UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`

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`TABLE OF CONTENTS
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`Page
`
`
`I.
`
`II.
`
`B.
`
`THE BOARD SHOULD NOT INSTITUTE INTER PARTES
`REVIEW ......................................................................................................... 1
`THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PETITION IS PROCEDURALLY DEFECTIVE .......................................... 2
`A.
`The Board Should Decline To Consider Petitioner’s Ground 1
`Because It Is Cumulative Of Prior Office Proceedings ....................... 2
`The Board Should Not Institute Grounds 2 And 3 Because They
`Are Based On A Document That Is Not A Printed Publication .......... 5
`III. ST IMAGING BEARS THE BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD THAT THE CLAIMS WOULD
`HAVE BEEN OBVIOUS ............................................................................... 8
`IV. CLAIM CONSTRUCTION ........................................................................... 9
`V.
`PETITIONER OVERSIMPLIFIES THE TECHNOLOGY AND
`CONFLATES MICROFORM READERS WITH MICROFILM
`SCANNERS ................................................................................................. 10
`A.
`Summary Of The Technology And Cited Art .................................... 10
`B.
`The ’019 Patent Discloses A Microform Reader And Scanner ......... 11
`C.
`Fujinawa Relates To A Scanner ......................................................... 12
`D. Kokubo Relates To A Scanner ........................................................... 13
`E. Minolta Relates To A Carrier For A Microform Reader ................... 13
`VI. ST IMAGING IS NOT REASONABLY LIKELY TO PREVAIL ON
`GROUND 1 .................................................................................................. 14
`A.
`Claims 1, 41, And 63 Would Not Have Been Obvious ..................... 14
`1.
`ST Imaging’s rationale is insufficient and based on
`impermissible hindsight ........................................................... 16
`a.
`Stating that a modification is a simple substitution
`is insufficient ................................................................. 17
`The potential benefits of belts in generic
`applications do not show why one would have
`modified Fujinawa ......................................................... 19
`
`b.
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`2.
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`3.
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`One of skill in the art would have been discouraged from
`modifying Fujinawa in the manner proposed by
`ST Imaging ............................................................................... 20
`One of skill in the art would not have combined the
`references to arrive at the claimed invention ........................... 24
`Claims 5 and 6 .................................................................................... 26
`B.
`Claim 8 ............................................................................................... 27
`C.
`Claim 29 ............................................................................................. 30
`D.
`Claim 30 ............................................................................................. 31
`E.
`Claim 32 ............................................................................................. 32
`F.
`Claim 47 ............................................................................................. 32
`G.
`Claims 2, 3, 7, 9, 20–28, 31, 43, 44, and 53 ....................................... 32
`H.
`VII. ST IMAGING IS NOT REASONABLY LIKELY TO PREVAIL ON
`GROUND 2. ................................................................................................. 33
`A.
`Claim 33 ............................................................................................. 33
`1.
`ST Imaging’s rationale is insufficient and based on
`impermissible hindsight ........................................................... 33
`One of skill in the art would not have found it obvious to
`modify Fujinawa with the teachings of Minolta ...................... 34
`Claims 34, 35, 37, 39, 40, and 54–57 ................................................. 36
`B.
`VIII. ST IMAGING IS NOT REASONABLY LIKELY TO PREVAIL ON
`GROUND 3 .................................................................................................. 36
`A.
`Claim 64 ............................................................................................. 37
`B.
`Claim 85 ............................................................................................. 38
`C.
`Claims 65–68, 74, 79, 81, 84, 86, and 87 ........................................... 39
`D.
`Claim 91, 92–96 and 101 ................................................................... 39
`IX. CONCLUSION ............................................................................................. 39
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`2.
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`-ii-
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`LIST OF EXHIBITS
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`
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`Brief Description
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`8/15/2013 Information Disclosure Statement submitted
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`by applicant, Application Serial No. 13/968,080
`
`Number
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`2001
`
`10/8/2014 List of References cited by applicant and
`
`2002
`
`considered by examiner, Application Serial No.
`
`13/968,080
`
`2003
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`2/26/2015 Notice of Allowance and Fee(s) Due,
`
`Application Serial No. 13/968,080
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`11/4/2016 Claim Construction Order, Dkt. No. 38, e-
`
`2004
`
`ImageData Corp. v. Digital Check Corp., Civil Action
`
`No. 16-cv-576, E. D. Wis.
