Paper No. 14
`Trials@uspto.gov
`Entered: March 15, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ams AG, AMS-TAOS USA INC.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG ELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
`
`511 INNOVATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01810
`Patent 6,307,629 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`Trials@uspto.gov
`Entered: March 15, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ams AG, AMS-TAOS USA INC.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG ELECTRONICS CO. LTD.,
`Petitioner,
`
`v.
`
`511 INNOVATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01810
`Patent 6,307,629 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-01810
`Patent 6,307,629 B1
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`I. INTRODUCTION
`
`A. Background
`ams AG, AMS-TAOS USA Inc., Samsung Electronics America, Inc.,
`and Samsung Electronics Co., Ltd. (collectively, “Petitioner”) filed a
`Petition (Paper 3, “Pet.”) to institute an inter partes review of claims 1, 2, 7,
`30, and 98 of U.S. Patent No. 6,307,629 B1 (Ex. 1001, “the ’629 patent”).
`511 Innovations, Inc. (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”). Upon consideration of the Petition and
`Preliminary Response, we conclude, under 35 U.S.C. § 314(a), that
`Petitioner has established a reasonable likelihood that it would prevail with
`respect to each of the challenged claims. Accordingly, we institute an inter
`partes review of claims 1, 2, 7, 30, and 98 of the ’629 patent.
`
`B. Related Matters
`The parties indicate that the ’629 patent and other patents in the same
`family have been asserted in various lawsuits filed in the United States
`District Court for the Eastern District of Texas, including 511 Innovations,
`Inc. v. Samsung Telecommunications America, LLC, No. 2:15-cv-01526
`(E.D. Tex.). Pet. 1; Paper 6, 3.
`
`C. Evidence Relied Upon
`Petitioner relies on the following prior art:
`Ex. 1003 (“Farrar”)
`
`US 4,653,905
`Ex. 1010 (“Zimmerman”)
`US 5,103,085
`
`Mar. 31, 1987
`Apr. 7, 1992
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`Ex. 1011 (“JP ’028”)1
`Nov. 6, 1989
`H01-276028
`
`Apr. 26, 1983
`US 4,381,523
`
`Ex. 1012 (“Eguchi”)
`Texas Instruments, TSL230, TSL230A, TSL230B Programmable
`Light-To-Frequency Converters (Mar. 1994) (Ex. 1005, “TSL230
`Datasheet”).
`
`Petitioner also relies on the Declaration of R. Jacob Baker, Ph.D.
`(Ex. 1015, “Baker Decl.”).
`
`
`D. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`Reference(s)
`Basis
`Claims Challenged
`Farrar and TSL230 Datasheet
`§ 103(a)
`1, 2, 7, and 30
`
`Zimmerman and TSL230 Datasheet
`
`§ 103(a)
`
`1, 2, 7, and 30
`
`JP ’028 and TSL230 Datasheet
`
`§ 103(a)
`
`1, 2, 7, 30, and 98
`
`§ 103(a)
`
`1, 2, 7, 30, and 98
`
`Eguchi
`
`E. The ’629 Patent
`The ’629 patent describes a hand-held probe for measuring the color
`of objects, such as teeth and fabric. Ex. 1001, 1:10–15. Figure 1,
`reproduced below, illustrates an example:
`
`
`1 Petitioner relies on a certified English translation of published Japanese
`patent application H01-276028. Our citations are to the certified translation.
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`Figure 1 is a block diagram of a color measuring system. Id. at 5:12–14.
`
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`In Figure 1, a probe measures the color of object 20. Probe tip 1
`encloses a plurality of fiber optic fibers. Id. at 5:15–16. The fibers extend
`through probe body 2 and fiber optic cable 3 to light sensors 8, which are
`coupled to microprocessor 10. Id. at 5:29–32. The fibers include source (5)
`and receiver (7) fibers. Light source 11 (e.g., a halogen light source) reflects
`light on cold mirror 6 into source fiber 5, which passes the light to the
`forward end of probe tip 1 and onto object 20. Id. at 6:12–16. The receiver
`fibers 7 are grouped into three groups, corresponding to color components.
