Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 41
`
`
`
` Entered: February 2, 2017
`
`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 IPR2015-01659
`Patent 7,367,037 B2
`____________
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 41
`
`
`
` Entered: February 2, 2017
`
`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 IPR2015-01659
`Patent 7,367,037 B2
`____________
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`
`INTRODUCTION
`I.
`LG Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively
`“Petitioner” or “LG”) filed a Petition (Paper 1, “Pet.”) requesting an inter
`partes review of claims 1, 5, 8–11, 15–18, and 22 of U.S. Patent No.
`7,367,037 B2 (Ex. 1001, “the ’037 patent”). On February 5, 2016, we
`instituted inter partes review of claims 1, 5, 8–11, 15–18, and 22 of the ’037
`patent on the basis that these claim would have been unpatentable as obvious
`under 35 U.S.C. § 103(a). Paper 8 (“Dec. on Inst.”).
`Toshiba Samsung Storage Technology Korea Corporation (“Patent
`Owner” or “Toshiba”), filed a Patent Owner’s 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 40 (“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 1, 5, 8–11, 15–18, and 22 of the ʼ037 patent are
`unpatentable as obvious under 35 U.S.C. § 103(a).
`A. Related Proceedings
`The parties report the following pending litigation matter related to
`the ’037 patent: (1) LG Electronics, Inc., v. Toshiba Samsung Storage
`Technology Korea Corp., Case No. 1:12-cv-01063 (D. Del.); (2) Toshiba
`Samsung Storage Technology Korea Corp., v. LG Electronics, Inc., Case
`No. 1:15-cv-691 (D. Del.). Pet. 3; Paper 6, 1.
`2
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`
`B. The ʼ037 Patent
`The ’037 patent discloses a conventional disk player, turntable,
`clamper, and spindle motor that incorporates a self-compensating dynamic
`balancer for restricting internal vibrations from the eccentric center of
`gravity of a disk. Ex. 1001, 1:24–33. The ’037 patent describes a typical
`disc player as prior art, which contains a turntable, clamper, spindle motor,
`rotational shaft, deck plate, and buffering members. Id. at 1:41–59, Fig. 1.
`A disk player embodying the invention of the ’037 patent is illustrated
`in Figure 2, reproduced below.
`
`
`
`3
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`Figure 2 shows deck base 50, deck plate 70, buffering members 60,
`spindle motor 100, turntable 200, and clamper 300 similar to those noted in a
`typical disk player. Id. at 5:4–12, 1:41–59, Fig. 1. Figure 2 also depicts
`self-compensating dynamic balancer 400, which prevents eccentric rotation
`of rotational shaft 130 of spindle motor 100 caused by the eccentric center of
`gravity of disc 1. Id. 5:12–15.
`The ’037 patent specification states that:
`a method of dampening internal vibrations generated by the
`rotation of the spindle motor [] due to an eccentric center of
`gravity of the disk is not taken into consideration [by buffering
`members which protect from external impacts]. In such a case,
`the eccentric center of gravity of the disk is caused by a
`discrepancy between the rotational center of the disk and the
`center of gravity of the disk due to errors in the manufacturing
`process of the disk. Thus, the rotational shaft of the spindle
`motor [] exhibits an orbital revolution due to wobbling of the
`rotational shaft.
`Such orbital revolution of the rotational shaft of the
`spindle motor does not effect a low-speed disk player such as a
`lx or 2x type. However, in the case of a high-speed model . . . ,
`the effects of the orbital revolution of the rotational shaft of the
`spindle motor become serious making the recording/reproducing
`of information difficult.
`Id. at 1:62–2:11.
`The ’037 patent solves this problem of the orbital revolution wobbling
`(caused by the discrepancy between the rotational center of the disk and the
`center of gravity of the disk) by “incorporating a self-compensating dynamic
`balancer [400], which is employed in a disk player so that the internal
`
`4
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`vibrations due to an eccentric center of gravity of a disk can be limited” at
`either the turntable, clamper, or spindle motor. Id. at 2:26–45.