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`
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`
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`-iii-
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`I.
`
`THE BOARD SHOULD NOT INSTITUTE INTER PARTES REVIEW.
`The Board should deny ST Imaging’s Petition for inter partes review of U.S.
`
`Patent No. 9,179,019 for both procedural and substantive defects.
`
`
`
`First, procedural defects warrant denial of institution. The Office has
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`already found that the ’019 Patent is patentable over the same or substantially the
`
`same references that ST Imaging relies upon in its Ground 1. During prosecution,
`
`the Examiner considered Fujinawa, the primary reference, and a reference
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`substantially similar to Kokubo. For Grounds 2 and 3, ST Imaging relies on a
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`reference that is not a printed publication.
`
`
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`Second, ST Imaging improperly used the ’019 Patent as a roadmap for
`
`putting together the various elements of the claimed invention. ST Imaging
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`demonstrates its impermissible hindsight reconstruction by failing to articulate any
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`reason why one of skill in the art would have made the proposed modifications.
`
`Third, the teachings of the prior art references do not render the claims
`
`obvious. Specifically, ST Imaging’s proposed modifications to Fujinawa’s device
`
`would render the device inoperable for its intended purpose, violate longstanding
`
`principles of mechanical design, and add needless complexity to an otherwise
`
`simple design.
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`Fourth, the prior art references fail to even disclose numerous limitations
`
`from dependent claims.
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`
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`1
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`

`

`
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`For at least the foregoing reasons, ST Imaging’s Petition should be denied in
`
`its entirety.
`
`II. THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PETITION IS PROCEDURALLY DEFECTIVE.
`A. The Board Should Decline To Consider Petitioner’s Ground 1
`Because It Is Cumulative Of Prior Office Proceedings.
`The Board should exercise its discretion not to institute inter partes review
`
`for Ground 1 because the references cited in the Petition (Fujinawa and Kokubo)
`
`are the same or substantially the same prior art considered by the Examiner during
`
`prosecution of the ’019 Patent. Institution of an inter partes review is
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`discretionary. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. The Board may
`
`decline to institute an inter partes review when “the same or substantially the same
`
`prior art or arguments previously were presented to the Office.” 35 U.S.C. §
`
`325(d). When an Examiner has already considered the prior art at issue, it is not an
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`efficient use of the Board’s or parties’ resources to adjudicate a dispute on an
`
`already-considered issue. Nu Mark LLC v. Fontem Holdings 1, B.V., IPR2016-
`
`01309, Paper No. 11 at *12–13 (P.T.A.B. Dec. 15, 2016). This is true even where
`
`the Examiner did not specifically address a prior art reference in an Office Action.
`
`See id.
`
`
`
`For example, in Nu Mark, the Board denied institution of the inter partes
`
`review because the Examiner considered substantially similar prior art during
`
`
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`2
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`

`

`
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`prosecution. Id. The petitioner in Nu Mark asserted a ground of unpatentability
`
`based on the combination of Brooks and Whittemore. Id. at 6. During
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`prosecution, an information disclosure statement identified Whittemore and a
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`reference “largely identical” to Brooks. Id. at 6–7. The Examiner indicated that
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`the references were considered by appending the following to the bottom of the
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`information disclosure statement: “ALL REFERENCES CONSIDERED EXCEPT
`
`WHERE LINED THROUGH. /D.W.M./.” Id. at 7. The examiner allowed the
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`claims at issue and indicated that the prior art did not teach all of the limitations of
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`the claims. Id. at 7–8. Although the examiner did not mention the reference
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`largely identical to Brooks in an Office Action, the Board nevertheless found that
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`the examiner considered the references. Id. at 11–12. The Board denied institution
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`because, by relying on previously considered prior art, the petitioner was “asking
`
`the Board, essentially, to second-guess the Office’s previous decision on
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`substantially the same issues.” Id. at 12–13.