`Id. at 5:46–61. Receiver fibers 7 carry light reflected from object 20 to light
`sensors 8. Id. at 6:1–5. Some of the fibers in each group pass through color
`filters and are used to make color measurements. Id. at 5:59–61. In a
`preferred embodiment, the sensors include light-to-frequency converters, in
`particular the Texas Instruments TSL230 product. Id. at 8:60–64.
`The data output from light sensors 8 are passed to microprocessor 10,
`which processes the data to produce a measurement of color and/or other
`characteristics. Id. at 6:35–38. For example, “the present invention also
`may measure translucence and fluorescence characteristics of the object
`being measured, as well as surface texture and/or other surface
`characteristics.” Id. at 3:39–42.
`Claim 1, reproduced below, is illustrative of the claimed subject
`matter:
`
`A method of determining a characteristic of an
`1.
`object or material comprising the steps of:
`receiving light from the object or material;
`coupling received light to one or more sensors;
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`generating at least one signal having a frequency
`proportional to the light intensity received by the
`one or more sensors; and
`determining the characteristic based on the at least one
`signal;
`wherein the light passes through a filter prior to being
`coupled to one or more of the sensors.
`
`
`
`II. ANALYSIS
`Claim Construction
`A.
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–45 (2016). Nevertheless, the ’629 patent is expired.
`Pet. 7; Prelim. Resp. 14. “[T]he Board’s review of the claims of an expired
`patent is similar to that of a district court’s review.” In re Rambus Inc., 694
`F.3d 42, 46 (Fed. Cir. 2012) (internal citations omitted). District courts
`construe claims in accordance with their ordinary and customary meanings,
`as would be understood by a person of ordinary skill in the art, in the context
`of the Specification. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc).
`Petitioner contends that no claim term needs construction. Pet. 7.
`Patent Owner proposes construing the term “characteristic,” recited in
`independent claims 1 and 30. Prelim. Resp. 14–17. Claims 1 and 30 each
`recite a method of determining “a characteristic of an object or material.”
`Patent Owner contends that “‘characteristic’ is described [in the ’629 patent]
`as a property of an object, not simply a position or distance of the object
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`from a probe or measuring apparatus.” Id. at 17. Later in the Preliminary
`Response, Patent Owner distinguishes Farrar, Zimmerman, and Eguchi as
`describing, at most, determining the distance between a probe and an object,
`rather than determining a characteristic of such an object. See id. at 21–22,
`28, 42–43.
`Regarding the ’629 patent, Patent Owner argues that the Specification
`describes examples of characteristics that include color, translucence,
`fluorescence, and surface texture. Id. at 15 (citing Ex. 1001, 3:23–26
`(“measuring the color of objects, reliably and with minimal problems of
`height and angular dependence”), 3:38–41 (“[T]he present invention also
`may measure translucence and fluorescence characteristics of the object
`being measured, as well as surface texture and/or other surface
`characteristics.”), 4:17 (“translucency characteristics of the object being
`measured”), 4:19–20 (“surface texture characteristics of the object being
`measured”), 4:23 (“fluorescence characteristics of the object being
`measured”), 16:50–51 (“surface characteristics (such as texture)”)). In
`contrast, Patent Owner argues, the Specification describes distance between
`a probe and an object as separate from an optical characteristic of the object.
`Id. at 15–16 (citing Ex. 1001, 7:60–68 (“[S]uch perimeter fibers also serve to
`provide information regarding the angle and height of probe tip 1 with
`respect to the surface of the object that is being measured, and also may
`provide information regarding the surface characteristics of the object that is
`being measured.”). Moreover, Patent Owner argues, the ’629 patent
`describes that “surface color or characteristics” can be determined
`independently of the probe height being at its most favorable value. Id. at 16
`(citing Ex. 1001, 13:6–9, 13:14–16).
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`
`We agree with Patent Owner. According to their plain language,
`claims 1 and 30 recite “a characteristic of an object or material.” This
`suggests that the characteristic recited in the claims is intrinsic to the object
`or material, rather than a function of the object’s interaction with a probe.