`C. Illustrative Claim
`Independent claim 1 is illustrative of the challenged claims and
`reproduced below:
`1. A self-compensating dynamic balancer apparatus
`for a disk player which records and reproduces
`information from a disk installed on said disk player, said
`apparatus comprising:
`a self-compensating dynamic balancer comprising:
`a non-magnetic hollow tube; and
`a mobile unit which comprises at least one rigid
`body and is disposed within said non-magnetic hollow
`tube,
`
`wherein said self-compensation dynamic balancer
`is locatable coaxial with a rotation axis about which said
`disk is rotated by rotational components of said disk
`player,
`wherein said self-compensation dynamic balancer
`rotates in use with at least one of rotational components,
`wherein said mobile unit is arranged to be freely
`movable within said non-magnetic hollow tube by
`centrifugal force generated by rotation of said disk such
`that the center of gravity of said self-compensating
`dynamic balancer moves to be located opposite to the
`center of gravity of said disk with respect to said rotation
`axis when an angular frequency of the disk is greater than
`a natural frequency of a deck plate of the disk player,
`wherein the natural frequency of the deck plate is
`determined by an elastic modulus of buffering members of
`the disk player and mass of the deck plate and other
`elements to be installed on the deck plate, and represents
`a rate of vibration in a horizontal direction, and
`
`5
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`
`wherein the self-compensating dynamic balancer is
`mounted to at least one among members which are rotated
`by the rotational force provided by a spindle motor, and
`the center of gravity of said self-compensating dynamic
`balancer is located opposite to that of said disk with
`respect to a rotational shaft of said spindle motor by a
`centrifugal force generated during rotation of said disk,
`thereby to compensate for vibrations due to an eccentric
`center of gravity of said disk.
`Ex. 1001, 16:64–17:32.
`
`D. Instituted Grounds
`We instituted trial on the following grounds of unpatentability for the
`challenged claims of the ’037 patent as follows (Dec. on Inst. 18–19):
`
`References
`Nishida1 and Hellerich2
`Nishida, Hellerich, and
`Kilgore3
`Nishida, Hellerich, and
`Decker4
`
`Basis
`35 U.S.C. § 103(a)
`
`Claim[s] Challenged
`1, 8–11, and 15–18
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`5
`
`22
`
`
`1 U.S. Patent No. 5,469,311 to Nishida, issued Nov. 21, 1995 (Ex. 1003,
`“Nishida”).
`2 U.S. Patent No. 3,854,347 to Hellerich, issued Dec. 17, 1974 (Ex. 1002,
`“Hellerich”).
`3 U.S. Patent No. 4,674,356 to Kilgore, issued June 23, 1987 (Ex. 1004,
`“Kilgore”).
`4 U.S. Patent No. 3,731,556 to Decker, issued May 8, 1973 (Ex. 1005,
`“Decker”).
`
`6
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`
`References
`Admitted Prior Art
`(APA)5 and McGale6
`APA, McGale, and
`Cobb7
`APA, McGale, and
`Kilgore
`APA, McGale, and
`Taylor8
`APA, McGale, and
`Decker
`
`
`Basis
`
`Claim[s] Challenged
`
`35 U.S.C. § 103(a)
`
`1, 8, 11, and 16–18
`
`35 U.S.C. § 103(a)
`
`9 and 10
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`5
`
`15
`
`22
`
`II. ANALYSIS
`A. Claim Interpretation
`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
`
`
`5 Ex. 1001, Fig. 1, 1:35–59. 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 ’037 patent. For clarity, we refer to APA
`and its disclosure generally in the analysis that follows.
`6 U.S. Patent No. 5,142,936 to McGale, issued Sept. 1, 1992 (Ex. 1006,
`“McGale”).
`7 U.S. Patent No. 3,913,980 to Cobb, issued Oct. 21, 1975 (Ex. 1007,
`“Cobb”).
`8 U.S. Patent No. 5,460,017 to Taylor, issued Oct. 24, 1995 (Ex. 1008,
`“Taylor”).
`
`7
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`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). Thus, contrary to Patent
`Owner’s argument that the we should construe claim terms using the Phillips
`standard in inter partes proceedings (PO Resp. 1–2 (citing Phillips v. AWH
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)), we interpret claim
`terms using the broadest reasonable interpretation, in light of the
`specification. See Cuozzo Speed Techs., LLC, 136 S. Ct. at 2144–46.
`1. “disk player”
`Claim 1 recites a “disk player.” Ex. 1001, 16:65. Petitioner contends
`that the broadest reasonable interpretation of “disk player” is “a device that
`is capable of recording and/or reading information onto and/or from a disk.”
