throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 8
`Entered: October 26, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BIXOLON CO., LTD.,
`Petitioner,
`
`v.
`
`SHINHEUNG PRECISION CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01068
`Patent 6,629,666 B2
`____________
`
`
`Before KEN B. BARRETT, BARRY L. GROSSMAN, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

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`Case IPR2016-01068
`Patent 6,629,666 B2
`
`
`I. INTRODUCTION
`
`Bixolon Co., Ltd. (“Petitioner”) filed a Petition requesting an inter
`
`partes review of claims 1–18 of U.S. Patent No. 6,629,666 B2 (Ex. 1001,
`
`“the ’666 patent”). Paper 1 (“Pet.”). In response, Patent Owner, ShinHeung
`
`Precision Co., Ltd., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`
`35 U.S.C. § 314 provides that an inter partes review may not be instituted
`
`“unless . . . the information presented in the petition . . . shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.”
`
`For the reasons set forth below, we deny institution of an inter partes
`
`review of the ’666 patent.
`
`A. Related Matter
`
`According to Petitioner, the ’666 patent is involved in the following
`
`lawsuit: ShinHeung Precision Co., Ltd. v. Bixolon Co., Ltd. et al., 2:16-cv-
`
`00109-CAS-SS (C.D. Cal.). Pet. 1.
`
`B. The ’666 Patent
`
`The ’666 patent relates to a printer “for detecting a termination of a
`
`web of printing medium that is continuously fed from a supply reel.”
`
`Ex. 1001, 1:8–11. Figure 2 of the ’666 patent is reproduced below.
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`Figure 2 depicts the detecting device of a printer according to the ’666
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`patent. Id. at 3:65–67. Printer frame 110 includes “a first printing medium
`
`detecting means 210 and a second printing medium detecting means 220 for
`
`non-contact detecting the termination of the printing medium.” Id. at 4:50–
`
`54. Detecting means 210/220 include windows 111/112 for transmitting
`
`light, photo sensor modules 211/221 for emitting light to the windows and
`
`detecting light reflected from the windows, and housings 212/222 having
`
`apertures 217, for movably supporting the sensor modules. Id. at 5:13–23,
`
`Figs. 2, 4A, 4B. Because both first and second detecting means are
`
`provided, termination of the printing medium can be detected “in a desktop
`
`posture or wall mount posture without having to adjust an initially set
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`posture” of the detecting device. Id. at 2:53–58, 4:31–38, Figs. 2–3.
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`Patent 6,629,666 B2
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`Figure 9A of the ’666 patent is reproduced below.
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`
`
`Figure 9A depicts printer frame 110 positioned in a horizontal,
`
`desktop posture. Id. at 5:3–7. Figure 9A also depicts, in broken line, an
`
`original diameter of printing medium roll 1 and depicts, in solid line, a
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`reduced diameter of the roll. Id. at 5:3–7, 7:11–15. When the diameter is so
`
`reduced, the roll of printing medium sits in the lowest portion of frame 110,
`
`along guiding end 123. Id. In such a position,
`
`one end of the roll is exposed through the window 112 . . . [and]
`light emitted from the photo sensor module 221 is reflected
`back to the photo sensor module 221. In response, the main
`controller (not shown) outputs the results in the form of an
`electric signal.
` Accordingly,
`information
`indicating
`the
`termination or near-termination of the printing medium 1 is
`detected, and this information is conveyed to the user through a
`display or a certain form of an alarm.
`
`Id. at 7:16–25; see also id. at 5:8–12, 7:26–37, Fig. 9B (explaining
`
`comparable operation of sensor module 211 when printer frame 110 is
`
`mounted in a vertical, wall mount posture).
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`Patent 6,629,666 B2
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`Figure 2 of the ’666 patent, reproduced above, also depicts position
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`adjusting means 300, which adjusts the initial set position of first and second
`
`detecting means 210/220 according to the initial diameter of the roll of
`
`printing medium. Id. at 4:55–60, 8:27–35. Position adjusting means 300
`
`includes rotary knob 310 with lever 320 and first and second cam grooves
`
`311/312, which constrain cam pins 213/223 provided on housings 212/222
`
`of detecting means 210/220. Id. at 6:1–12, Figs. 6A–6B. Therefore, to set
`
`the initial position of the detecting means,
`
`rotary lever 320 is rotated in direction a or b, [such that] the
`position adjusting means 300 moves the housing 212 in
`direction c or d according to the cam following movement of
`the first and the second cam grooves 311 and 312 and the cam
`pins 213 and 223. At the same time, the housing 222 is moved
`in a direction e or f. As a result, according to the diameter of
`the roll of the printing medium 1 in use, the detection points of
`the photo sensor modules 211 and 221 can be adjusted higher or
`lower within the windows 111 and 112, and the initial set
`position of the photo sensor modules 211 and 221 can be
`adjusted easily.
