Trials@uspto.gov Paper 43
`Tel: 571-272-7822
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`Entered February 2, 2017
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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 IPR2015-01653
`Patent RE43,106 E
`____________
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
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`IPR2015-01653
`Patent RE43,106 E
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`I.
`
`INTRODUCTION
`
`A. Background
`LG Electronics, Inc. and LG Electronics U.S.A., Inc. (“Petitioner”)
`filed a Petition requesting an inter partes review of claims 7–19 of U.S.
`Patent No. RE43,106 E (Ex. 1001, “the ’106 patent”). Paper 1 (“Pet.”).
`Pursuant to 35 U.S.C. § 314, we instituted inter partes review of the
`ʼ106 patent, on February 5, 2016, under 35 U.S.C. § 103(a), as to claims 7‒
`19 on the basis that these claims would have been obvious over APA1 and
`Katayama.2 Paper 7 (“Dec.”).
`Patent Owner filed a Response (Paper 22, “PO Resp.”), and Petitioner
`filed a Reply (Paper 26, “Pet. Reply”). A consolidated oral hearing was held
`on October 6, 2016, and the hearing transcript has been entered in the
`record. Paper 42 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Pursuant to our jurisdiction under 35 U.S.C. § 6, we conclude, for the
`reasons discussed below, Petitioner has shown by a preponderance of the
`evidence that claims 7–19 of the ʼ106 patent are unpatentable under 35
`U.S.C. § 103(a).
`
`
`1 The ʼ106 patent includes Admitted Prior Art (“APA”) describing a
`conventional optical pickup apparatus and a thin-film type variable aperture.
`See Ex. 1001, 1:58–3:29, Figs. 1, 2. We consider APA as a relevant
`admission by Toshiba of the background knowledge of a person of ordinary
`skill in the art at the time of the invention of the ’106 patent. For simplicity,
`we refer to APA and its disclosure generally in our analysis that follows.
`2 U.S. Patent No. 5,696,750, issued on December 9, 1997 (Ex. 1002)
`(“Katayama”).
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`B. Related Proceedings
`The parties indicate that the ’106 patent is involved in the following
`district court cases: (1) LG Electronics, Inc. v. Toshiba Samsung Storage
`Technology Korea Corp., Case No. 1:12-cv-01063 (LPS) (D. Del.); and (2)
`Toshiba Samsung Storage Technology Korea Corp. v. LG Electronics, Inc.,
`Case No. 1:15-cv-0691 (LPS) (D. Del.). Pet. 2; Paper 6, 1.
`C. The ʼ106 Patent
`The ’106 patent describes an optical pickup apparatus that can
`compatibly record information on, and read information from, a digital video
`disk (DVD) and a recordable compact disk (CD-R) using a holographic lens.
`Ex. 1001, 1:28–34. The optical pickup apparatus is set forth in Figure 3 of
`the ’106 patent as follows:
`
`
` Figure 3 shows an optical system of an optical pickup according to
`one embodiment. Id. at 4:33–34. The optical pickup apparatus includes
`laser light sources 31 and 39 for emitting light beams having different
`wavelengths. Id. at 4:34–37. Laser light source 31 emits a wavelength of
`650 nm, suitable for a DVD. Id. at 4:55–59. Laser light source 39 emits a
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`light beam having a 780 nm wavelength suitable for a CD-R. Id. at 4:61–67.
`Holographic beam splitters 32 and 40 alter the optical path of the light
`beams reflected from information recording surfaces, beam splitter 33
`completely transmits or reflects the incident light beam according to
`wavelength, and collimating lens 34 collimates the incident light beam to be
`in a parallel form. Id. at 4:34–47. Holographic lens 35 diffracts the incident
`light beam according to its wavelength, and objective lens 36 focuses the
`light beams on the respective information recording surfaces of optical disks
`37 and 41. Id.
`Holographic lens 35 selectively diffracts the incident light beam in
`order to prevent the generation of spherical aberration with regard to the
`light beam’s focus on the information recording surfaces of optical disks 37
`and 41. Id. at 5:6–10. The relationship between holographic lens 35,
`objective lens 36, and optical disks 37 and 41 is illustrated in Figure 4A of
`the ’106 patent as follows:
`
`
`Figure 4A describes that objective lens 36 is partitioned into regions
`A and B. Id. at 5:13–14. Region A is closer to the optical axis of objective
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`lens 36 and has little effect on spherical aberration, whereas region B is
`farther from the optical axis of objective lens 36 and has a large effect on
`spherical aberration. Id. at 5:14–18. Objective lens 36 is most appropriate
`for an optical disk having a thin thickness, such as a DVD. Id. at 5:18–20.