`This is consistent with the description in the Specification. As reproduced
`above, the Specification uses the word “characteristic” to identify
`determined properties of objects being measured, such as “color,”
`“translucence,” “fluorescence,” and “surface texture.” Although the
`’629 patent does not purport to limit “characteristics” to an enumerated list
`of object properties, each of the exemplary characteristics are intrinsic
`properties of an object that are independent of the interaction between the
`object and a probe. Moreover, the ’629 patent notes the desirability of
`eliminating the dependency of probe height and angle from a color
`determination. Ex. 1001, 2:11–16. This description is further persuasive
`evidence that the ’629 patent draws a distinction between determining
`intrinsic properties of objects (characteristics, such as color and surface
`texture) and the functions of the interactions between the probe and the
`object (e.g., height and angle of the probe relative to the object).
`Accordingly, the plain language of claims 1 and 30, and the consistent
`description in the Specification, are persuasive evidence that “a
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`characteristic of an object or material” is an intrinsic property of the object
`or material.2
`
`B. Asserted Grounds of Unpatentability
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.3 See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`In an obviousness analysis, some reason must be shown as to why a
`person of ordinary skill would have combined or modified the prior art to
`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`
`
`2 We note that our construction is consistent with the District Court’s
`construction of a similar claim term, “optical characteristics of [an/the]
`object” in related patents. Ex. 2001 (Oct. 26, 2016, claim construction order
`in Case No. 2:15-cv-1524), 25 (“intrinsic properties of an object that affect
`the object’s response to light”). Cf. Power Integrations, Inc. v. Lee, 797
`F.3d 1318, 1326–27 (Fed. Cir. 2015) (Although the Board generally is not
`bound by a previous district court interpretation of a claim term, it is
`obligated to acknowledge and consider that interpretation in some
`circumstances.).
`3 The current record does not include evidence of secondary considerations.
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`art may be found explicitly or implicitly in market forces; design incentives;
`the “interrelated teachings of multiple patents”; “any need or problem
`known in the field of endeavor at the time of invention and addressed by the
`patent”; and the background knowledge, creativity, and common sense of
`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
`F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418–21 (2007)).
`
`
`1. Level of Ordinary Skill
`Petitioner contends that a person of ordinary skill in the art would
`have had a bachelor’s degree in electrical engineering, physics, or a related
`field, and two to three years of professional experience in the design and
`development of optoelectronic measurement systems, or, alternatively, an
`advanced degree in physics or electrical engineering. Pet. 7. Patent Owner
`does not propose a level of ordinary skill in the art. At this stage of the
`proceeding, we are persuaded that Petitioner’s proposal is consistent with the
`level of ordinary skill 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).
`For purposes of this Decision, we adopt Petitioner’s statement of the level of
`skill in the art.
`
`
`2. Alleged Obviousness over Farrar and TSL230 Datasheet
`a. Overview of Farrar
`Farrar describes a range finder employing fiber optics. Ex. 1003, 1:6–
`8. Figure 6, reproduced below, illustrates an example:
`
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`Figure 6 is a block diagram of a range finder. Id. at 2:45–46.
`As shown in Figure 6, broadband light 72 from light source 71 (e.g., a
`xenon flash tube) is carried via fiber 26 and focused through lens 31 onto
`object 13. Id. at 3:52–56, 7:37–42. The light reflects off of object 13
`(shown as 36) and is carried via fiber 15 to beamsplitter 69, which directs
`light through filters 67 and 68 to photodetectors 44 and 45, respectively.
`
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`Id. at 3:64–4:6, 7:16–26, 7:47–54. The different wavelengths contained in
`broadband light 72 in effect provide receive fiber 12 with different first and
`second numerical apertures as discerned by photodetectors 44 and 45
`through input filters 67 and 68. Id. at 7:47–51.
`Photodetectors 44 and 45 detect light and provide electrical signals
`corresponding to detected light intensity to amplifiers 46 and 47, which
`provide amplified signals to analog-to-digital converters 48 and 49, which,
`in turn, provide digital representations of light intensity to
`microcomputer 51. Id. at 4:59–65. The amplified and converted output
`signals of photodetectors 44 and 45 are mathematically combined by
`microcomputer 51 to provide a digital display 53 with a measurement of
`distance from object 13 in terms of inches, millimeters, etc. Id. at 5:3–10.