`Pet. 6 (citing Ex. 1001, 1:35–37; Ex. 1009 ¶¶ 81–83). We determined for
`purposes of the Decision on Institution that the broadest reasonable
`interpretation of disk player is “a device that is capable of recording and/or
`reading information onto and/or from a disk.” Dec. on Inst. 7–8.
`Patent Owner argues that applying the Phillips standard “‘disc player’
`should be interpreted to mean ‘a device that records and/or reads information
`onto and/or from a removable optical recording medium.’” PO Resp. 3, 6
`(emphasis added). Patent Owner contends that “optical” is supported by the
`use of the word “required” in the specification, which states that “the disc
`player is required to protect the disc and optical pickup from external
`impacts and internal vibrations.” PO Resp. 3 (quoting Ex. 1001 at 1:37–40);
`see also Ex. 1001 at 16:53–56. Because the specification refers only to
`8
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`“typical disc players” that Patent Owner argues are removable optical disc
`players, Patent Owner asserts that a person of ordinary skill in the art “would
`understand that characterizing vibrational problems occurring in connection
`with 6x, 8x, 12x, 20x, or 24x type disc player models (as opposed to low-
`speed 1x or 2x models) refers explicitly to disc players that play removable
`optical media.” PO Resp. 3 (citing Ex. 1001, 2:5-11). Thus, Patent Owner
`argues that the recited disc player does not encompass magnetic hard disc
`drives or other discs that are not optically read. Id. at 3. Patent Owner
`argues that to omit “optical recording medium” from the construction of disc
`player results in an unreasonably broad construction that does not reasonably
`reflect the ’037 specification. Id. (citing In re Suitco Surface, Inc., 603 F.3d
`1255, 1260 (Fed. Cir. 2010)); see Ex. 2002 ¶¶ 39–46. Patent Owner further
`asserts that under the Phillips standard, “disc player” in claim 1 should be
`interpreted to mean “a device that records and/or reads information onto
`and/or from a removable optical recording medium,” or at least “under the
`broadest reasonable construction standard to mean ‘a device that records
`and/or reads information onto and/or from an optical recording medium.’”
`PO Resp. 5–6 (citing Ex. 2002 ¶¶ 39–41).
`Petitioner responds that Patent Owner’s construction is not the
`broadest reasonable interpretation as the scope of the claims is not limited to
`disk players with optical pickups, and the ’037 patent specification does not
`limit the term disk players to such removable optical media players. Pet.
`Reply 3. Petitioner argues that the speeds associated with the disk player in
`the ’037 patent are not limited or unique to optical disk players. Id. at 4. In
`addition, the Petitioner notes that the ’037 patent prosecution history
`9
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`demonstrates that disk players are not limited to players with optical
`pickups. Pet. Reply 4; Pet. 6 (citing Ex. 1010, 22–31, 40, 51–60, 69–70,
`102–111, 118, 148–150, 215–219).
`Upon review of the full record developed during trial, we are not
`persuaded by Patent Owner’s contentions that “disk player,” as recited in the
`claims, is limited by the “Background of the Invention” as described in the
`specification of the ’037 patent. The ’037 patent specification suggests that
`the recording medium could be “a recording medium such as a compact disk
`(CD), a CD-ROM and a digital versatile disk (DVD),” but the term “such
`as” indicates that the invention is not limited to optical disk players because
`a CD, a CD-ROM, and a DVD are merely exemplary. Ex. 1001, 1:36–37.
`Although Patent Owner contends that “such as” limits the type of disc player
`to optical types and excludes other devices (PO Resp. 5), we do not find that
`the specification and claims indicate to a person of ordinary skill in the art
`that the patentee limited “disc player” to removable, optical recording
`medium. The Federal Circuit “counsels the [Patent and Trademark Office
`or] PTO to avoid the temptation to limit broad claim terms solely on the
`basis of specification passages.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`2004). Thus, “[a]bsent claim language carrying a narrow meaning, the PTO
`should only limit the claim based on the specification or prosecution history
`when those sources expressly disclaim the broader definition.” Id. We find
`that the reference to disk player, like the description in the generally
`described Field of Invention (Ex. 1001, 1:24–33), addresses a “disk player
`having a self-compensating dynamic balancer” in broad terms that are not
`“‘words or expressions of manifest exclusion’ or ‘explicit’ disclaimers in the
`10
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`specification [that] are necessary to disavow claim scope.” Gillette Co. v.
`Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005). We also
`note that claim 1 describes “a disk installed on said disk player” in a manner
`that is not limited to “a removable recording medium” as Patent Owner
`contends. Accordingly, we maintain that the broadest reasonable
`interpretation of “disk player” is “a device that is capable of recording
`and/or reading information onto and/or from a disk.”
`2. “horizontal direction”
`Petitioner contends that the proper interpretation of “‘horizontal
`direction’ is ‘a direction parallel to the plane of the disk.’” Pet. 6–7 (citing
`Ex. 1001, 5:41–46; Ex. 1009 ¶¶ 84–85). Patent Owner does not provide an
`express construction for this claim term and does not dispute Petitioner’s
`construction. Based on the full record developed during trial, we adopt
`Petitioner’s construction of the term “horizontal direction” as “a direction
`parallel to the plane of the disk.” Dec. on Inst. 8.
`3. “a non-magnetic metal such as SUS300, SUS304 and SUS316” and “a
`non-oxidizing substance which does not corrode”
`Petitioner proposes constructions of these claim phrases as follows:
`(1) “a non-magnetic metal such as SUS300, SUS304 and SUS316” “would
`include any non-magnetic metal and is not limited to the exemplary
`nonmagnetic metals”; and (2) “‘a non-oxidizing substance which does not
`corrode’ includes substances that substantially resist corrosion such as
`stainless steel and plastics.” Pet. 7. Patent Owner does not dispute
`Petitioner’s construction or provide an express construction for these claim
`
`11
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`phrases. Based on the full record developed during trial, we adopt
`Petitioner’s proposed constructions. Dec. on Inst. 8.
`4. “turntable”
`Petitioner argues that the plain meaning of the term “turntable” is “‘a
`revolvable platform.’” Pet. 7. Petitioner supports this construction by
`reference to at least one dictionary definition (Ex. 1032, 1262), and to the
`interpretation offered during prosecution of the ’037 patent and a related
`application (Ex. 1010, 41, 70, 119; Ex. 1057, 189, 256). Pet. 7–8. Patent
`Owner does not dispute Petitioner’s construction or provide an express
`construction for the term.
`Based on the full record develop during trial, and for the reasons
`discussed in the Decision on Institution (Dec. on Inst. 9), we determine that,
`a “turntable” is “a revolvable platform.”
`5. “compensate for”
`Patent Owner contends that the term “compensate for” as recited in
`the claim should be interpreted as “substantially eliminate or substantially
`remove.” PO Resp. 6 (citing Ex. 2001, 70:12–17). Patent Owner argues
`that Petitioner’s declarant, I-Yeu Shen, Ph.D., confirmed this construction
`and the cited prior art only partially cancels out imbalances. Id.
`We are not persuaded that the broadest reasonable interpretation of
`“compensate for,” in light of the ’037 patent specification and claims,
`requires a degree or quantitative amount of compensation. We find no
`support for Patent Owner’s construction in the claims themselves or the
`specification. The extrinsic evidence, from which Petitioner’s declarant
`understood the phrase to mean “take away a good part of the vibration” (Ex.
`12
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`2001, 79:12–17), is not sufficient to support Patent Owner’s construction of
`“substantially eliminate” or “substantially remove.” Based on the full record
`developed during trial, we determine that “compensate for” does not require
`an express construction.
`
`B. Level of Skill in the Art
`Petitioner’s declarant, Dr. Shen, describes the field relevant to the
`claims as vibration engineering in the context of high-speed rotating
`machinery, which includes computer disk drives. Ex. 1009 ¶ 20.
`Petitioner’s declarant further states that:
`a person of ordinary skill in the relevant art for the ‘037 patent
`would have at least an undergraduate degree in the field of
`mechanical engineering or an equivalent engineering degree.
`Additionally, a person of ordinary skill in the art would have at
`least two years of experience in the design of rotating disk drives
`or other high-speed rotating machinery, either in industry or
`academia, or a comparable amount of combined education and
`equivalent work experience with respect to the design of rotating
`disk drives or other high-speed rotating machinery.
`Id. ¶ 21.