`The light beam incident to region A passes through objective lens 36 without
`any diffraction by holographic ring lens 35 and is focused directly on the
`disk. Id. at 5:33–36. The light beam incident to region F is wavelength-
`selectively diffracted by holographic ring lens 35 and then proceeds to
`objective lens 36. Id. at 5:36–39.
`D. Illustrative Claim
`Petitioner challenges claims 7–19 of the ’106 patent. Pet. 4–60.
`Claim 7 is the only independent claim at issue, and claims 8–19 directly or
`indirectly depend from independent claim 7. Claim 7 is illustrative of the
`claims at issue and is reproduced below:
`7.
`An objective lens to form beam spots of different sizes
`using corresponding first and second light beams of respectively
`different wavelengths, the objective lens comprising:
`an inner region including an optical center of the objective
`lens which has an optical property optimized to focus the first
`light beam onto a first optical recording medium of a first
`thicknesses and to focus the second light beam onto a second
`optical recording medium of a second thickness other than the
`first thickness; and
`a diffractive region surrounding said inner region and
`comprising an optical property optimized so as to selectively
`diffract the first and second light beams as a function of
`wavelength so as to change a numerical aperture of the objective
`lens.
`Ex. 1001, 8:18–8:31.
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`II. ANALYSIS
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard as the claim construction standard to be
`applied in an inter partes review proceeding). Under the broadest
`reasonable interpretation standard, claim terms are generally given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art, in the context of the entire disclosure. In re Translogic Tech.
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Patent Owner argues that “the broadest reasonable construction
`standard should not apply in inter partes review proceedings (“IPRs”).
`Instead, Patent argues that “the [Board] should construe claim terms in IPRs
`using the same Phillips standard used by district courts in litigations.” PO
`Resp. 1 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`(en banc)). We are not persuaded by this argument. The U.S. Supreme
`Court was clear in articulating that the PTO’s regulation that states that “[a]
`claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification” is a reasonable exercise of the
`rulemaking authority that Congress delegated to the PTO. Cuozzo Speed
`Techs., 136 S. Ct. at 2142–46. Accordingly, we interpret the claims under
`their broadest reasonable interpretation, in light of the Specification.
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`1. “diffract”
`Independent claim 7 recites the term “diffract.” Patent Owner argues
`that the term “diffract” should be construed to mean “modulate waves in
`response to an obstacle, as an object, slit or grating, in the path of
`propagation, giving rise in light waves to a banded pattern or to a spectrum.”
`PO Resp. 6‒7 (citing Ex. 2001; Ex. 2002 ¶¶ 20‒22; Ex. 2003, 9‒11)
`(emphasis omitted). Patent Owner argues that the intrinsic record supports
`this construction, where the ’106 patent specification “expressly contrasts
`‘diffracting’ with totally transmitting and totally reflecting.” Id. at 7 (citing
`Ex. 1001, 4:40‒45, 5:1‒9). Patent Owner additionally argues that this
`definition is the plain and ordinary meaning of “diffract” and is defined in
`the dictionary as such. Id. at 7‒8 (citing Ex. 2001; Ex. 2002 ¶ 22).
`Petitioner does not propose an express definition for the term “diffract,” but
`rather only construes the term “diffract” within the meaning of the limitation
`“selectively diffract the first and second light beams as a function of
`wavelength,” which we discuss below.
`We agree with Patent Owner that both the intrinsic and extrinsic
`evidence relied upon by Patent Owner supports its proposed construction.
`Accordingly we adopt Patent Owner’s proposed construction of “diffract” to
`mean to “modulate waves in response to an obstacle, as an object, slit or
`grating, in the path of propagation, giving rise in light waves to a banded
`pattern or to a spectrum.” See PO Resp. 6‒8 (citing Ex. 2001; Ex. 2002
`¶ 22; Ex. 1001, 4:40‒45, 5:1‒9).