`
`
`b. Overview of TSL230 Datasheet
`TSL230 Datasheet describes a family of Texas Instruments
`programmable light-to-frequency converters, including the TSL230 product.
`Ex. 1005, 5-3. According to TSL230 Datasheet, “[t]he TSL230, TSL230A,
`and TSL230B programmable light-to-frequency converters combine a
`configurable silicon photodiode and a current-to-frequency converter on
`single monolithic CMOS integrated circuits. The output can be either a
`pulse train or a square wave (50% duty cycle) with frequency directly
`proportional to light intensity.” Id. TSL230 Datasheet provides a functional
`block diagram of the products, reproduced below, at page 5-4:
`
`12
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`The figure at page 5-4 is a functional block diagram of a programmable
`light-to-frequency converter.
`Petitioner contends that the TSL230 product described in TSL230
`Datasheet is the same TSL230 product discussed in the ’629 patent at
`column 8, line 60, through column 9, line 7. Pet. 10–11.
`
`
`c. Claims 1, 2, 7, and 30
`Petitioner contends that Farrar’s description of optical fibers 15
`receiving light reflected from surface 13 teaches “receiving light from the
`object or material,” as recited in claim 1. Petitioner contends that a
`description of photodetectors 44 and 45 receiving light from fiber 15 via
`filters 67 and 68 teaches “coupling received light to one or more sensors,” as
`recited in claim 1. As explained above, Farrar describes photodetectors 44
`and 45 generating signals proportional to the received light intensity. Ex.
`1003, 4:59–65. Petitioner contends that a skilled artisan would have
`implemented photodetectors 44 and 45 using TSL230 sensors, as described
`in TSL230 Datasheet, resulting in sensors that “generat[e] at least one signal
`having a frequency proportional to the light intensity received by the one or
`more sensors,” as recited in claim 1. Pet. 10–11. Petitioner argues that
`digitized light intensity values are used to determine “a range [a
`characteristic] of the object’s surface.” Id. at 12 (brackets supplied by
`
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`Petitioner). It is Petitioner’s position that Farrar’s description of determining
`a range or distance from an object teaches “determining a characteristic of
`an object or material,” as recited in claim 1. Id. at 9. Petitioner’s position as
`to independent claim 30 largely tracks its showing for claim 1. Id. at 14.
`In response, Patent Owner argues that Petitioner’s identification of
`“range or distance” as a “characteristic” is inconsistent with a correct
`construction of “characteristic of an object or material,” as recited in
`claims 1 and 30, and that Petitioner does not identify in Farrar any
`description of determining any other alleged characteristic of an object.
`Prelim. Resp. 21. We agree with Patent Owner. As explained in Section I.A
`above, “a characteristic of an object or material,” as recited in claims 1 and
`30, is an intrinsic property of the object or material. Farrar’s description of
`determining a range or distance from an object (a function of the interaction
`between a probe and an object, rather than an intrinsic property of the
`object) does not teach determining “a characteristic of an object or material,”
`as recited in claims 1 and 30. Petitioner does not cite to any other disclosure
`in Farrar or TSL230 Datasheet as evidencing this limitation of claims 1 and
`30.
`
`Accordingly, Petitioner has not shown a reasonable likelihood that it
`would prevail with respect to claims 1 and 30 as obvious over Farrar and
`TSL230 Datasheet. Claims 2 and 7 depend from claim 1. Petitioner’s
`evidence and argument as to these dependent claims do not remedy the
`deficiency in Petitioner’s showing as to claim 1. Accordingly, Petitioner has
`not shown a reasonable likelihood that it would prevail with respect to
`claims 2 and 7 as obvious over Farrar and TSL230 Datasheet.
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`3. Alleged Obviousness over Zimmerman and TSL230
`Datasheet
`a. Overview of Zimmerman
`Zimmerman describes a reflection-type photoelectric proximity
`detector and switch capable of detecting the presence of a finger through
`glass, which allows a person standing outside a store window to control an
`appliance located inside the window. Ex. 1010, Abstract. Figure 1B,
`reproduced below, illustrates an example:
`
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`Figure 1B is a cross-sectional view of an optical assembly of a photoelectric
`proximity detector and switch. Id. at 5:39–43.