`Patent Owner’s declarant, Dr. David B. Bogy, agrees with Dr. Shen’s
`assessment of the level of skill in the art, stating that a person of ordinary
`skill in the art “would likely be a person with a bachelor’s degree in
`mechanical engineering with two to five years of teaching or work
`experience in the relevant field.” Ex. 2002 ¶ 17. However, the relevant field
`for Patent Owner is described as and limited to “optical disk player art.” Id.
`at ¶ 18. Indeed, Patent Owner argues that the pertinent and only relevant art
`is that of disk players and not vibration engineering. PO Resp. 56–57 (citing
`
`13
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`Ex. 1009 ¶ 20). With the field so narrowed, Patent Owner contends that the
`dynamic balancing of rotating objects in general is not applicable to the ’037
`patent and has nothing to do with disk players. Id.; see Ex. 2002 ¶ 18.
`We agree with level of skill in the art cited by the parties, but disagree
`with Patent Owner that the pertinent field is limited to the field of optical
`disk players. Instead, we agree with Petitioner that the field is vibration
`engineering in the context of high-speed rotating bodies or machinery. See,
`e.g., Ex. 1001, 1:24–33 (characterizing that field of endeavor as generally
`relating to a disk player, turntable, clamper and spindle motor and, in
`particular, to “a disk player having a self-compensating dynamic balancer
`for restricting internal vibrations generated due to an eccentric center of
`gravity of a disk,” as well as a turntable, clamper, and spindle motor
`incorporating the same).
`We also note that Petitioner argues that “[b]etween July 1996 and
`October 1997, at least nine independent patent applications were filed
`disclosing a dynamic balancer in combination with a disk player as claimed
`in the ‘037 patent. Pet. 11 (citing Ex. 1040 (priority filing date Jul. 19,
`1996); Ex. 1041 (priority filing date Sep. 17, 1996); Ex. 1001 (priority filing
`date Oct. 9, 1996); Ex. 1042 (filed Dec. 21, 1996); Ex. 1044 (priority filing
`date Dec. 26, 1996); Ex. 1045 (filed Apr. 9, 1997); Ex. 1047 (priority filing
`date Apr. 16, 1997); Ex. 1048 (priority filing date June 25, 1997); Ex. 1049
`(priority filing date Jul. 3, 1997); Ex. 1009 ¶¶ 58–64). Petitioner argues that
`these filings within a year of the critical date of the ’037 patent are strong
`evidence of independently reached simultaneous invention that support
`obviousness of the claimed invention. Pet. 12 (citing Geo. M. Martin Co. v.
`14
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010)
`(“Independently made, simultaneous inventions, made ‘within a
`comparatively short space of time,’ are persuasive evidence that the claimed
`apparatus ‘was the product only of ordinary mechanical or engineering
`skill.’”) (quoting Concrete Appliances Co. v. Gomery, 269 U.S. 177, 184
`(1925)). Although these related references are not prior art and do not serve
`as the basis of the grounds instituted for this trial, they nonetheless provide
`additional support for our determination that the field of invention includes
`vibration engineering for high speed rotating bodies or machinery.
`
`C. Obviousness based on Nishida and Hellerich
`1. Nishida (Ex. 1003)
`Nishida discloses “[a] magnetic disk apparatus [that] includes a base
`coupled to a supporting frame by means of a damping member so that the
`vibration caused by the operation of the internal actuator subsides.”
`Ex. 1003, [57]. Figure 3, reproduced below, depicts a view of the magnetic
`disk apparatus.
`
`15
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`
`
`Figure 3 shows magnetic disk apparatus 20 with magnetic recording disk 21,
`spindle 22 for rotating disk 21 at a constant revolutional speed, magnetic
`head 23 for reading and writing data on disk 21, carriage 24 which supports
`magnetic head 23, voice coil motor (VCM) including a coil 26 and a
`magnetic circuit 27 for swinging the carriage 24 around a pivot 25 so as to
`position the magnetic head 23 to an intended position on the disk 21.
`Ex. 1003, 3:35–43.
`
`2. Hellerich (Ex. 1002)
`Hellerich discloses “[a] plurality of small, round, heavy balls []
`enclosed within a continuous, hollow, annular tube [where] the tube is
`attached to [various areas of] a rotary disc pack memory . . . to dynamically
`balance it.” Ex. 1002, [57]. Figures 2 and 5, reproduced below, depict a
`dynamic balancer (Fig. 5) provided within a rotating disk assembly (Fig. 2).