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`2. “selectively diffract the first and second light beams as a
`function of wavelength”
`Independent claim 7 recites the limitation “selectively diffract the first
`and second light beams as a function of wavelength.” Ex. 1001, 8:28–29.
`Petitioner argues that the broadest reasonable interpretation of this limitation
`is “diffract the first and second light beams according to their respective
`wavelengths.” Pet. 13. Petitioner argues that this interpretation is consistent
`with its plain and ordinary meaning, and consistent with the ’106 patent
`specification, “which does not provide an express definition for ‘selectively
`diffract . . . as a function of wavelength.’” Id. (citing Ex. 1001, 4:43‒45,
`5:6‒8, 5:66‒6:3; Ex. 1012 ¶¶ 63‒64).
`Patent Owner agrees with Petitioner that this limitation should be
`construed to mean “diffract the first and second light beams according to
`their respective wavelength”; however, Patent Owner asserts this limitation
`requires that “both beams are diffracted by the diffractive region.” PO Resp.
`3 (citing Ex. 2002 ¶¶ 17‒19). Patent Owner argues that the ’106 patent
`specification includes some embodiments that require only one light beam to
`be diffracted and some embodiments that require both light beams to be
`diffracted. Id. at 3‒6 (citing Ex. 1001, 4:18‒20, 6:20‒37, 6:53‒63, Fig. 6;
`Ex. 2002 ¶¶ 18‒19; Ex. 2003, 21‒23). Patent Owner further argues that
`“[z]ero percent diffraction is no diffraction at all.” Tr. 79:9‒10. Patent
`Owner argues that, although claim 1 is directed towards the diffraction of
`only one light beam, claim 7 requires the diffraction of both light beams.
`PO Resp. 3.
`Petitioner responds that Patent Owner’s proposed construction is
`narrower than what is required by the claims, and Patent Owner selectively
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`characterizes the ’106 patent specification, namely Figure 6, as requiring
`both light beams to be diffracted. Pet. Reply. 4‒6 (citing Ex. 1001, 6:55‒63,
`Fig. 6; Ex. 1021, 164:21‒165:4). Petitioner argues that use of the term
`“selectively” with relation to the limitation “as a function of wavelength”
`means that diffraction is wavelength-dependent. Id. at 6‒9. Petitioner
`argues that, according to its expert, Dr. Masud Mansuripur, “‘[t]he
`diffractive elements described in the ’106 patent are wavelength selective,’
`in which ‘the fractional amount of diffraction (ranging anywhere from 0% to
`100%) of an incident light beam into one or more of the various diffracted
`orders depends on the wavelength of the incident light beam.” Id. at 6‒7
`(citing Ex. 1012 ¶ 53). As such, Petitioner argues that diffraction includes
`any diffraction ranging from 0% to 100%. Id. Petitioner argues that this
`construction is supported by the ’106 patent specification, which illustrates
`in Figure 6 a zero-order transmissive efficiency (i.e. 0% diffraction) and the
`beams are diffracted into an order higher than the zeroth order beam when
`they are below the 1.0 on the vertical axis. Id. at 7‒8 (citing Ex. 1001, 6:53‒
`63, Fig. 6). Petitioner argues that claim 7 is not limited to diffraction into
`any particular order. Id. at 8‒9 (citing Ex. 2001, 164:10‒13). Specifically,
`Petitioner argues that Figure 6 describes that when “the surface groove depth
`d is 3.8 µm, the 650 nm wavelength light is transmitted via the holographic
`ring by 353 by 100% as shown in a solid line overlapped with the symbol
`‘++’, and the 780 nm wavelength light is transmitted via the holographic
`ring by 353 by 0%.” Id. at 5 (quoting Ex. 1001, 6:55‒63) (emphasis
`omitted).