`The proximity detector and switch includes array 6 of infrared light
`emitting diodes (“IRLED”), which transmits modulated infrared light
`beams 7, 8 through glass panes 9, 10 and air gap 11. Id. at 6:1–4. A portion
`of beam 8 (shown as 12) is reflected back to infrared phototransistor
`(“IRPT”) 13 by glass pane 10 and a portion (shown as 14) is reflected back
`to IRPT 13 by finger 15. Id. at 6:5–11. Opaque tube 16 restricts the
`acceptance angle of IRPT 13 and minimizes the detection of off-axis
`illumination (e.g., from the sun). Id. at 6:12–16. IRPT 13 converts reflected
`infrared radiation into an electrical signal, which is processed and converted
`into an electrical signal proportional to the amplitude of the received
`radiation. Id. at 6:36–44, 7:26–33. According to Zimmerman, “[t]he system
`can be calibrated to read presence of touch at a desired distance from the
`detector device, by holding a finger at the desired distance and setting the
`gain of the amplifier (32 in FIG. 2) via variable resistor 93 [of FIG. 3] to
`cause a position output at [a] position threshold.” Id. at 8:35–39.
`In some examples, a person outside a store window touches the
`window, coming within a detection range of the photoelectric proximity
`switch, to control a video disk player’s search and play functions, browse a
`store’s merchandise catalog, or view houses listed with a realtor’s office.
`Id. at 9:9–20.
`
`
`b. Claims 1, 2, 7, and 30
`Petitioner contends that Zimmerman’s description of IRPT 13
`receiving reflected infrared light from a finger, via opaque tube 16, and
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`generating an electric signal proportional to the intensity of received light
`teaches “receiving light from the object or material,” “coupling received
`light to one or more sensors,” and “generating at least one signal . . .
`proportional to the light intensity received by the one or more sensors,” as
`recited in claim 1. Pet. 21–22. Petitioner contends that a skilled artisan
`would have implemented IRPT 13 using TSL230 sensors, as described in
`TSL230 Datasheet, resulting in sensors that “generat[e] at least one signal
`having a frequency proportional to the light intensity received by the one or
`more sensors,” as recited in claim 1. Id. at 22–23. According to Petitioner,
`the signal output by IRPT 13 “indicates touch by or proximity of [a
`characteristic] the finger 15 to one of the photoelectric proximity switches
`including the IRPT 13.” Id. at 23 (brackets supplied by Petitioner), 27
`(same). It is Petitioner’s position that Zimmerman’s description of
`determining a proximity of a finger to a touch panel teaches “determining a
`characteristic of an object or material,” as recited in claim 1. Id. at 21.
`Petitioner’s position as to independent claim 30 largely tracks its showing
`for claim 1. Id. at 25.
`In response, Patent Owner argues that Petitioner’s identification of
`“proximity” as a “characteristic” is inconsistent with a correct construction
`of “characteristic of an object or material,” as recited in claim 1, and that
`Petitioner does not identify in Zimmerman any description of determining
`any other alleged characteristic of an object. Prelim. Resp. 28. We agree
`with Patent Owner. As explained in Section I.A above, “a characteristic of
`an object or material,” as recited in claims 1 and 30, is an intrinsic property
`of the object or material. Zimmerman’s description of determining a
`proximity of an object to a touch screen (a function of the interaction
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`between a probe and an object, rather than an intrinsic property of the
`object) does not teach determining “a characteristic of an object or material,”
`as recited in claims 1 and 30. Petitioner does not cite to any other disclosure
`in Zimmerman or TSL230 Datasheet as evidencing this limitation of
`claims 1 and 30.
`Accordingly, Petitioner has not shown a reasonable likelihood that it
`would prevail with respect to claims 1 and 30 as obvious over Zimmerman
`and TSL230 Datasheet. Claims 2 and 7 depend from claim 1. Petitioner’s
`evidence and argument as to these dependent claims do not remedy the
`deficiency in Petitioner’s showing as to claim 1. Accordingly, Petitioner has
`not shown a reasonable likelihood that it would prevail with respect to
`claims 2 and 7 as obvious over Zimmerman and TSL230 Datasheet.