`
`Id. at 8:41–53, Fig. 8.
`
`C. Illustrative Claim
`
`Challenged claims 1 and 6 are independent. Challenged claims 2–5
`
`depend directly or indirectly from claim 1, and challenged claims 7–18
`
`depend directly or indirectly from claim 6.
`
`Claim 1, reproduced below, is illustrative:
`
`An apparatus of a printer for detecting a
`1.
`
`termination of a printing medium, comprising:
`a frame, the frame housing and supporting a roll of the
`printing medium;
`printing medium detecting means for non-contact
`detecting of the termination or a near-termination of the
`
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`Patent 6,629,666 B2
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`printing medium according to a varying diameter of the roll of
`the printing medium; and
`position adjusting means for adjusting an initial set
`position of the printing medium detecting means according to
`an initial diameter of the roll of the printing medium;
`wherein the position adjusting means comprises:
`a cam pin formed on a housing; and
`a rotary knob rotatably mounted on the frame, and having
`a cam groove for linearly reciprocating the housing in
`cooperation with the cam pin which is contained in the cam
`groove and movable along the cam groove.
`
`Ex. 1001, 9:64–10:14.
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the following prior art references:
`
`
`
`
`
`
`
`
`
`Duncan
`
`Hosomi
`
`Hsu
`
`Sato
`
`
`
`
`
`
`
`US 5,138,150
`
`US 5,820,068
`
`US 5,857,364
`
`US 6,502,784 B1
`
`
`
`
`
`
`
`
`
`Aug. 11, 1992
`
`(Ex. 1004)
`
`Oct. 13, 1998
`
`(Ex. 1002)
`
`Jan. 12, 1999
`
`(Ex. 1005)
`
`Jan. 7, 2003
`
`(Ex. 1003)
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`References
`Hosomi and Sato
`
`Challenged Claims
`Basis
`§ 103(a) 6–10, 18
`
`Hosomi, Sato, and Duncan
`
`§ 103(a) 11–13
`
`Hosomi, Sato, and Hsu
`
`§ 103(a) 1–5, 14–27
`
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`II. ANALYSIS
`
`A. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that 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).
`
`Petitioner proposes constructions for the following terms and phrases,
`
`in accordance with 35 U.S.C. § 112, sixth paragraph: “printing medium
`
`detecting means,” “position adjusting means,” and “guiding means.” Pet.
`
`12–16. For purposes of this proceeding, Patent Owner does not challenge
`
`Petitioner’s proposed constructions. Prelim. Resp. 12.
`
`On the record before us, we need not construe explicitly this language
`
`in reaching our Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999).
`
`B. Asserted Ground of Obviousness over Hosomi and Sato
`
`Petitioner contends that claims 6–10 and 18 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Hosomi and Sato. Pet. 17–39. To
`
`support this contention, Petitioner provides explanations and claim charts
`
`specifying how claim limitations are disclosed or suggested purportedly in
`
`the references, and why one skilled in the art would have found it obvious to
`
`combine them. Id. Petitioner cites the Declaration of Charles Curley (Ex.
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`1006) in support. Id. Patent Owner challenges Petitioner’s contentions.
`
`Prelim. Resp. 12–36.
`
`For the reasons that follow, we determine that the information
`
`presented in the Petition fails to establish a reasonable likelihood that
`
`challenged claims 6–10 and 18 are unpatentable over Hosomi and Sato.
`
`1. Hosomi
`
`Hosomi discloses “a printer comprising paper end detecting means for
`
`detecting the remaining amount of rolled recording paper . . . even when the
`
`printer is installed at different angles.” Ex. 1002, 1:6–8, 1:60–64. Figure 1
`
`of Hosomi is reproduced below.
`
`Figure 1 depicts a printer with the cover frame opened. Id. at 3:13–
`
`15. Paper end detector 24 is attached to printer frame 13. Id. at 4:45–51.
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`Figure 9 of Hosomi is reproduced below.
`
`
`
`Figure 9 depicts details of paper end detector 24. Id. at 3:38–39.