`
`As Nu Mark demonstrates, the Office need not have considered a specific
`
`reference for that reference to be cumulative of prior Office proceedings. The
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`relevant inquiry is whether the Office previously considered the substance of the
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`disclosures relied upon. Nu Mark, IPR2016-01309, Paper No. 11 at *9. If the
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`substance of the disclosures relied upon in the petition was previously presented to
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`
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`3
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`
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`and previously considered by the Office, that reference is cumulative under 35
`
`U.S.C. § 325(d) even if that reference had not been previously considered. Id.
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`Here, the Examiner considered both Fujinawa (Ex. 1004) and Watanabe (Ex.
`
`1006) during prosecution and found that the claims of the ’019 Patent were
`
`patentable over the references. The applicant submitted an information disclosure
`
`statement that listed Fujinawa and Watanabe. (Ex. 2001 at 3–4.) The Examiner
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`indicated that the references were considered by appending the following to the
`
`bottom of the information disclosure statement: “ALL REFERENCES
`
`CONSIDERED EXCEPT WHERE LINED THROUGH. /K.D./.” (Ex. 2002; see
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`also MPEP § 609.04(a) (An Examiner’s initials on an IDS form “provide[ ] . . . a
`
`clear record in the application to indicate which documents have been considered
`
`by the examiner in the application.”).) The Examiner later issued a notice of
`
`allowance. (Ex. 2003 at 7.)
`
`The substance of the disclosures of Watanabe are substantially similar to the
`
`disclosures of Kokubo (Ex. 1005), relied upon by ST Imaging. Watanabe discloses
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`a pulley-based drive mechanism for moving a line sensor where the drive
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`mechanism extends alongside and is spaced apart from a rail. (Ex. 1006; Petition
`
`at 12.) ST Imaging relies on Kokubo for its teachings of a pulley-based drive
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`mechanism that extends alongside and is spaced apart from a rail. (Petition at 24–
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`25.)
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`
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`4
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`
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`Because the Examiner considered both Fujinawa and a reference
`
`substantially similar to Kokubo before allowing the claims of the ’019 Patent,
`
`Petitioner’s Ground 1 is cumulative of prior Office proceedings and should not be
`
`instituted. Accordingly, as in Nu Mark, the Board should deny institution of
`
`Ground 1 and not second-guess the Office’s previous decision on the same issue.
`
`B.
`
`The Board Should Not Institute Grounds 2 And 3 Because They
`Are Based On A Document That Is Not A Printed Publication.
`The Board should not institute Grounds 2 and 3 because ST Imaging has
`
`failed to show that Minolta (Ex. 1009) is a printed publication. A petitioner can
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`only challenge the patentability of claims “on the basis of prior art consisting of
`
`patents or printed publications.” 35 U.S.C. § 311(b). The Petitioner bears the
`
`burden of showing that the alleged prior art references underlying its challenges
`
`are patents or printed publications. Seabery N. Am., Inc. v. Lincoln Global, Inc.,
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`IPR2016-00749, Paper 13 at 9 (P.T.A.B. Sept. 21, 2016). The Board declines to
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`institute trials when a petitioner does not meet its burden in establishing that a
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`reference is a printed publication. See, e.g., id.; Samsung Elecs. v. Rembrandt
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`Wireless Techs., IPR2014-00514, Paper 18 at 9–10 (P.T.A.B. Sept. 9, 2014).
`
`
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`Public accessibility is the key question in determining whether a reference is
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`a printed publication. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). A
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`reference is publicly accessible if it was “disseminated or otherwise made available
`
`to the extent that persons interested and ordinarily skilled in the subject matter or
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`5
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`art exercising reasonable diligence, can locate it.” Id. (internal quotation omitted).
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`Thus, “[a] party seeking to introduce a reference should produce sufficient proof of
`
`its dissemination or that it has otherwise been available and accessible to persons
`
`concerned with the art to which the document relates and thus most likely to avail
`
`themselves of its contents.” Xactware Sols., Inc. v. Eagle View Techs., Inc.,
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`IPR2016-00582, Paper 15 at *4–6 (P.T.A.B. Aug. 16, 2016) (internal quotation
`
`omitted).
`
`
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`ST Imaging has not offered sufficient proof of the dissemination of
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`Minolta.1 Minolta is a parts manual that contains a copyright date, but no evidence
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`that it has ever been indexed or available in a commercial database. (Ex. 1009 at
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`1.) The only evidence of public accessibility is a declaration from a former
`
`employee and consultant of the Petitioner. The declaration merely states that Ex.