`
`16
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`
`
`
`Figure 2 shows disk pack assembly 10 and hub 12 that is turned by
`disk drive shaft 14 (not shown). Ex. 1002, 2:48–51. Figure 5 shows tube 50
`and mass members 52. Id. at 3:50–64. “[M]ass members 52 are free to
`move within the hollow of [] tube 50 and thus are free to locate at any point
`which will compensate for rotational eccentricity caused by imbalance of the
`complete disc pack.” Id. at 4:2–6. The location of tube 50 in the disc pack
`is a matter of design and depends upon the configuration of the disc pack
`assembly. Id. at 4:7–9.
`
`3. Analysis
`Petitioner contends that Nishida teaches the claimed features of the
`disk player recited in claims 1, 8–11, and 15–18, except for the dynamic
`balancer functional limitations as recited in these claims. Pet. 18–32.
`Petitioner turns to Hellerich as teaching these claim features. Id. Petitioner
`contends that it would have been obvious to combine the disk player of
`Nishida with the balancer of Hellerich. Id. at 18. Petitioner provides an
`analysis, including citations to the references, and citations to the
`Declaration of Dr. Shen (Ex. 1009), in support of its contentions. Pet. 18–
`32. Petitioner provides evidence and argument that the combination of
`Nishida and Hellerich discloses the disk player and dynamic balancer, the
`17
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`position of the dynamic balancer, and the functional limitations regarding
`vibration of the rotating disk as disclosed in claim 1. Pet. 14–15, 18–29
`(citing Ex. 1009 ¶¶ 81–83, 95, 107–08, 112–15, 125, 126, 130–33, 135–37,
`140–42, 146, 157–59, 223–25, 234–36). In addition, Petitioner provides
`persuasive reasoning in support of the combination of Hellerich and Nishida.
`Pet. 21. Specifically, Petitioner cites evidence and testimony that the
`application of dynamic balancers to rotational bodies was widely known and
`applied (id. at 8–12), and provides a sufficient rationale to combine the disk
`assembly of Nishida with the dynamic balancer of Hellerich (id. at 21).
`Petitioner contends that “the combination of the Nishida disk player with the
`dynamic balancer taught by Hellerich would amount to nothing more than
`combining prior art elements according to known methods to yield
`predictable results.” Id. at 21 (citing Ex. 1009, ¶¶ 127, 129). With respect
`to dependent claims 8–11 and 15–18, which provide additional limitations
`on the structure of the dynamic balancer, Petitioner has provided persuasive
`evidence and argument to support its contention that Nishida and Hellerich
`teach the limitations of claims 8–11 and 15–18. Pet. 29–32.
`Patent Owner contends that Nishida and Hellerich do not teach the
`claim 1 requirement that the “center of gravity of said self-compensating
`dynamic balancer moves to be located opposite to the center of gravity of
`said disc with respect to said rotation axis” because these features do not
`occur in Hellerich or Nishida alone or in combination. PO Resp. 7 (citing
`Ex. 2002 ¶¶ 49–64). Patent Owner argues that the Hellerich load balancer is
`based on the center of gravity of the entire disc pack and not the disk itself
`
`18
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`as recited in the claims, thus Hellerich in combination with Nishida does not
`meet the limitation of claim 1. PO Resp. 7–19.
`We are not persuaded by Patent Owner’s argument that “the
`[Hellerich and Nishida] combination’s focus on compensating for imbalance
`of an entire disc pack assembly [in Hellerich] is very different from the
`claim 1 focus on just one disc.” PO Resp. 8; see id. at 11 (citing Ex. 2002
`¶¶ 58–61). We credit the testimony of Petitioner’s declarant, Dr. Shen, who
`testifies that claim recitation for the dynamic balancer are the functional
`recitations of the well-known dynamic balancer. See Pet. 23–24 (citing
`Ex. 1009 ¶¶ 41–44, 112–15, 132–33, 157–59, 223–25, and 234–36).
`Patent Owner’s argument that the physics principles behind dynamic
`balancers are not evident in the Hellerich disclosure, which use such
`balancers, ignores the functional principles applicable to dynamic balancers
`as understood by a person of ordinary skill in the art. PO Resp. 11–16.