`We first review the intended purpose and goal of the ’106 patent in
`order to give the claim terms meaning. “[T]he PTO applies to the verbiage
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`of the proposed claims the broadest reasonable meaning of the words in their
`ordinary usage as they would be understood by one of ordinary skill in the
`art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997). The ’106 patent specification explains that an optical pickup
`apparatus uses a single objective lens and two laser light diodes as light
`sources for a DVD, which is reproduced using a 635 nm wavelength, and a
`CD-R, which is recorded and reproduced using a 780 nm wavelength,
`because of the difference in the thickness of a DVD and CD-R. Ex. 1001,
`1:62‒67, 2:37‒43. Petitioner’s expert, Dr. Mansuripur, opines that “[i]n
`many cases, the objective lens was designed for spot-size corresponding to a
`DVD” and “[a]s such, it received the 650 nm laser beam . . . free from all
`forms of aberration.” Ex. 1012 ¶ 47. When, on such an apparatus, a 780 nm
`wavelength is focused on a CD-R having a thickness of 1.2 mm, “spherical
`aberration is generated due to a difference in the thickness between the DVD
`[] and the CD-R []” because “the distance between the information recording
`surface of the CD-R [] and the objective lens [] is farther than that between
`the information recording surface of the DVD [] and the objective lens [].”
`Ex. 1001, 2:37‒48; see also Ex. 1012 ¶¶ 43, 44. Prior optical pickup
`apparatuses use a “finite optical system” in order to remove spherical
`aberration. Id. at 3:13‒16. The ’106 patent discloses an invention that
`utilizes a “holographic ring” to prevent the generation of spherical
`aberration. Id. at 5:6‒10.
`We determine, in light of the ’106 patent claims and specification, that
`“selectively diffract the first and second light beams as a function of
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`wavelength,” under the broadest reasonable interpretation, includes an
`interpretation that means selecting one light beam to diffract based on
`wavelength. As explained by Dr. Mansuripur, the objective lens is designed
`for the wavelength of one of the light beams so as to receive one light beam
`free from all forms of aberration, and then use a diffracting element for the
`other light beam to prevent the generation of aberrations. Ex. 1012 ¶¶ 47,
`50. This construction encompasses the construction set forth by Petitioner,
`where Petitioner argues that the term “selectively” determines how much
`each light beam is diffracted, based on wavelength, and Dr. Mansuripur
`explains that the fractional amount of diffraction can range from 0% to
`100%. Pet. Reply 6‒9; Ex. 1012 ¶ 53. Our construction encompasses
`Petitioner’s proposed construction because our construction allows a beam
`to pass without diffraction, which is the same as diffracting that light beam
`0%.
`
`In our view, this interpretation is required by the ’106 patent claims.
`Independent claim 7 recites “selectively diffract the first and second light
`beams as a function of wavelength,” and claim 8, which depends from claim
`7, further limits claim 7 to require that the aperture “selectively diffracts the
`first light beam having a first wavelength” and “selectively allow the second
`light beam of a second wavelength to be focused on the second recording
`medium.” Ex. 1001, 8:35–39. Accordingly, claim 8 requires that to
`“selectively diffract the first and second light beams,” one beam is diffracted
`while the second beam is allowed to be focused directly on to the recording
`medium. Because dependent claim 8 further limits independent claim 7,
`independent claim 7 may be broadly, but reasonably interpreted to mean that
`one light beam is diffracted while allowing the second light beam to pass
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`without diffraction. That is, a person with ordinary skill in the art would
`have understood that claim 8 limits claim 7 such that one light is diffracted
`while allowing the second light to pass without diffraction.
`We are not persuaded by Patent Owner’s argument that claim 7
`requires the diffraction of both light beams (PO Resp. 3) because further
`limiting claim 8 expressly requires that the second light beam is allowed
`selectively to be focused on the recording medium. As such, like claim 1,
`claim 7 only requires that one light beam is diffracted based on wavelength.
`As noted by Patent Owner, the ’106 patent specification discloses an
`embodiment where only one light beam is diffracted (PO Resp. 3‒6 (citing
`Ex. 1001, 4:18‒20, 6:20‒37, 6:53‒63, Fig. 6; Ex. 2002 ¶¶ 18‒19; Ex. 2003,
`21‒23)) and we determine that claim 7 does not include explicit or inherent
`limitations requiring that both beams are diffracted.3
`
`
`3 Patent Owner argues that Figure 6 of the ’106 patent discloses an
`embodiment where both the first and second light beams are diffracted. PO
`Resp. 3‒6. However, Figure 6 merely shows a graphical view of the
`“transmissive efficiency according to the groove depth of the holographic
`ring lens with regard to two wavelengths.” Ex. 1001, 4:18‒20. The ’106
`patent specification’s only discussion of a holographic ring is one with a
`groove depth of 3.8 µm, where the 650 nm wavelength transmitted 100%
`and the 780 nm wavelength is transmitted 0%, resulting in 40% diffraction.