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`1009 “was published to ICT’s distributors for the UC-6 product, including Minolta
`
`
`1 Because ST Imaging relies on the Minolta parts manual (Ex. 1009) “to support
`
`every assertion about Minolta in Proposed Grounds of Rejection Nos. 2 and 3”
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`(Petition at 6), the public accessibility of the document titled “Minolta UC-1
`
`Universal Film Carrier” (Ex. 1008) is irrelevant to the determination of whether the
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`Minolta Parts Manual (Ex. 1009) was publicly accessible.
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`6
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`and Canon” and “Ex. 1009 was not marked confidential.” (Ex. 1010 ¶ 6.) This
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`declaration is insufficient to establish public accessibility.
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`
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`The declaration offers no explanation as to the scope of the distribution.
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`ST Imaging identifies two distributors that received the document but offers no
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`evidence as to the number of distributors in the distribution network, the territory
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`covered by the two distributors, or the percentage of distributors did not receive the
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`document. (See Ex. 1010 ¶ 6.) There is no evidence that the interested public
`
`could access the document that was in the possession of only two of ICT’s
`
`distributors.
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`
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`The declaration further fails to state whether the document was available to
`
`the interested public. ICT’s distributors are not the interested public. In re Lister,
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`583 F.3d at 1311 (the public to which a reference must have been accessible
`
`includes “persons interested and ordinarily skilled in the subject matter or art”).
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`The lack of a confidentiality designation is not sufficient proof that the document
`
`was available to the public. The parts list could have merely been kept by the
`
`distributors and not offered or available to the interested public. There is no
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`evidence that the interested public could have ascertained the existence of the
`
`document, located the document, and availed itself of the contents. ST Imaging
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`has failed to show that Minolta (Ex. 1009) is a printed publication, and the Board
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`should not institute Grounds 2 and 3, which rely on Minolta.
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`7
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`III. ST IMAGING BEARS THE BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD THAT THE CLAIMS WOULD HAVE
`BEEN OBVIOUS.
`The Board may institute an inter partes review of a granted patent only if
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`“the information presented in the petition . . . and any [preliminary] response . . .
`
`shows that there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`In an inter partes review, the petitioner bears the ultimate burden of proving
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`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
`
`
`
`In the Petition, ST Imaging’s grounds of unpatentability all allege
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`obviousness. A claim is not unpatentable for obviousness unless the differences
`
`between the subject matter sought to be patented 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 the subject matter
`
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Rejections
`
`on obviousness grounds cannot be sustained by “mere conclusory statements.”
`
`KSR, 550 U.S. at 418; see also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
`
`1324, 1330 (Fed. Cir. 2009). The Federal Circuit recently explained that a
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`conclusion of obviousness in an inter partes review must (1) “articulate a reason
`
`why a PHOSITA would combine the prior art references”; (2) have an adequate
`
`evidentiary basis for that finding; and (3) provide a “satisfactory explanation” for
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`the motivation finding that includes an express and “rational” connection with the
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`evidence presented. In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`
`The requirement of an articulated reasoned basis to explain for the
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`obviousness conclusion “remains the primary guarantor against a non-statutory
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`hindsight analysis.” Ortho-McNeil, 520 F.3d at 1364–65. “[A] patent composed
`
`of several elements is not proved obvious merely by demonstrating that each of its
`
`elements was, independently, known in the prior art.” Id. at 418. “This is so
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`because inventions in most, if not all, instances rely upon building blocks long
`
`since uncovered, and claimed discoveries almost of necessity will be combinations
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`of what, in some sense, is already known.” Id. at 418–19. Accordingly, to show a
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`reasonable likelihood of success on its obviousness grounds, ST Imaging must
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`identify a reason that would have prompted one of skill in the art to combine the
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`elements in the way the claimed invention does. KSR, 550 U.S. at 406.
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`ST Imaging has failed to carry its burden.
`
`IV. CLAIM CONSTRUCTION.
