trials@uspto.gov
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`571-272-7822
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`IPR2015-01642, Paper No. 36
`IPR2015-01644, Paper No, 38
`IPR2015-01653, Paper No. 42
`IPR2015-01659, Paper No. 40
`November 10, 2016
`
`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 IPR2015-01642, Patent 6,721,110 B2
`Case IPR2015-01644, Patent 6,785,065 B1
`Case IPR2015-01653, Patent RE43,106 E
`Case IPR2015-01659, Patent 7,367,037 B2
`____________
`
`Held: October 6, 2016
`
`____________
`
`BEFORE: KALYAN K. DESHPANDE, MICHAEL R.
`ZECHER, and TREVOR M. JEFFERSON, Administrative Patent
`Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday,
`October 6, 2016, commencing at 9:00 a.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
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`IPR2015-01642, Paper No. 36
`IPR2015-01644, Paper No, 38
`IPR2015-01653, Paper No. 42
`IPR2015-01659, Paper No. 40
`November 10, 2016
`
`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 IPR2015-01642, Patent 6,721,110 B2
`Case IPR2015-01644, Patent 6,785,065 B1
`Case IPR2015-01653, Patent RE43,106 E
`Case IPR2015-01659, Patent 7,367,037 B2
`____________
`
`Held: October 6, 2016
`
`____________
`
`BEFORE: KALYAN K. DESHPANDE, MICHAEL R.
`ZECHER, and TREVOR M. JEFFERSON, Administrative Patent
`Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday,
`October 6, 2016, commencing at 9:00 a.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`
`BRIAN A. TOLLEFSON, ESQUIRE
`STEVEN LIEBERMAN, ESQUIRE
`MICHAEL V. BATTAGLIA, ESQUIRE
`Rothwell Figg
`607 14th Street, N.W.
`Suite 800
`Washington, D.C. 20005
`
`
`
`
`
`
`
`
`JOSEPH A. RHOA, ESQUIRE
`JONATHAN A. ROBERTS, ESQUIRE
`Nixon & Vanderhye P.C.
`901 N. Glebe Road
`11th Floor
`Arlington, Virginia 22203
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE ZECHER: Good morning. This is an oral
`argument for four related cases. This is the morning session.
`The cases are IPR2015-01642, 01644, 01653 and
`01659. In the morning session we're going to hear oral arguments
`for the 1642 case and the 1644 case.
`As we outlined in our trial order for the oral argument,
`Petitioner is going to present their case first. They can reserve
`some rebuttal time, at which point Patent Owner will get up and
`give their case-in-chief, and then Petitioner can use their
`remaining time. And we will do that for the first case and then
`the same pattern or same -- we'll continue for the second case.
`So before we get started, we'd like counsel to introduce
`themselves for the record so it's clear. So let's start with
`Petitioner, please.
`MR. TOLLEFSON: Good morning, Your Honors.
`Brian Tollefson from Rothwell, Figg, Ernst & Manbeck in
`Washington, D.C. We represent Petitioners LG Electronics, Inc.
`and LG Electronics U.S.A., Inc. With me is my colleague, Mike
`Battaglia, who is backup counsel.
`JUDGE ZECHER: Thank you. Patent Owner?
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
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`MR. RHOA: Joe Rhoa from Nixon & Vanderhye on
`behalf of Patent Owner TSSTK. With me, Jonathan Roberts,
`Mickey Gill and Soonwook Kwon from -- is a representative of
`TSSTK.
`JUDGE ZECHER: Okay. Thank you very much.
`All right. Petitioner, we'll turn the floor over to you and
`we'll start with the 1642 case.
`And how much time for rebuttal would you like to
`reserve?
`MR. TOLLEFSON: Your Honor, I'd like to reserve 10
`minutes for rebuttal.
`And before I start, I have three extra hard copies of the
`slides. If you'd like, I can bring them up.
`JUDGE ZECHER: You can approach.
`MR. TOLLEFSON: Good morning. May it please the
`
`Board.
`
`Slide 3, please.
`The subject matter in this IPR is U.S. Patent number
`6,721,110, which is directed to an optical pickup actuator and
`driving method.