`Id. at 6:53‒63. Patent Owner argues that “both beams are diffracted a
`majority of the time” (PO Resp. 3) in Figure 6, but Patent Owner does not
`provide any citation to the ’106 patent specification that discloses an
`embodiment that utilizes a holographic ring that has a groove depth where
`both the first and second light beams would be diffracted. At the oral
`hearing, Patent Owner pointed to the discussion of Figure 6 in the ’106
`patent that discusses that the 650 nm wavelength light is “hardly” diffracted;
`however, Patent Owner did not advance the argument that the 650 nm
`wavelength is “hardly” diffracted in the briefing. Tr. 80:13‒23 (citing Ex.
`1001, 6:24‒27); see PO Resp. 3‒6. Therefore, we do not consider this
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`Our interpretation in this regard is further consistent with the ’106
`patent specification. The ’106 patent specification explains that
`“holographic ring lens 35 selectively diffracts the incident light beam
`according to wavelength” in order to “prevent the generation of spherical
`aberration with regard to the light beams focused on the information
`recording surfaces of the optical disks,” and “[b]y using the holographic ring
`lens 35, a working distance from the surface of the objective lens 36 to the
`information recording surfaces of the disks becomes shorter in the CD-R 41
`rather than in the DVD 37.” Ex. 1001, 5:6‒10, 5:47‒50 (emphasis omitted).
`The ’106 patent specification further explains that “holographic ring lens 35
`is constructed so that the light beam of 650 nm wavelength has transmissive
`efficiency close to 100%” and “the light beam of 780 nm wavelength has a
`zero-order transmissive efficiency 0% with respect to non-diffracted light
`beam.” Id. at 6:11‒15 (emphasis omitted). As such, we find that the ’106
`patent specification supports an interpretation of “selectively diffract the first
`and second light beams according to their respective wavelengths” to be
`selecting one light beam to diffract based on wavelength.
`The ’106 patent specification further provides an embodiment where
`the groove depth is 3.8 µm. Ex. 1001, 6:53‒63, Fig. 6. The ’106 patent
`explains that at 3.8 µm groove depth, the 650 nm wavelength light is
`transmitted via the holographic ring by 100% and the 780 nm wavelength is
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`argument because it was not timely raised. For the reasons explained above,
`we are not persuaded by Patent Owner that a construction of “selectively
`diffract the first and second light beams as a function of wavelength” that
`requires the diffraction of both a first and second light beam is supported by
`the ’106 patent specification.
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`transmitted via the holographic ring by 0%, thereby resulting in 40%
`diffraction efficiency. Id. That is, the ’106 patent specification discloses
`that “[a]ll of the 650 nm wavelength light incident to the holographic ring
`lens . . . is transmitted and then proceeds to the objective lens,” and “[t]he
`780 nm wavelength light incident to the holographic ring lens [] is
`transmitted to the holographic ring lens [] as shown in Figure 4A, but is
`diffracted in region A and then proceeds to objective lens [].” Id. at 6:64‒
`66, 7:9‒13.
`Accordingly, applying the broadest reasonable interpretation standard,
`we interpret the limitation “selectively diffract the first and second light
`beams as a function of wavelength” to mean selecting one light beam to
`diffract based on wavelength.
`B. Claims 7–19 – Obviousness over APA and Katayama
`Petitioner contends that claims 7‒19 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over APA and Katayama. Pet. 22–59. Petitioner
`provides a detailed analysis, supported by the Declaration of
`Dr. Mansuripur,4 explaining how the prior art meets each of the claim
`limitations of claims 7‒19. Id.; Ex. 1012. Petitioner also asserts that a
`person of ordinary skill in the art would have had a sufficient reason to
`combine or modify the teachings of APA and Katayama. Id.
`1. APA (Ex. 1001)
`The ʼ106 patent discloses a conventional optical pickup apparatus that
`was available in the prior art. Ex. 1001, Fig. 1, 1:58–61. The conventional
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`4 Petitioner supports its challenge with the Declaration of Dr. Mansuripur.