`After ST Imaging filed the Petition, the district court in the parallel litigation
`
`issued its claim construction order. (Ex. 2004.) The court adopted the parties’
`
`stipulated constructions and construed “first carriage” to mean “first movable
`
`support structure,” construed “the support structure” to mean “the microform
`
`media support structure,” and construed “the first shaft” to mean “the first motor
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`9
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`shaft.” (Ex. 2004 at 4.) The court resolved the parties’ disputes and construed
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`“second carriage” to mean “second movable support structure,” construed
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`“diffusing element” to mean “a device that spreads light to create a more uniform
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`illumination source,” construed “lead member” to mean “guiding element,” and
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`construed “drive mechanism” to mean “parts connected to a motor for moving a
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`component.” (Ex. 2004 at 19.) The court also concluded that the preamble phrase
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`“digital microform imaging apparatus” limits the claims and the term “at least
`
`somewhat maintain focus while adjusting zoom” is clear without further
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`construction. (Ex. 2004 at 19.) Consistent with the Petition, e-Image has
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`interpreted these constructions to be the broadest reasonable interpretations and has
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`applied them herein. (See Petition at 16–17.) Regardless of the constructions of
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`these terms, the claims would not have been obvious.
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`V.
`
`PETITIONER OVERSIMPLIFIES THE TECHNOLOGY AND
`CONFLATES MICROFORM READERS WITH MICROFILM
`SCANNERS.
`Throughout the Petition ST Imaging oversimplifies the technology and
`
`mixes two different types of microfilm technology. This repeated and pervasive
`
`error contaminates ST Imaging’s obviousness analysis.
`
`A.
`Summary Of The Technology And Cited Art.
`Microfilm readers and microfilm scanners operate differently. Microform
`
`readers are specific devices that allow users to (1) load a physical microform onto
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`10
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`a carrier; (2) move the microform through an optical path; (3) locate a specific
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`document image of the microform by observing the document images on a viewing
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`screen concurrently as the carrier is moved; and (4) read the specific document
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`image without having to scan the document first. In contrast, microform scanners
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`move an image capture device relative to a microform to capture the entire image.
`
`The scanner then outputs the entire image to a computer or stores the image on a
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`hard disk. The scanner does not allow a user to observe a specific portion of the
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`image while it is being scanned.
`
`B.
`The ’019 Patent Discloses A Microform Reader And Scanner.
`The ’019 Patent describes a microform reader that can also function as a
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`microform scanner. (Ex. 1001 at 3:26–27.) The imaging device described and
`
`claimed in the ’019 Patent allows a user to view a specific image of the microform
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`on a viewing screen concurrently, without having to scan the document first. (Ex.
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`1001 at 1:36–39.) The imaging device also allows a user to scan a microform for
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`storage and later viewing. (Ex. 1001 at 4:52–59.) The microform imaging
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`apparatus of the ’019 Patent is designed to read or scan many different microforms
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`including microfilm, microfiche, aperture cards, jackets, 16 mm or 35 mm film roll
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`film, cartridge film, and micro opaques. (Ex. 1001 at 7:53–64.)
`
`The microform imaging apparatus described and claimed in the ’019 Patent
`
`offers many advantages over the prior art microform imaging devices. The novel
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`optical layout of the microform imaging apparatus, including the fold mirror and
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`separately adjustable area sensor and lens, allows for a compact and versatile
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`digital microform imaging apparatus, which can easily adapt to a broad range of
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`reduction ratios and media types while providing good resolution of the images
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`and ease of use. (Ex. 1001 at 2:59–62.)
`
`C.
`Fujinawa Relates To A Scanner.
`Fujinawa discloses a scanner for scanning 35 mm film and roll film. (Ex.
`
`1004 ¶¶ 00010, 0011.) Fujinawa does not allow a user to load a physical
`
`microform into a carrier but rather accommodates only photographic film.
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`Fujinawa does not allow users to locate and read specific portions of a document
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`concurrently without first scanning the entire image. (See Ex. 1004 ¶ 0073, Fig. 8.)
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`Instead, Fujinawa’s device captures the image and outputs the image data to be
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`stored in the memory of a host computer. (Ex. 1004 ¶ 0067.)
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`Fujinawa’s scanner incorporates a compact design including two motors
`
`with threaded worms extending from the motor shafts. (Ex. 1004 Fig. 4.)