`
`
`4. Alleged Obviousness over JP ’028 and TSL230 Datasheet
`a. Overview of JP ’028
`JP ’028 describes a colorimeter that measures the numerical value of
`the color of an object. Ex. 1011, 213 col. 2. Figure 2, reproduced below,
`illustrates an example colorimeter:
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`Figure 2 is a vertical sectional side view of a colorimeter. Id. at 220, col. 2.
`The colorimeter includes light source 1 (e.g., a pulse xenon tube),
`reflecting mirror 36, and projection system 2 for projecting light onto
`object 40, which reflects light back to the colorimeter. Id. at 215, cols. 1–2.
`Light receiving lens tube 51 with light receiving lens 52 is positioned to
`receive reflected light from the focus point at measurement position S of
`object 40. Id. at 216, col. 1. Light receiving lens tube 51 carries light to
`diffusion chamber 54 via optical fiber 53. Id. Diffusion chamber 54 guides
`the received light to sensor 12. Id.
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`Sensor 12 is shown in more detail in Figure 1, reproduced below:
`
`
`
`Figure 1 is a block circuit diagram of the colorimeter. Id. at 220, col. 2.
`Sensor 12 includes filters F1’–Fn’ that analyze the light for basic color
`components. Id. at 217, col. 2. The color components are detected by basic
`color components detectors D1’–Dn’. Id. The outputs of the detectors are
`amplified by amplification circuits A1’–An’ and input to sample hold circuits
`H1’–Hn’ via gate circuits G1’–Gn’. Id. at 218, col. 1. The signals stored in
`the sample hold circuits are converted into digital signals by A/D conversion
`circuits AD1’–ADn’ and input to CPU 110 for storage, display, etc. Id.
`
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`b. Claims 1, 2, 7, and 30
`Petitioner contends that JP ’028 describes determining a color of an
`object, which Petitioner argues is “a characteristic of an object or material,”
`as recited in claim 1. Pet. 33. We agree. As explained in Section I.A above,
`the ’629 patent identifies object color as a specific example of a
`characteristic of an object.
`Petitioner further contends that JP ’028’s disclosure of light sensor 12
`(including photodetectors D1’–Dn’) receiving light reflected from object 40
`via lens 52 and optical fiber 53 is a disclosure of “receiving light from the
`object or material” and “coupling received light to one or more sensors,” as
`recited in claim 1. Id. at 33. Petitioner cites JP ’028’s description of light
`passing through filters F1’–Fn’ prior to reaching photodetectors D1’–Dn’ as a
`description of “wherein the light passes through a filter prior to being
`coupled to one or more of the sensors,” as recited in claim 1. Id. at 35.
`Petitioner’s evidence supports a finding that JP ’028 teaches these
`limitations of claim 1.
`The parties dispute whether the prior art teaches “generating at least
`one signal having a frequency proportional to the light intensity received by
`the one or more sensors,” as recited in claim 1. Petitioner contends that
`JP ’028’s disclosure of photodetectors D1’–Dn’ generating electric signals
`corresponding to received light, and corresponding disclosure of converting
`those signals to digital signals, teaches photodetectors that generate and
`output electric signals that are proportional to the light intensity received by
`the respective photodetectors. Id. at 33–34. Nevertheless, Petitioner does
`not appear to contend that the output of such photodetectors is expressly
`described as having a frequency proportional to the received light intensity.
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`Dr. Baker concedes that “JP ’028 does not explicitly state that a
`voltage-to-frequency or current-to-frequency converter is employed as part
`of the A/D converters in the sensors 11, 12,” but testifies that “such
`conversion is suggested by the pulse interval timing method described in JP
`’028 as used to digitize the color component light intensity measurements[.]”
`Ex. 1015 ¶ 58.
`Petitioner argues that TSL230 Datasheet describes sensors that
`generate signals with frequencies proportional to received light intensity.