`
`Detector 24 includes detector frame 62 and detector lever 63, with detector
`
`element 64 and detector projection 65 extending from the lever. See id. at
`
`6:36–59, Figs. 7, 9. Detector 24 also includes limit switch 67, such that
`
`when lever 63 is rotated, as shown in broken line in Figure 9, the limit
`
`switch is turned on or off. Id. at 7:5–9. Specifically, when a large amount
`
`of paper is present in the printer, either “detecting element 64 or the
`
`projection 65 of the detection lever 63 abuts against the side face of the
`
`recording paper . . . [such that] the detection lever 63 is pressed backward
`
`and the limit switch 67 is kept to be in the off state.” Id. at 8:40–45, Fig. 9
`
`(hashed line), Fig. 11a. By contrast,
`
`[i]n the case where the recording paper S has a very small
`remaining amount . . . the recording paper S is moved and the
`detecting element 64 of the detection lever 63 enters the space
`76 in a core portion 75, with the result that the limit switch 67 is
`set to be [in] the [on] state. A signal indicative of the above is
`coupled to a main circuit board (not shown) which is connected
`by an FFC or the like and controls the printer.
`
`Id. at 9:14–21; see id. at 8:35–39, Fig. 9 (solid line), Fig. 11b.
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`Hosomi also discloses that detector 24 includes elongated hole 72
`
`through which bolt 25 passes. Id. at 7:19–24, Figs. 7–8. This hole and bolt
`
`arrangement permits detector 24 to rotate about bolt 25 (see id. at 4:45–48,
`
`8:9–11), and permits the position of detector lever 63 to be adjusted along
`
`the length of elongated hole 72, to accommodate recording paper cores
`
`having different widths (id. at 8:18–34).
`
`Hosomi discloses that, alternatively, “[t]he paper end detecting means
`
`is not restricted to that using a limit switch. For example, means for
`
`optically detecting the end of the recording paper may be used.” Id. at
`
`10:21–26.
`
`2. Sato
`
`Sato discloses a “device for detecting [the] remaining quantity of
`
`rolled papers,” including lever 7, which has first and second optical
`
`detecting devices 7c/7d thereon. Ex. 1003, Abstract, 2:21–26. When used
`
`with a quantity of paper having a small core, the first detecting device 7c
`
`detects the presence or absence of paper. Id. at 2:40–65. When used with a
`
`quantity of paper having a large core, the second detecting device 7d detects
`
`the presence or absence of paper. Id. at 2:66–3:20.
`
`3. Level of Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art of the ’666
`
`patent would have had (a) a bachelor’s degree in electrical engineering or
`
`mechanical engineering (or comparable degree), as well as two years of
`
`experience in printer design, or (b) a master’s degree in electrical
`
`engineering or mechanical engineering (or comparable degree). Pet. 11–12
`
`(citing Ex. 1006 ¶ 40). Patent Owner does not state a proposed level of skill
`
`in the art in its Preliminary Response; however, the Declaration of Dr. Andre
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`Sharon, submitted with Patent Owner’s Preliminary Response, indicates that
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`Dr. Sharon agrees with Petitioner’s identification of the appropriate level of
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`skill in the art. Ex. 2005 ¶ 10.
`
`At this stage of the proceeding, we determine that it is not necessary
`
`to establish a specific level of skill in the art. The level of ordinary skill in
`
`the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261
`
`F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`4. Independent Claim 6
`
`Independent claim 6 recites, inter alia, “printing medium detecting
`
`means for non-contact detecting . . . and position adjusting means for
`
`adjusting an initial set position of the printing medium detecting means.”
`
`Ex. 1001, 10:52–53, 58–60.
`
`With respect to the claimed “printing medium detecting means for
`
`non-contact detecting,” Petitioner relies upon Hosomi’s “paper end detector
`
`24 [which] includes the detecting element 64 ‘for optically detecting the end
`
`of the recording paper.’” Pet. 18, 20, 29–31. With respect to the claimed
`
`“position adjusting means,” Petitioner relies upon Hosomi’s bolt 25 and
`
`elongated hole 72, which are associated with paper end detector 24. Pet. 19–
`
`20, 31–32.
`
`Patent Owner contends, inter alia, that Hosomi does not disclose the
`
`claimed “printing medium detecting means for non-contact detecting,”
`
`because Hosomi’s detector 24 operates by physical contact of detecting
`
`element 64 with the recording paper to be detected. Prelim. Resp. 29–31.