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`Fujinawa discloses that a lens is coupled to one threaded worm and a line sensor is
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`coupled to the other threaded worm. (Ex. 1004 ¶ 0059.) To control and adjust the
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`reading scope and resolution, the motors precisely and accurately position the lens
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`and line sensor by rotating the worms. (Ex. 1004 ¶ 0059.)
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`D. Kokubo Relates To A Scanner.
`Kokubo teaches a scanner for scanning photographic film. Kokubo’s
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`scanner does not allow a user to locate a specific image and view that image in
`
`concurrently. Kokubo’s scanner includes a movable reading unit that houses the
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`imaging components of the scanner, including the lens tube, fold mirrors, and line
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`sensor. (Ex. 1005 Fig. 17.) When scanning a document, a light source illuminates
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`the text onto a glass plate. (Ex. 1005 at 9:21–33.) The reading unit, including the
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`imaging components, then moves across the glass plate to capture the illuminated
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`text with the line sensor. (Ex. 1005 at 9:21–33.)
`
`E. Minolta Relates To A Carrier For A Microform Reader.
`Minolta discloses a film carrier for a microform reader. The carrier includes
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`an X-Y table to allow a user to locate and view specific portions of the media by
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`moving the table. To use Minolta’s support structure, a user must first pull the
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`lever forward so the top glass plate opens. (See Ex. 1008 at 5.) The user then
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`places the media on top of the bottom glass plate and pushes the lever so the top
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`glass plate closes on the media. (Id.) The user can then move the X-Y table to
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`locate the specific portion of the media to view on the screen.
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`13
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`VI. ST IMAGING IS NOT REASONABLY LIKELY TO PREVAIL ON
`GROUND 1.
`ST Imaging is not reasonably likely to prevail in showing that claims 1–3,
`
`5–9, 20–32, 41, 43, 44, 47, 53, and 63 would have been obvious over Fujinawa in
`
`view of Kokubo.
`
`A. Claims 1, 41, And 63 Would Not Have Been Obvious.
`ST Imaging concedes that Fujinawa does not disclose all of the limitations
`
`of independent claims 1, 41, and 63. (Petition at 23–24, 47, 52.) Regarding claim
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`1, Fujinawa does not disclose at least “a first drive mechanism . . . extending
`
`alongside and spaced apart from the first lead member” and “the lens and area
`
`sensor are located on a first lateral side of the first lead member and located on a
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`first lateral side of the first drive mechanism.” Regarding claims 41 and 63,
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`Fujinawa does not disclose a first or second drive mechanism extending alongside
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`and spaced apart from the first lead member. Instead, Fujinawa discloses a motor
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`26 having a shaft coupled to a worm that is threadingly coupled to the line sensor
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`28. (Ex. 1004 Fig. 4.) The line sensor moves in accordance with rotation of the
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`motor shaft. Fujinawa also discloses a separate motor 27 having a shaft coupled to
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`a worm that supports a lens 29.
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`14
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`Ex. 1004 Fig. 4 (cropped)
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`ST Imaging attempts to remedy the deficiencies of Fujinawa by relying on
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`Kokubo. Kokubo discloses a movable reading unit 6 that contains a fixed mirror
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`37, a movable mirror 38, a lens tube 40 having a series of lenses, a mirror 39 fixed
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`to the lens tube, a mirror 41 fixed to the frame, and a line sensor 42 fixed to the
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`frame. (Ex. 1005 at 11:63–12:8, Fig. 17.) Kokubo discloses that the reading unit 6
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`and its components move as a whole using a motor 7 having a drive gear 7a on a
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`rotation shaft, a drive pulley 8, a driven pulley 9, and a timing belt 10. (Ex. 1005
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`at 9:10–20, Fig. 1 (reproduced below).) ST Imaging erroneously asserts that one
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`of skill in the art would have known to recreate Fujinawa’s device using Kokubo’s
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`belt-based drive mechanism, contending that the modification would have been a
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`simple substitution. (Petition at 24.) This proposed combination fails for multiple
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`reasons.
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`15
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`1.
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`Ex. 1005, Fig. 1
`ST Imaging’s rationale is insufficient and based on
`impermissible hindsight.