`Here we see on slide 3 are illustrations from the patent
`of the conventional optical pickup actuator. And what we can see
`is the conventional optical pickup actuator has focus coils, tilt
`coils and track coils arranged on all four sides of the bobbin. We
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`can see that the focus coils 110 are sort of on the tops and the
`bottoms here and that the tilt coils and track coils -- excuse me,
`the tilt coils 112 -- excuse me, so the point is, is that in the
`conventional optical pickup actuator the coils are on all four
`sides.
`
`And because they're arranged on all four sides, there's
`very little space for the support wires to come in and connect.
`You can see the support wires on the left side.
`Next slide.
`JUDGE ZECHER: Counsel, just so I can maybe kind
`of direct you to what we want to discuss here in this hearing, I
`think we're familiar with the invention and the prior art here and
`what was well-known and what the invention purports to address
`or solve, so to speak, with respect to the problem in the art.
`So why don't we move on to the claim construction
`issue because that seems to be somewhat case dispositive here. If
`you can start with that.
`MR. TOLLEFSON: That's great. So I have in the slide
`deck -- and I'll jump right to the claim construction. In the slide
`deck we've got a number of colored slides. We can just walk
`through everything, walk through the conventional art and walk
`through everything I just discussed.
`And the main thrust is that I think, as Your Honor just
`pointed out, the Patent Owner doesn't really contest the presence
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`of all the elements in the prior art. Rather, Patent Owner is
`merely contesting the claim construction of the word on.
`Do you want to go to slide 45?
`Okay. So Patent Owner is taking the position that
`arranged on each of the opposite side surfaces of the bobbin in
`Claim 40 actually should be interpreted narrowly to mean over
`and in contact with. And so in the application of the claim, what
`that means is that each of the coils, each of the focus and tilt
`coils, that are on these two opposite sides has to each be touching
`in direct contact with the sides of the bobbin.
`Next slide.
`And so in Akanuma, what Akanuma discloses is that the
`focus and tilt coil is 27 and the track coil is 28 are comprised
`inside of a drive coil assembly 21 and the drive coil assembly 21
`is mounted to two opposite sides of the bobbin. You can see that
`on the top and the bottom of the slide.
`So they're clearly on the sides of the bobbin, that the
`coils are attached to the side of the bobbin. They perform their
`own purpose. The sole purpose of the coils is to move the bobbin
`in the focus direction, the tilt direction and the tracking direction.
`In Akanuma they serve that purpose. They just have to be
`coupled to the side of the bobbin in a manner in which they can
`impart force on the bobbin.
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`
`Now, the thrust in the invention is that the coils are
`moved to the two opposite sides to free up the space on the other
`side. So the purpose of moving them to the two opposite sides
`has nothing to do with Patent Owner's proposed construction.
`JUDGE ZECHER: Let me go at it from a different
`angle. So, you know, I do understand that this dispute centered
`really on what the word on means in the context of these claims
`and the spec. Is there a lexicographic definition for on in the
`spec?
`
`MR. TOLLEFSON: No. There's no specific definition.
`In fact, the word on is used almost interchangeably with the word
`at throughout the whole specification.
`JUDGE ZECHER: So it seems to be that the Patent
`Owner's argument is that on is used consistently throughout the
`spec to mean -- was it in contact and over I believe? Can you
`point to us maybe examples in the spec where it would not mean
`that?
`
`MR. TOLLEFSON: Yeah. You don't have to look any
`further than Claim 40.
`Next slide.
`We don't have to look any further than Claim 40, which
`this is the first example I would like to give. Claim 40 recites a
`bobbin movably arranged on a base and it's uncontested that the
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`bobbin is not in contact with the base. The bobbin couldn't focus
`until properly -- if it was actually sitting on the base and --
`Next slide.
`TSSTK's expert actually agrees with this position. So
`it's uncontested that the bobbin is not touching the base.
`Go back a slide.
`And so that's one example right in the claim itself where
`arranged on is used in one clause. They want it to mean one thing
`in one clause and another thing in another clause.
`Another example is the abstract. In the abstract of the
`patent they use on and at. So in the abstract, the second sentence
`says, at least one focus and at least one track coil arranged at both
`sides of the bobbin to secure the remaining sides of the bobbin.