`
`Patent Owner contends that Hosomi’s disclosure of optical detection is not
`
`associated with detecting element 64. Id. at 33.
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`We agree with Patent Owner. Petitioner relies upon Hosomi’s
`
`disclosure of “means for optically detecting the end of the recording paper”
`
`(see Ex. 1002, 10:21–23) to satisfy the claimed “printing medium detecting
`
`means for non-contact detecting.” Pet. 18, 29. However, Hosomi discloses
`
`that this structure is an alternative to Hosomi’s contact-based detector 24
`
`(Ex. 1002, 10:21–26). Therefore, Petitioner’s reliance on structure
`
`associated with contact-based detector 24 to satisfy the claimed “position
`
`adjusting means” is deficient because that structure appears mutually
`
`exclusive to Hosomi’s “means for optically detecting.” The Petition’s
`
`suggestion that these mutually exclusive embodiments are utilized together
`
`(see Pet. 18; Ex. 1006 ¶ 86) is unsupported by persuasive explanation or
`
`evidence of record in this proceeding, as discussed below.
`
`Hosomi discloses, primarily, a contact-based mechanism for detecting
`
`paper. Specifically, Hosomi discloses detector 24, which includes detection
`
`frame 62 and detection lever 63. Ex. 1002, 6:32–40. Hosomi specifies that
`
`detection lever 63 includes detecting element 64 for “abut[ting] against a
`
`side end face of the recording paper,” e.g., detecting element 64 contacts the
`
`recording paper. Id. at 6:47–49, 8:40–45. Hosomi also specifies that
`
`detection frame 62 includes limit switch 67, such that “[w]hen the detection
`
`lever 63 is rotated, the limit switch 67 is turned on or off” to indicate the
`
`remaining amount of paper. Id. at 7:3–13, 8:40–9:21, Figs. 7, 9, 11a–11b.
`
`In this contact-based embodiment, Hosomi specifies that the detection frame
`
`62 includes a grip portion 69, in which an oblong hole 72 is created, with
`
`bolt 25 passing therethrough. Id. at 7:3–24.
`
`As an apparently mutually exclusive alternative to contact-based
`
`detector 24, Hosomi also discloses that optical detection may be employed.
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`Id. at 10:21–26. Indeed, Hosomi specifies that detection is not limited to
`
`that achieved with the limit switch of detector 24 and may be achieved
`
`instead by “means for optically detecting.” Id. at 10:21–23 (“The paper end
`
`detecting means is not restricted to that using a limit switch. For example,
`
`means for optically detecting the end of the recording paper may be used.”).
`
`Therefore, in the optical detection embodiment disclosed by Hosomi, the
`
`entire contact-based detector 24, with its associated detecting element 64 and
`
`limit switch 67, appears to be replaced by “means for optically detecting,”
`
`about which Hosomi provides no detailed discussion. Id.
`
`Patent Owner is correct that the Petition’s attempt to tie detecting
`
`element 64 of Hosomi’s contact-based detector 24 to Hosomi’s “means for
`
`optically detecting” is unsupported by Hosomi, which discloses the “means
`
`for optically detecting” to be independent from contact-based detector 24.
`
`Prelim. Resp. 32; see also Pet. 18, 29; Ex. 1002, 10:21–26. The Petition’s
`
`sole citation to Hosomi at column 10, lines 21–23 does not suggest that
`
`contact-based detecting element 64 is used in conjunction with optical
`
`detection means. Pet. 18, 29. Rather, the cited portion of Hosomi states that
`
`the detecting means “is not restricted to that using [the] limit switch [67]” of
`
`Hosomi’s contact-based detector 24 but, instead, “means for optically
`
`detecting the end of the recording paper may be used.” Ex. 1002, 10:21–23;
`
`see also id. at 10:23–26 (disclosing advantages associated with use of the
`
`limit switch). Therefore, Hosomi states that as an alternative to limit switch
`
`67, and its associated detection lever 63, an optical detector may be used, but
`
`Hosomi does not state that the two detection mechanisms are utilized
`
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`Although it may be feasible for Hosomi’s means for optically
`
`detecting to be used together with Hosomi’s contact-based detector 24, the
`
`Petition presents no persuasive technical reasoning or evidence to establish
`
`that such use would have been obvious to a person of ordinary skill in the
`
`art. Indeed, the Petition does not explain persuasively whether a person of
`
`ordinary skill in the art would have understood Hosomi’s “means for
`
`optically detecting” to be used in conjunction with Hosomi’s contact-based
`
`detector 24, in light of Hosomi’s disclosure or the knowledge generally
`
`available to a skilled artisan. See generally Pet. 18–20, 29–31. Similarly,
`
`the Curley Declaration fails to explain persuasively whether a person of
`
`ordinary skill in the art would have found it obvious to utilize Hosomi’s
`
`“means for optically detecting” as part of Hosomi’s contact-based detector
`
`24. Ex. 1006 ¶¶ 86–87.