`Id. at 34. This is consistent with the ’629 patent’s description of the TSL230
`product performing this function. Ex. 1001, 8:62–9:7. Petitioner contends
`that a skilled artisan would have implemented photodetectors D1’–Dn’ with
`TSL230 sensors. Pet. 34. Dr. Baker testifies that the TSL230 product would
`have been a predictable commercial choice and could have been used with
`A/D converters such as AD1’–ADn’ as described in JP ’028. Id. (citing
`Ex. 1015 ¶¶ 58–59). Dr. Baker further testifies that the TSL230 product
`would have provided added benefits of programmable sensitivity and
`temperature compensated light measurement in the visible light range.
`Ex. 1015 ¶ 59.
`Patent Owner responds that modifying the system of JP ’028 to use
`TSL230 sensors would have resulted in a different, more complicated
`system. Prelim. Resp. 36–37. Patent Owner characterizes Petitioner’s
`argument as “removing the detector circuits (D1–Dn) of the JP ’028
`apparatus and replacing these detector circuits with a TSL230 chip.” Id. at
`37. Patent Owner contends that the existing circuitry described in JP ’028 is
`synchronized in a particular manner. Id. Patent Owner argues that this
`circuitry is “complex and unorthodox.” Id. at 38. According to Patent
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`Owner, Petitioner does not describe how the timing of the modified system
`would remain the same. Id. at 37. Patent Owner argues that “if the specific
`timing and control sequence of the system is not followed, the JP ’028
`apparatus will not operate properly to determine surface color.” Id. at 39.
`Accordingly, Patent Owner argues, simply replacing the photodetectors of
`JP ’028 would not have worked as Petitioner proposes: “Petitioner[’s] direct
`replacement of detectors circuits (D1 – Dn) with chip TSL230 (Pet. at 33–34)
`is performed without regard to the other parts in the electronic system and
`completely ignores the specific and required gating and time sequence of the
`system.” Id. Rather, “[o]ne would have to completely re-design the JP ’028
`system to incorporate the TSL230 light-to-frequency converter.” Id. at 40.
`At this stage of the proceeding, we credit the testimony of Dr. Baker.
`According to Dr. Baker, JP ’028 at least suggests sensors that generate
`signals having frequencies proportional to received light intensity. Ex. 1015
`¶ 58. Dr. Baker testifies that a commercially available TSL230 product
`would have been a predictable choice and that incorporation of that product
`in the system of JP ’028 would have been within the level of ordinary skill in
`the art. Id. ¶ 59. We have considered Patent Owner’s argument that using
`such a product would have required significant redesign, including resolving
`complex timing issues. Patent Owner does not support this argument with
`evidence at this stage of the proceeding. We find Patent Owner’s argument
`unpersuasive. As explained above, for purposes of this Decision, we agree
`with Petitioner that a skilled artisan would have been an engineer with 2–3
`years of practical experience. Given this level of skill, we are persuaded, at
`this stage of the proceeding, that resolving issues of timing when adapting an
`electronic system to accept a replacement part would have been routine and
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`within that level of skill. As the Supreme Court has counseled, “[a] person
`of ordinary skill is also a person of ordinary creativity, not an automaton.”
`KSR, 550 U.S. at 421. Accordingly, Petitioner’s evidence supports a finding
`that JP ’028 and TSL230 Datasheet teach “generating at least one signal
`having a frequency proportional to the light intensity received by the one or
`more sensors,” as recited in claim 1.
`As to the remaining limitation of claim 1, Petitioner argues (Pet. 35),
`and we explain above, that JP ’028 describes evaluating the signals from
`sensor 12 to determine color, a characteristic of the object being evaluated.
`Thus, the evidence supports a finding that JP ’028 teaches “determining the
`characteristic based on the at least one signal,” as recited in claim 1.
`Accordingly, on the current record, Petitioner has shown a reasonable
`likelihood that it would prevail with respect to claim 1 as obvious over
`JP ’028 and TSL230 Datasheet.
`Claims 2 and 7 depend from claim 1. We have analyzed Petitioner’s
`argument and evidence as to these dependent claims (Pet. 36) and are
`persuaded that the evidence supports a finding that their additional
`limitations
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