`I'd like to point out that the claims don't use the word
`contact. The word contact appears only in the specification once
`in the background section and it's actually noncontact that's used.
`So the contact relationship is never described in the patent. They
`don't use the word contact. They don't use the word contact in the
`claim.
`
`Next slide.
`So the specification does not teach that the focus and tilt
`coils and the track coils must be in contact with the opposite
`sides. They use the words on and at interchangeably. I think by
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`my count they use the word at 17 or 18 times when they're talking
`about the positional relationship with the coils with the bobbin.
`They use the word on fewer times than that when
`they're talking about position. And then when they're talking
`about the position, they're never really talking about contact. The
`terms are just sort of interchangeable really.
`If you go to the next slide.
`Here's an example, the Patent Owner also points out that
`the words provided only used with the support members and
`here's just one example of a paragraph in the specification where
`-- and I'm just going to paraphrase here, the coils are provided at
`each of the opposite sides. The coils are provided on each of the
`opposite sides. The coils are provided at the corresponding
`opposite sides. And then in the next couple lines, the coils are
`arranged at the opposite side surfaces.
`Next slide.
`So when I was explaining earlier that the purpose is to
`free up the sides for the wires, you put the coils on two opposite
`sides of the bobbin to free up the other sides for the wires.
`Another purpose is that it makes the manufacturing the bobbin
`simpler because there's less parts and there's two less magnets and
`magnets can sometimes interfere with the spin order.
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`
`So when asked about whether the coils could be in
`indirect contact with the bobbin and whether it would still work,
`TSSTK's expert said, yeah, it would still work.
`Okay. Next slide.
`JUDGE ZECHER: So just so I understand what I
`believe to be your argument regarding this claim term on, I think
`what you're telling us is that on is not used consistently
`throughout the spec, I mean, as Patent Owner asserts over and in
`contact with. And yet if we look at the spec, on is used
`interchangeably with at and at certainly, from what I gather from
`your view, doesn't mean over and in contact with.
`MR. TOLLEFSON: That's right. Not only is it not
`used consistently to mean what Patent Owners want it to mean,
`but it's actually used consistently to mean proximity. The whole
`point of the purported invention of the '110 patent is location,
`location, location. It's just like real estate. These coils have to be
`at two opposite side surfaces and not at the other two side
`surfaces.
`Of course, the coils have to be able to impart force on
`the bobbin so that it can tilt and focus and whatnot. But the other
`side, TSSTK is not contesting that the coils don't do what they're
`supposed to do. All they're arguing is a narrow claim
`construction under Phillips, which was overturned. It was
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`overturned that Phillips should be applied in an IPR this summer
`in In re Cuozzo.
`So they're applying Phillips in an attempt to repackage
`the earlier argument that was presented in their preliminary Patent
`Owner's response and which was soundly rejected by this panel
`and we think they presented no additional evidence that would
`sort of merit this panel changing its opinion on claim
`construction.
`JUDGE ZECHER: What about the dictionary
`definition of on? How do you suggest we handle that?
`MR. TOLLEFSON: Well, we don't have to resort to
`dictionary definitions. The skilled person reading the patent
`application or, excuse me, the patent would readily understand
`that on means proximity in this case. People in regular everyday
`life use the term on pretty loosely.
`For example, I might say that those papers are on the
`table, but really technically under Patent Owner's narrow
`definition, only the very bottom paper is on the table, even though
`the other papers are resting on top of the table. And there's just
`simply no reason to narrow the claims in this context. BRI --
`under BRI we could use the broadest reasonable interpretation.
`Here we have both coils are clearly mounted to the
`bobbin. The only argument is, is the second coil technically
`touching the bobbin? I'd like to point out that TSSTK's expert
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`during his deposition agreed that the purpose is clearly defined as
`locating the coils to free up the space.
`Next slide.
`But I just want to read this slide because I think it's a
`great admission. When asked about the purpose of the coils
`being in contact, the expert answered as follows, question, but
`isn't it -- isn't the important part of the invention where the coils
`are at, not necessarily that the coils are in contact with the side
`surfaces? Answer, I think the inventors thought it was important
`that they be in contact for some reason which is not revealed here.