`Ex. 1012.
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`optical pickup apparatus is illustrated in Figure 1 of the ’106 patent as
`follows:
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`Figure 1 discloses an optical pickup apparatus that includes laser light
`sources 11 and 21, collimating lenses 12 and 22, objective lens 17, and
`optical media 18 and 25. Id. at 1:62–2:55. Laser light source 11 emits light,
`having a 635 nm wavelength, to collimating lens 12. Id. at 2:1–2. The
`collimated incident light beam is reflected by beam splitter 13 to interference
`filter prism 14. Id. at 2:3–7. Laser light source 21 emits light, having a 780
`nm wavelength, to collimating lens 22. Id. at 2:8–13. The collimated
`incident light beam then goes to beam splitter 23, converging lens 24, and
`then to interference filter prism 14. Id. Interference filter prism 14 transmits
`completely both the light beam of 635 nm and 785 nm wavelengths. Id. at
`2:15–18. As a result, the light beam from laser light source 11 is incident to
`quarter-wave plate 15 as a parallel beam by the collimating lens 12, whereas
`the light beam from laser light source 21 is incident to the quarter-wave plate
`15 in the form of a divergent beam by converging lens 24 and interference
`filter prism 14. Id. at 2:18–24. The light transmitted through the quarter-
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`wave plate 15 passes through a variable aperture 16 having a thin film
`structure and then is incident to objective lens 17. Id. at 2:24–28.
`Thin-film type variable aperture 16 is illustrated in Figure 2 of the
`’106 patent as follows:
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`Figure 2 illustrates variable aperture 16 that is partitioned into two
`regions. Id. at 2:56–66. First region 1 transmits both light beams of 635 nm
`and 780 nm. Id. Second region 2 transmits completely the light beam of
`635 nm, and reflects completely the light beam of 780 nm. Id.
`2. Katayama (Ex. 1002)
`Katayama discloses an optical head apparatus for different types of
`disks that have different thicknesses and/or densities. Ex. 1002, 1:7–9. The
`optical head apparatus is illustrated in Figure 28 of Katayama as follows:
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` Figure 28 discloses an optical head apparatus that includes laser
`diodes 11 and 12, interference filter 13, collimator lens 4, aperture limiting
`element 2801,5 objective lens 6, and disks Aʹ and B. Ex. 1002, 15:62–16:21.
`A 635 nm wavelength light beam is emitted from laser diode 11, and
`completely passes through interference filter 13 and is incident to collimator
`lens 4. Id. at 16:1–4. The collimated light beam passes through the entire
`aperture limiting element 2801 to reach objective lens 6, and is focused on
`disk Aʹ. Id. at 16:4–8. A 785 nm wavelength light beam is emitted from
`laser diode 12, and is reflected completely by interference filter 13 and is
`incident to collimator lens 4. Id. at 16:18–21. The collimated light beam
`
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`5 Aperture limiting element 2801 replaces the holographic optical element 5ʹ
`of Figure 5. Ex. 1002, 15:63–65. Figure 32 combines the holographic
`optical element 5” of Figure 8 and aperture limiting element 2801 of Figure
`28 into aperture limiting holographic optical element 3201. Id. at 18:48–54.
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`passes only through a central portion of aperture limiting element 2801 to
`reach objective lens 6 to be focused on disk B. Id. at 16:22–25.
`3. Analysis
`Petitioner contends that claims 7‒19 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over APA and Katayama. Pet. 22–59. Petitioner
`provides a detailed analysis, supported by credible evidence, demonstrating
`by a preponderance of the evidence that claims 7‒19 are obvious over APA
`and Katayama. Id.
`For example, the preamble of claim 7 recites “an objective lens to
`form beam spots of different sizes using corresponding first and second light
`beams of respectively different wavelengths.” Ex. 1001, 8:18–20.
`Petitioner contends that both APA and Katayama disclose this limitation.
`Petitioner specifically argues that APA discloses a conventional optical
`pickup apparatus that includes a single objective lens and two different
`wavelength light sources in order to form beam spots of different sizes for
`each recording medium (i.e., DVD and CD-R). Pet. 25‒26 (citing Ex. 1001,
`1:64–67, 2:28–31, 2:50–53, 2:56–3:12, Fig. 1; Ex. 1012 ¶¶ 70–77, 87).