`
`Accordingly, the Petition relies solely on different, mutually exclusive
`
`embodiments of Hosomi to satisfy the elements of claim 6. Namely, the
`
`Petition relies on Hosomi’s disclosure of “means for optically detecting” to
`
`satisfy the claimed “printing medium detecting means for non-contact
`
`detecting,” but relies on structure associated with contact-based detector 24,
`
`e.g., hole 72 and bolt 25, to satisfy the claimed “position adjusting means.”
`
`Pet. 18–20, 29–32. Because these structures appear to be mutually
`
`exclusive, they cannot be relied upon together to satisfy claim 6, without
`
`persuasive evidence or reasoning explaining that their combined use would
`
`have been obvious to a person of ordinary skill in the art. Ex. 1002, 10:21–
`
`26. Furthermore, the Petition does not explain persuasively whether a
`
`person of ordinary skill in the art would have understood these structures to
`
`be capable of use together, instead of being mutually exclusive, and Hosomi
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`does not support such an interpretation. Pet. 18, 29; Ex. 1006 ¶ 86.
`
`Accordingly, we determine that the information presented in the Petition
`
`fails to establish a reasonable likelihood that Petitioner would prevail in
`
`showing that independent claim 6 is unpatentable over Hosomi and Sato.
`
`5. Dependent Claims 7–10 and 18
`
`Because we conclude that Petitioner has not established a reasonable
`
`likelihood of prevailing in showing that independent claim 6 is unpatentable
`
`over Hosomi and Sato, we likewise conclude that the information presented
`
`in the Petition fails to establish a reasonable likelihood that Petitioner would
`
`prevail in showing that claims 7–10 and 18, which depend from claim 6, are
`
`unpatentable over Hosomi and Sato.
`
`C. Asserted Ground of Obviousness over Hosomi, Sato, and Duncan
`
`Petitioner contends that claims 11–13 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Hosomi, Sato, and Duncan. Pet. 40–47.
`
`To support this contention, Petitioner provides explanations and claim charts
`
`specifying how claim limitations are disclosed or suggested purportedly in
`
`the references, and why one skilled in the art would have found it obvious to
`
`combine them. Id. Petitioner cites the Declaration of Charles Curley (Ex.
`
`1006) in support. Id. Patent Owner challenges Petitioner’s contentions.
`
`Prelim. Resp. 36–40.
`
`1. Duncan
`
`Duncan discloses a photoelectric sensor having pivotable shutter 26,
`
`which rotates across aperture 4b of lens 8. Ex. 1004, Abstract, 3:42–58.
`
`2. Dependent Claims 11–13
`
`Petitioner does not contend that Duncan cures the deficiency noted
`
`above with respect to independent claim 6. Pet. 40–47. Therefore, for the
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`same reasons discussed above, we determine that the information presented
`
`in the Petition fails to establish a reasonable likelihood that Petitioner would
`
`prevail in showing that dependent claims 11–13 are unpatentable over
`
`Hosomi and Sato in further combination with Duncan.
`
`D. Asserted Ground of Obviousness over Hosomi, Sato, and Hsu
`
`Petitioner contends that claims 1–5 and 14–17 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Hosomi, Sato, and Hsu. Pet. 47–75. To
`
`support these contentions, Petitioner provides explanations and claim charts
`
`specifying how claim limitations are disclosed or suggested purportedly in
`
`the references, and why one skilled in the art would have found it obvious to
`
`combine them. Id. Petitioner also cites the Declaration of Charles Curley
`
`(Ex. 1006) in support. Id. Patent Owner challenges Petitioner’s contentions.
`
`Prelim. Resp. 40–48.
`
`1. Hsu
`
`Hsu discloses a computer enclosure having a lock that includes cam plate
`
`36, which engages bolts 20/22 and translates rotational motion of the lock
`
`into linear sliding motion of the bolts. Ex. 1005, Abstract, 3:14–20.
`
`2. Dependent Claims 14–17
`
`Claims 14–17 depend from independent claim 6, discussed above.