`During cross-examination, Patent Owner’s declarant, Dr. Bogy,
`acknowledged that the principles of physics behind the behavior of
`compensating balance balls do not depend on the size of the rotating body,
`and that the natural frequency of the deck plate, which includes everything
`mounted on the deck plate, depends on universal principles as well.
`Ex. 1061, 94:13–96:12, 97:22–102:10. Petitioner has also provided
`persuasive evidence that the functional performance of the balancer as
`recited in the limitations of claim 1 do not change whether the balancer of
`Hellerich balances a disc pack or single disc as applied in Nishida. Pet.
`Reply 7 (citing Ex. 1009 ¶¶ 30, 34, 41, 44, 113). Thus, we are not persuaded
`by Patent Owner’s arguments that the center of gravity of a disc pack (as
`19
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`taught in Hellerich) differ significantly from the center of gravity for a disc
`(as taught Nishida) such that the physics principles of a dynamic balancer
`would operate differently and not align “opposite to” the center of gravity, as
`recited in claim 1. Petitioner’s testimony and argument indicate that it is
`within the knowledge of a person of ordinary skill in the art to apply the
`known principles of a dynamic balancer used with rotating bodies, as taught
`in Hellerich, to the disc of Nishida that would yield the same functional
`results from the operation of the dynamic balancer. Pet. Reply 7–8, 12–13.
`Patent Owner contends that, because Nishida solves the dampening of
`vibrations problem “one skilled in the art at the time of invention would not
`have introduced Hellerich’s dynamic balancer into Nishida, because there is
`no logical reason to solve a problem that is already solved in Nishida itself.”
`PO Resp. 22. We disagree with Patent Owner. We credit the unrebutted
`evidence from Petitioner’s declarant, Dr. Shen, that the Nishida damping
`solution did not eliminate all vibrations known to persons of ordinary skill in
`the art. Pet. 20; Ex. 1009 ¶ 125; see Ex. 1003, 4:30–54. Patent Owner’s
`declarant, Dr. Bogy, also supports Petitioner’s contention that Nishida did
`not address disk vibrations caused by imbalances or the sources of vibrations
`not expressly discussed in Nishida. Pet. Reply 14–15 (citing Ex. 1061,
`111:12–14, 128:19–130:17). We also are persuaded by Petitioner’s evidence
`and testimony that applying the teachings of Hellerich to reduce vibrations
`applied to the disk player in Nishida would yield predictable results. Pet.
`20–21 (citing Ex. 1009 ¶¶ 126, 127, 129, 135–37; Ex. 1002, 1:12–20, 2:3–
`10). Thus, we do not find that Nishida’s approach to vibrations forestalls or
`otherwise prohibits the use of Hellerich’s dynamic balancer.
`20
`
`
`
`
`
`IPR2015-01659
`Patent 7,367,037 B2
`
`Finally, we do not find availing Patent Owner’s argument that Nishida
`and Hellerich do not disclose disc players in accordance with the ’037 patent
`claims because they are not removable optical recording media. PO Resp.
`26–28. Because we find in our claim construction section above that the
`broadest reasonable construction of “disc player” is not limited to optical
`recording media or an optical pick up, Patent Owner’s arguments are based
`on an erroneous claim construction and unpersuasive. See supra Section
`II.A.1.
`We find that Petitioner has provided persuasive argument and
`evidence that Hellerich and Nishida teach the scientific and functional
`limitations of claim 1, showing that the scientific principles governing
`dynamic balancers as applied to the disk assemblies in Hellerich and Nishida
`are well-known and conventional. Pet. 17, 23–29; Pet. Reply 7–13.
`Based on the full record developed during trial, we adopt Petitioner’s
`argument and evidence that Nishida and Hellerich teach the limitations of
`claims 1, 8–11, and 15–18. Pet. 18–32; see Pet. Reply 6–16. Accordingly,
`Petitioner has shown by a preponderance of the evidence that there claims 1,
`8–11, and 15–18 are unpatentable as obvious under 35 U.S.C § 103(a) over
`Nishida and Hellerich.
`D. Obviousness based on Nishida, Hellerich, and Kilgore
`Petitioner contends that the combination of Nishida, Hellerich, and
`Kilgore teach the limitation of
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