`Petitioner additionally argues that Katayama discloses the use of an
`objective lens and two different light sources on DVDs or CDs, which
`require beam spots of different sizes due to disk density. Id. at 26–28 (citing
`Ex. 1002, 1:7–9, 1:45–59, 3:22–30, 18:43–44, Figs. 5, 8, 28, 32; Ex. 1012
`¶¶ 88–91).
`Claim 7 further recites,
`an inner region including an optical center of the objective lens
`which has an optical property optimized to focus the first light
`beam onto a first optical recording medium of a first thicknesses
`and to focus the second light beam onto a second optical
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`recording medium of a second thickness other than the first
`thickness.
`Ex. 1001, 8:21–26. Petitioner contends that both APA and Katayama
`disclose this limitation. Petitioner specifically argues that APA discloses
`that objective lens 17 is optimized to focus (1) a first light beam on a first
`optical recording medium of a first thickness; and (2) a second light beam on
`a second optical recording medium of a second thickness. Pet. 28 (citing
`Ex. 1001, 2:28–31, 3:6–9, Fig. 1; Ex. 1012 ¶ 93). Petitioner argues that
`APA discloses that variable aperture 16, alone or combined with objective
`lens 17, has an inner region that includes an optical center to focus (1) the
`first light beam onto a first optical recording medium of a first thickness; and
`(2) a second light beam onto a second optical recording medium of a second
`thickness. Id. at 29 (citing Ex. 1012 ¶ 94).
`Petitioner also argues that Katayama discloses an inner region that is
`configured to focus (1) a first beam onto a first medium; and (2) a second
`beam to focus onto a second medium. Id. at 29–30 (citing Ex. 1002, 17:13–
`30, 18:37–44, Figs. 28, 30A, 30B; Ex. 1012 ¶ 95). Petitioner argues that
`Katayama discloses an inner region that focuses two different light beams of
`different wavelengths, regardless of whether diffractive element 2801 is
`combined with objective lens 6, because inner region of diffractive-type
`variable aperture 3003 passes both wavelengths for focusing on their
`respective disks. Id. (citing Ex. 1002, 17:13–30; Ex. 1012 ¶ 95).
`Claim 7 also recites “a diffractive region surrounding said inner
`region and comprising an optical property optimized so as to selectively
`diffract the first and second light beams as a function of wavelength so as to
`change a numerical aperture of the objective lens.” Ex. 1001, 8:27–31.
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`Petitioner contends that, although APA fails to disclose this limitation
`because it uses a thin film element, Katayama discloses a diffractive-type
`aperture limiting element that is wavelength selective, and also discloses that
`the diffractive element can be formed directly on the surface of the objective
`lens. Pet. 30–31 (citing Ex. 1002, 18:31–44). Petitioner asserts that
`Katayama presents the diffractive-type variable aperture as interchangeable
`with a thin-film type aperture. Id. at 31–32 (citing Ex. 1002, 15:62–18:44;
`Ex. 1012 ¶¶ 80, 98). As discussed above in our claim construction section,
`we construe the limitation “selectively diffract the first and second light
`beams as a function of wavelength” to mean selecting one light beam to
`diffract based on wavelength, while the other light beam passes without
`diffraction. Petitioner argues that Katayama discloses grating element 3002,
`which is a diffracting element, and “grating 3002 completely passes the 635
`nm wavelength light therethrough, while the grating 3002 almost completely
`diffracts the 785 nm wavelength light thereby.” Id. at 38‒39 (quoting
`Ex. 1002, 17:20‒23).
`Petitioner further articulates reasoning with rational underpinnings as
`to why a person of ordinary skill in the art at the time of the invention would
`have combined the teachings of APA and Katayama. Id. at 22–25 (citing
`Ex. 1012 ¶¶ 79–82). Petitioner asserts that the elements of the claims were
`well known and a person with ordinary skill in the art would have had a
`sufficient reason to combine them without change to their respective
`functions. Id. at 22–23. Accordingly, Petitioner argues that the combination
`of APA and Katayama is nothing more than the combination of known
`elements with each performing the same function it had been known to
`perform, and yields nothing more than predictable results. Id. Petitioner
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`IPR2015-01653
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