`JUDGE ZECHER: And this is slide 55, just so when
`you're representing a slide to make sure it's clear.
`MR. TOLLEFSON: So in slide 55 we've got an excerpt
`from the Patent Owner's expert's deposition where he could point
`to nothing in the specification that would support why the
`inventors thought that the contact was an important part of the
`invention.
`JUDGE ZECHER: Okay. I think I understand your
`position. Can you speak to your kind of alternative argument that
`even if we buy the construction that they're proposing that you
`still think that the prior art accounts for that?
`MR. TOLLEFSON: Yeah, absolutely.
`If you could go to slide 63.
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`
`So in the Patent Owner's response, they said that
`Akanuma -- basically that Akanuma fails to teach that there's
`enough space and that also the magnets would have to be
`rearranged and, therefore, the skilled person essentially couldn't
`modify Akanuma to put the coils side by side. They said there's
`not enough space, essentially ignoring another embodiment.
`Now, we didn't rely on this embodiment in our petition.
`We did not anticipate the odd claim construction that was brought
`by the Patent Owner in this trial, but there's another embodiment
`of Akanuma that shows the coils clearly side by side and a clear
`configuration, and this is spot on what the Patent Owner said
`would have to be in the prior art for Akanuma to be able to fulfill
`their claim construction.
`JUDGE ZECHER: Do we even need to look at that
`embodiment? I understood you to argue that even with the
`embodiment you relied on, it may still account for their
`construction?
`MR. TOLLEFSON: Yeah, I mean, absolutely, so that's
`correct. I thought you wanted me to go to this embodiment.
`JUDGE ZECHER: No. I'd like you to stick within the
`confines.
`MR. TOLLEFSON: Yeah. So when we're talking
`about their construction on being over and in contact with, the
`drive coil assemblies themselves are on the bobbin. They're in
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
`
`contact with the bobbin and they're mounted to the bobbin and
`that is the language that's used in Akanuma.
`JUDGE ZECHER: In a stack configuration, correct?
`MR. TOLLEFSON: So it's a stack configuration. So
`they're on the bobbin. So even under their construction, the
`Akanuma embodiments that we relied on also meet the claim
`requirements.
`JUDGE ZECHER: But just so I'm clear on this, in this
`stack configuration only one of the coils would be in contact and
`over. The other one would actually be on the other coil, correct?
`MR. TOLLEFSON: Well, it depends on what you
`mean by in contact with. If you mean in direct contact and to
`show that, we'd have to show that literally the windings 27 of the
`tilt coil is touching the material of the bobbin. Then, yes, then it's
`not in contact.
`But if they're in indirect contact -- and, in fact, there's
`really no disclosure in the patent that indicates that the coils
`themselves are actually in direct contact. There could be a
`vacuum plate. There could be resin. There could be a number of
`things that the patent specification doesn't teach to that level of
`detail how the coils are actually affixed to the bobbin.
`JUDGE ZECHER: Okay. You guys, have any
`questions?
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
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`MR. TOLLEFSON: If the Board doesn't have any
`further questions, I'll reserve the rest of my time for rebuttal.
`JUDGE ZECHER: Thank you.
`MR. TOLLEFSON: Thank you.
`MR. RHOA: May it please the Court, Joe Rhoa on
`behalf of Patent Owner.
`The first point I'd like to make out of the box here is
`with respect to an example that counsel for LG argued during his
`presentation. He said that you would consider all these papers to
`be on the table. That may be true, but that's not the issue here.
`Certainly on my desk here someone can reasonably
`argue that all these papers are on the table, but the question here
`is are they on the surface of the table. That's what the claim says.
`The claim doesn't just say on. The claim says on the surface and
`I'm paraphrasing, but on and surface are used together.
`I submit to you that one would not reasonably say that
`this paper here is on the surface of the table. I don't think anyone
`would reasonably say that. I think you can say it's on the table,
`but I don't think you can reasonably say that that paper is on the
`surface of the table, and that's the issue we have here.