`
`Petitioner does not contend that Hsu cures the deficiency noted above with
`
`respect to independent claim 6. Pet. 48–54, 58–75. Therefore, for the same
`
`reasons discussed above, we determine that the information presented in the
`
`Petition fails to establish a reasonable likelihood that Petitioner would
`
`prevail in showing that dependent claims 14–17 are unpatentable over
`
`Hosomi and Sato in further combination with Hsu.
`
`16
`
`
`
`

`
`Case IPR2016-01068
`Patent 6,629,666 B2
`
`
`3. Independent Claim 1
`
`Independent claim 1 recites, inter alia, “printing medium detecting
`
`means for non-contact detecting . . . and position adjusting means for
`
`adjusting an initial set position of the printing medium detecting means.”
`
`Ex. 1001, 10:1–6.
`
`The Petition’s analysis of claim 1 incorporates the Petition’s analysis
`
`of claim 6, which was discussed above. Pet. 48 (for claim 14, incorporating
`
`the analysis of claim 6), 54 (for claim 1, incorporating the analysis of claim
`
`14). Specifically, with respect to the claimed “printing medium detecting
`
`means for non-contact detecting,” Petitioner relies upon Hosomi’s “paper
`
`end detector 24,” “detecting element 64,” and disclosure of optical detection
`
`as presented in Hosomi column 10. Id. at 48, 54, 60. With respect to the
`
`claimed “position adjusting means,” Petitioner relies upon Hosomi’s bolt 25
`
`and elongated hole 72, wherein Hosomi’s structure is modified in view of
`
`Sato and Hsu to address the claimed cam pin, rotary knob, and cam groove.
`
`Id. at 48–54, 61–62.
`
`Patent Owner contends, inter alia, that Hosomi does not disclose the
`
`claimed “printing medium detecting means for non-contact detecting,” as
`
`argued with respect to claim 6. Prelim. Resp. 41. Patent Owner also
`
`contends that Hsu does not remedy this deficiency. Id. at 42.
`
`As discussed above with respect to claim 6, the Petition relies on
`
`different, mutually exclusive embodiments of Hosomi to satisfy the elements
`
`of claim 1. Namely, the Petition relies on Hosomi’s optical detection
`
`embodiment to teach the claimed “detecting means for non-contact
`
`detecting,” but relies on structure associated with contact-based detector 24
`
`to teach the claimed “position adjusting means.” Pet. 48–54, 60–62. The
`
`17
`
`
`
`

`
`Case IPR2016-01068
`Patent 6,629,666 B2
`
`Petition does not explain persuasively whether these structures are capable
`
`of being utilized together, and Hosomi does not support such an
`
`interpretation.
`
`Petitioner does not contend that Hsu cures this deficiency. Therefore,
`
`for the same reasons discussed above, we determine that the information
`
`presented in the Petition fails to establish a reasonable likelihood that
`
`Petitioner would prevail in showing that independent claim 1 is unpatentable
`
`over Hosomi, Sato, and Hsu.
`
`4. Dependent Claims 2–5
`
` Because we conclude that Petitioner has not established a reasonable
`
`likelihood of prevailing in showing that independent claim 1 is unpatentable
`
`over Hosomi, Sato, and Hsu, we likewise conclude that the information
`
`presented in the Petition fails to establish a reasonable likelihood that
`
`Petitioner would prevail in showing that claims 2–5, which depend from
`
`claim 1, are unpatentable over Hosomi, Sato, and Hsu.
`
`III. CONCLUSION
`
`
`
`For the foregoing reasons, we conclude that there is not a reasonable
`
`likelihood that Petitioner would prevail in showing that claims 1–18 of
`
`the ’666 patent are unpatentable.
`
`Upon consideration of the record before us, it is:
`
`IV. ORDER
`
`ORDERED that the Petition is denied as to all challenged claims, and
`
`no trial is instituted.
`
`18
`
`
`
`
`
`

`
`Case IPR2016-01068
`Patent 6,629,666 B2
`
`
`PETITIONER:
`
`Kyle Choi
`kyle.choi@bakermckenzie.com
`
`Matt Dushek
`matt.dushek@bakermckenzie.com
`
`Daniel Tallitsch
`daniel.tallitsch@bakermckenzie.com
`
`
`
`PATENT OWNER:
`
`Robert Hilton
`rhilton@mcguirewoods.com
`
`George Davis
`gdavis@mcguirewoods.com
`
`
`
`19

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