a problem in that a
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`thickness of the entire apparatus is increased due to the arrangement of the prism.”
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`Ex. 1002, 1:63-65. The purported solution of Akanuma to this problem was by
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`relocating an inner space and by placing the prism within the inner space. The
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`inner space was created by eliminating inner yokes and by changing the objective
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`lens supporting member into a “box-like shape” to receive the prism therein, which
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`teaches away from having inner yokes. Ex. 1002, 6:55-57.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
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`On the other hand, while Ikegame appears to disclose a base plate, the
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`apparatus disclosed in Ikegame would not have been predictable to combine with
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`Akanuma. In FIG. 4 reproduced above, Ikegame discloses that “on the base plate 8,
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`there are provided a couple of outer yokes 9a, 9a and a couple of inner yokes 9b,
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`9b extending in parallel with said concave portion 8a in the X direction. The inner
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`yokes 9b, 9b are positioned in openings 3 and 3 arranged in the lens holder 2.” Ex.
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`1005, Fig. 4. Ikegame discloses inner yoke 9b and opening 3 where the yoke 9b is
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`arranged at least because such disclosure would help “a magnetic flux generated by
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`the magnet 10 goes through one side 5a of the tracking coil 5, further goes to the
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`inner yoke 9b via the focusing coil 4.” Ex. 1005, 5:14-17.
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
`
`
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` There would have been no motivation to combine the “base plate” having “a
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`couple of inner yokes extending in parallel” that are “positioned in openings
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`arranged in the lens holder” of Ikegame with the embodiment in FIG. 5A of
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`Akanuma at the time of the invention because the combination is not physically
`
`predictable. It could not have been obvious to combine “the base plate 8” of
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`Ikegame with the first embodiment of the Akanuma because Akanuma is silent in
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`disclosing whether an inner yoke was unnecessary to guide a path of magnetism
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`generated by the drive magnet 26. Therefore, Ikegame actually discourages and
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`teaches away from combining “the base plate 8” and the first embodiment in FIG.
`
`5A of Akanuma because the result of combining the two could not have been
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`predictable to one of ordinary skill in the art. United States v. Adams, 383 U.S. 39,
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`51-52 (1966). Thus, this challenge should therefore be denied.
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`B.
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`The Board should deny Petitioner’s obviousness challenge based
`on Akanuma alone or in combination with Wakabayashi.
`(Challenge #2)
`
`1.
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`Akanuma or Wakabayashi does not explicitly disclose
`“inputting the input signal independently to each focus and tilt
`coil.”
`
`With regard to purported motivation to combine the references, Petitioner
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`explicitly acknowledges that Akanuma does not disclose “inputting the input signal
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`independently to each focus and tilt coil” as recited in the ’065 patent by stating in
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`Preliminary Response to LG’s Petition for IPR of
`Patent No. 6,785,065
`Case IPR2015-01644
`
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`its Petition that “Akanuma does not specifically disclose whether the input signal
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`should be inputted to each of sets of coils” but asserts “[i]t would have been
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`obvious to one of ordinary skill in the art at the time of the invention to apply a
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`first input signal to a first set of the focusing coils 27 of Akanuma and to apply a
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`second input signal to a second set of the focusing coils 27 of Akanuma, with the
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`focusing coils 27 of Akanuma divided into the first and second sets, in order to
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`drive the opt
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