`In Claim 40 the language at issue is arranged on each of
`opposite side surfaces of the bobbin and LG -- I don't blame them
`for it, but LG skipped over and glossed over the word surface.
`Surface is a big difference maker here.
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
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`In our brief we've cited the Senmed case. It's a Federal
`Circuit case. What term was at issue there? It wasn't just on. It
`was on the surface. And how did the Federal Circuit construe on
`the surface in Senmed? They construed it to mean in physical
`contact with.
`So, again, I'm just emphasizing that we're not just
`dealing with the word on. The phrase at issue is on the surface,
`and that's the claim construction issue we have here and that's
`what this proceeding is about.
`JUDGE ZECHER: Well, we appreciate the cite you
`give us in your brief, but isn't the Senmed case, isn't that a
`District Court case? It appears to be. I don't see the office or
`anybody else being a party in that case. In other words, what I'm
`getting at is didn't they apply the Phillips claim construction in
`that case instead of the broadest reasonable interpretation?
`MR. RHOA: The Senmed case I believe, the cite I have
`here is 888 F.2d 815, so it is a Federal Circuit case. It did apply
`the Phillips construction standard. So the construction standard
`in Senmed certainly is different than the construction standard we
`have here in view of the recent Supreme Court decision.
`But the point I'm making is it's not unheard of to
`construe on the surface as in physical contact with. I don't see
`any cases that LG has submitted where on the surface is
`construed as noncontacting. And the only case it construes on the
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
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`surface went the way that Patent Owner did, and granted it's now
`under a different claim construction standard. I'm with you on
`that.
`
`JUDGE ZECHER: Right. And I get your point here,
`but, you know, for this case on the surface, we need to construe it
`in light of this spec and these claims and so why don't you show
`us in light of these claims in this spec why it should be over and
`in contact with.
`MR. RHOA: The drawings -- I don't think it's disputed
`that the drawings of the '110 patent illustrate these coils in contact
`with the side surfaces. I have not heard any dispute about that.
`The word on in the specification is we believe used
`consistently to mean in physical contact with. I understand LG's
`position about Claim 1 and Claim 40. I don't think those are as
`fair of comparisons as LG would make them out to be, but I'd like
`to address them because that seems to be their argument.
`We've submitted that on is consistently used in the
`specification to mean in physical contact with, it's shown in the
`drawings and their response to that is they're citing I believe
`Claim 1 and Claim 40, which state that "a bobbin movably
`arranged on a base of the optical pickup."
`And there are two distinctions compared to what we're
`arguing here. First of all, Claims 1 and 40 do not say on a
`surface. They say on the bobbin. So, like I said with the table,
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
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`you can reasonably argue that all those papers are on the table,
`but the only papers that you're going to reasonably say are on the
`surface of the table are the ones that are contacting the table.
`Claims 1 and 40 do not say on the surface of the bobbin.
`They just say on. So, again, we have to keep in mind that the
`issue we're dealing with is on the surface. That's the claim
`language. We don't want to paraphrase that into just on, because
`there is a big difference in our view.
`The second point is if you look at the drawings of the
`'110 patent, when this device is not in operation, it appears as if
`the bobbin will be in physical contact with the base, the expert
`testimony which said that it's not in physical contact with the
`base. My understanding is that's talking about when it's in
`operation moving up and down, going in the focus direction, then,
`yes, it's not in contact with the base. So those are the two
`differences.
`The rebuttal arguments that they're relying on in Claims
`1 and 40 do not use the language on the surface and, number two,
`it's not as cut and dry as they make it out to be as far as the
`physical contact goes.
`JUDGE ZECHER: I understand your point with respect
`to that, but can we focus more on what the spec says in column 5,
`where it appears that on and at are used interchangeably with
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
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`respect to talking about these coils on the surface or at the
`surface.
`
`MR. RHOA: Yes, Your Honor, they are. I believe that
`the spec -- like many patent applications, the spec wants to use
`alternative language to describe things to give the Patent Owner
`or claim drafter wiggle room later. They use -- in certain
`instances on and at are used interchangeably, but on is
`consistently used when referring to situations where you have
`physical contact. And in the claim, again, they wanted to
`emphasize the physical contact, so they said on the surface. They
`didn't just say on. They said on the surface.