`ST Imaging’s obviousness allegation is deficient on its face because it fails
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`to provide an “articulated reasoning with [] rational underpinning to support the
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`legal conclusions of obviousness.” KSR, 550 U.S. at 418. Obviousness of a claim,
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`however, cannot be proved by merely demonstrating that each of the claim
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`elements was independently known in the prior art. Id. The key to supporting any
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`obviousness allegation is the clear articulation of the reasons why the claimed
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`invention would have been obvious.
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`16
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`a.
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`Stating that a modification is a simple substitution is
`insufficient.
`Even when alleging that a modification is a simple substitution, a Petitioner
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`still must articulate a reason why one of skill in the art would have made the
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`proposed modification. For example, in TRW Automotive, the Board denied
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`institution of the inter partes review because the petition lacked a supporting
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`articulated reasoning with some rational underpinning. TRW Auto. US LLC v.
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`Magna Elecs. Inc., IPR2014-00258, Paper 16 at *14–15 (P.T.A.B. June 26, 2014).
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`Although the petitioner in TRW Automotive identified all of the claim limitations in
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`the prior art, the petitioner “did not explain why the alleged combination would
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`have been a simple substitution achieving predictable results, or why selecting [an
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`alleged alternative], as opposed to any other, would have been a choice from a
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`finite number of solutions with a reasonable expectation of success.” Id. (emphasis
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`original). The Board also noted that the petitioner’s expert declaration did not
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`elaborate on the petitioner’s position because it simply repeated the petitioner’s
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`conclusory statements. Id.
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`In this case, ST Imaging has similarly failed to provide a supporting
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`articulated reasoning with some rational underpinning. ST Imaging has not
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`provided facts or articulated a reason why a person of ordinary skill in the art
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`would have combined elements from Kokubo with the device of Fujinawa to
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`achieve the claimed invention. See KSR, 550 U.S. at 418. Instead, ST Imaging
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`17
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`contends that modifying Fujinawa’s worm arrangement with Kokubo’s drive gear,
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`drive pulley, driven pulley, and timing belt while providing additional guide rails
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`would have been a simple substitution. ST Imaging’s simple substitution argument
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`is unsupported by explanation or evidence as to why one of ordinary skill in the art
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`would have made the suggested substitutions, as well as other necessary
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`modifications. It is not sufficient to explain that one of skill in the art would have
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`known how to make the purported modification. InTouch Techs., Inc. v. VGO
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`Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (assertions that one of
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`ordinary skill in the art could combine references, not that one of ordinary skill in
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`the art would have been motivated to do so, reveals hindsight bias). As the Board
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`explained in TRW Automotive, “that another option existed, in and of itself, does
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`not explain why one of ordinary skill in the art would have been prompted to
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`combine that option with the teachings of the other references at the time of the
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`invention.” IPR2014-00257, Paper 16 at 10. ST Imaging has failed to identify any
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`limitations of the Fujinawa’s arrangement or benefits of its proposed modification
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`that would have motivated one of skill in the art to redesign Fujinawa’s device.
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`Additionally, ST Imaging fails to explain why one of skill in the art would
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`be motivated to add such complexity to the simple design of Fujinawa. The
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`purportedly simple substitution is actually a substantial redesign of Fujinawa’s
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`device. The structure supporting the line sensor would need to be redesigned to be
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`18
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`able to accommodate both a rail and a belt. The motor would need to be
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`reoriented. Numerous moving parts would be added. The device would lose the
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`simplicity of the motor shaft rotation directly moving the line sensor. ST Imaging
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`oversimplifies the elements of the claimed invention and ignores modifications that
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`would have been required to make the suggested substitutions.
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`b.
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`The potential benefits of belts in generic applications
`do not show why one would have modified Fujinawa.
`The purported benefits of the use of belts identified in the Senn declaration
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`do not provide a rationale as to why one of ordinary skill in the art would have
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`combined these two particular references. Without any connection to the
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`technology at issue, ST Imaging’s expert identifies some generic benefits of belts.
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`(Ex. 1002 ¶ 53.) ST Imaging’s expert claims that belts used as part of a drive train
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`between motors and lead screws can facilitate improved packaging when the motor
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`cannot be directly connected to the end of the lead screw. (Ex. 1002 ¶ 53.) But, in
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`Fujinawa, there is not concern as to whether the motor can be connected t