`JUDGE ZECHER: Yeah, but they also say at the
`surface. And when they're talking about in that paragraph -- I'm
`looking at it. I mean, on is used once there, at is used three times,
`each time referring to at the surface. So I guess maybe are you
`trying to say that the drafter's language of on here clearly limited
`it to on -- or, excuse me, over and in contact with, even though it
`seems there's some ambiguity here with respect to the use of at
`and its description of what's at the surface?
`MR. RHOA: I'm not saying that there's a definition in
`the specification. There's no your own lexicographer issue here.
`We're not arguing that. And what I'm arguing is that when they
`put in the claims on the surface, that meant in physical contact
`with. That's a lot narrower than just saying on.
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
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`They knew how to say -- the word at shows that the
`drafter of the claims knew how to use language that would not
`require physical contact. They didn't choose to do that in the
`claims with respect to the coil locations.
`JUDGE JEFFERSON: But they did choose to use it in
`the spec interchangeably.
`MR. RHOA: Yes, Your Honor.
`JUDGE JEFFERSON: So how is a person of ordinary
`skill in the art supposed to understand that it's narrow when it's
`used in the claims because it's on the surface, but it has -- it could
`be open-ended or have an indeterminant meaning when it's used
`in the spec?
`MR. RHOA: I think that the word on the surfaces, the
`phrase on the surfaces as used in spec is a narrower recitation of
`their location.
`At the sides, I think that's a broader recitation and I
`think the drafter of the patent -- my view of this is the drafter of
`the patent uses alternative language to give himself or herself
`wiggle room down the road, depending on what language they
`want to put in the claims.
`JUDGE JEFFERSON: But under the broadest
`reasonable interpretation, wouldn't that exactly lead one of
`ordinary skill in the art to think that the claim term is not as
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
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`narrow simply because it uses on and follows with the word
`surface in the claims?
`MR. RHOA: I think they're different words. I don't
`think you can attribute it to that. If they would have used at the
`surface in the claim, I would agree with you.
`JUDGE JEFFERSON: What evidence do we have in
`the intrinsic record that tells a person of ordinary skill in the art
`that your interpretation is correct?
`MR. RHOA: I think the language of the claim on the
`surface. We've got the drawings. We have all the embodiments
`in the specification. There are no embodiments in the
`specification that do not show it on the surface in physical
`contact. Every embodiment in the specification shows the coils
`in physical contact with the side surfaces and it's not like there's
`any other embodiments.
`JUDGE ZECHER: So I think I understand your point,
`but can you help me try to reconcile this with the problem that the
`'110 patent is trying to resolve. So I think Petitioner's counsel
`touched on this a little bit that the prior art has these coils
`arranged on all four sides of the bobbin, whereas here in the '110
`patent they're only on two sides.
`So it seems that the focus here was more on eliminating
`the coils from being on all four sides and focusing more on two
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`Case IPR2015-01642 (Patent 6,721,110 B2)
`Case IPR2015-01644 (Patent 6,785,065 B1)
`Case IPR2015-01653 (Patent RE43,106 E)
`Case IPR2015-01659 (Patent 7,367,037 B2)
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`sides rather than how they're specifically configured on those two
`sides. So can you maybe shed some light on that for me.
`MR. RHOA: I think one of the problems that the
`inventors were dealing with was saving space and I think I see
`space here mentioned in column 2 in the background. But
`certainly if you're putting these in physical contact with the side
`surfaces, you're saving significant and value space in these
`products compared to if, as in the prior art, you're stacking them
`on top of other things. And in small devices like that, that's an
`important thing.
`So the answer is savings of space.
`JUDGE ZECHER: The theme is a little broader in here.
`Your view that's it's -- you know, because they're going from four
`sides to two, really what they're ultimately trying to do is save
`space and by having it over and contact with, it's consistent with
`that theme.
`MR. RHOA: Yes, Your Honor.
`JUDGE ZECHER: Okay.
`MR. RHOA: Another point I'd like to make is we cite
`the Stumbo case in our brief and that's a Federal Circuit case that
`is often used by the PTAB for the proposition that you need to
`take all words in the claim into considerat
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