Trials@uspto.gov
`571.272.7822
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` Paper 6
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` Entered: April 25, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
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`v.
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`E-IMAGEDATA CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
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`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
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`HAAPALA, Administrative Patent Judge.
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`571.272.7822
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` Paper 6
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` Entered: April 25, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
`
`
`
`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2017-00178
`Patent 9,179,019 B2
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`Digital Check Corp. d/b/a ST Imaging (“Petitioner”) filed a Petition
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`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`claims 1–3, 5–9, 20–35, 37, 39–41, 43, 44, 47, 53–57, 63–68, 74, 79, 81,
`84–87, 91–96, and 101 of U.S. Patent No. 9,179,019 B2 (“the ’019 patent”).
`Paper 2 (“Pet.”). e-ImageData Corp. (“Patent Owner”) filed a Preliminary
`Response. Paper 5 (“Prelim. Resp.”). Applying the standard set forth in
`35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood
`that Petitioner would prevail with respect to at least one challenged claim,
`we grant Petitioner’s request to institute an inter partes review of claims 1–
`3, 5–7, 20–28, 31, 41, 43, 44, 53, and 63. We decline to institute a review as
`to the other claims challenged.
`I. BACKGROUND
`A. The ’019 Patent (Ex. 1001)
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`The ’019 patent describes a digital microform imaging apparatus
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`(DMIA) that may be used to view/scan a broad range of microfilm media
`types (e.g., microfilm, microfiche, 16 mm or 36 mm film roll). See
`Ex. 1001, 1:19–20, 3:26–28. The DMIA can accommodate a broad range of
`image reduction ratios without the need to change zoom lenses. See id. at
`3:28–30, 7:56–59. Figure 4 of the ’019 patent is reproduced below:
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`Figure 4 illustrates a perspective view of a DMIA with the cover removed
`and as viewed from generally rearward of the apparatus. Id. at 3:65–67.
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`The DMIA illustrated in Figure 4 includes: microform media support
`44; chassis 66; mirror mount 78; first lead screw 86; second lead screw 88;
`lens 90; area sensor 97; first carriage 92; second carriage 98; first motor 100;
`second motor 108; timing pulleys 102, 106, 110, 114; and belts 104, 112.
`See id. at 5:8–6:11. Microform media support 44 is configured to support a
`microform media. Id. at 5:8–10. A fold mirror (not shown) reflects incident
`light transmitted through microform media and is connected to mirror mount
`78, which is connected to chassis 66. Id. at 5:31–33, 5:36–38. Lens 90 is
`connected to first carriage 92, which is linearly adjustable by rotating first
`lead screw 86. Id. at 5:43–45. Area sensor 97 is connected to second
`carriage 98, which is linearly adjustable by rotating second lead screw 88.
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`Id. at 5:52–54. First motor 100 is rotationally coupled to first lead screw 86
`by timing pulley 102, belt 104 with teeth, and timing pulley 106; and second
`motor 108 is rotationally coupled to second lead screw 88 by timing pulley
`110, belt 112 with teeth, and timing pulley 114. Id. at 6:7–9.
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`A controller (not shown) is electrically connected to first motor 100,
`second motor 108, and area sensor 97. Id. at 6:11–13. The controller
`receives commands and inputs, controls first and second motors 100, 108
`and other components of the DMIA, and outputs an image data of area
`sensor 97. Id. at 6:13–17. The layout of the DMIA, including separately
`adjustable area sensor 97 and lens 90, and algorithms for moving the lens
`and sensor to appropriate respective locations to achieve proper
`magnification and focus of the image, allow the DMIA to autofocus to
`accommodate different reduction ratios of different film media without the
`need for iterative measurements and refocusing of lens 90. Id. at 5:61–7:3.
`The DMIA depicted in Figure 4 includes additional components not
`described.
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`B. Illustrative Claim
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`Claims 1, 41, 63, 64, and 91 are independent claims. Claim 1 is
`illustrative of the subject matter at issue.
`1. A digital microform imaging apparatus, comprising:
`a chassis;
`a fold mirror supported by the chassis and including a
`reflecting surface for directing light from a first optical axis to a
`second optical axis;
`a first elongated and substantially strait lead member
`supported by the chassis and aligned along a substantially
`horizontal axis, the first lead member including an elongated
`shaft;
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`a first drive mechanism supported by the chassis and
`extending alongside and spaced apart from the first lead
`member;
`a first motor including a first motor shaft that engages the
`first drive mechanism;
`a first carriage coupled to the first lead member for
`movement there along and coupled to the chassis via the first
`drive mechanism and the first motor such that rotation of the
`first motor shaft causes the first carriage to move along the first
`lead member along a trajectory that is substantially parallel to
`the second optical axis;
`an area sensor supported by the first carriage and aligned
`with the second optical axis for movement along the second
`optical axis within a first range to adjust a distance between the
`area sensor and the fold mirror; and
`a lens supported by the chassis along the second optical
`axis and positioned between the area sensor and the fold mirror;
`wherein the lens and the area sensor are located on a first
`lateral side of the first lead member and located on a first lateral
`side of the first drive mechanism.
`C. References
`Petitioner relies on the following references:
`1. U.S. Patent Application No. 2004/0012827 A1, published
`Jan. 22, 2004 (“Fujinawa”) (Ex. 1004).
`2. U.S. Patent No. 5,585,937, issued Dec. 17, 1996 (“Kokubo”)
`(Ex. 1005).
`3. Image Capture Tech., Parts Manual for UC-6E, EC, ECM,
`Motorized Combo Squared Carrier Part Numbers 210000-
`01, 02, 03 (2002) (“Minolta”) (Ex. 1009).1
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`1 We note that “Minolta” is not an author or the title of this reference, but as
`both Petitioner and Patent Owner refer to this reference as Minolta (see e.g.,
`Pet. 5, Prelim. Resp. 5), we use the same shortened form for consistency and
`to avoid confusion.
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`D. Grounds Asserted
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`
`Petitioner challenges the patentability of the claims of the ’019 patent
`under 35 U.S.C. § 103(a) over the following combinations of references:
`References
`Claims
`Fujinawa and Kokubo
`1–3, 5–9, 20–32, 41, 43, 44, 47, 53, 63
`Fujinawa, Kokubo, and
`33–35, 37, 39, 40, 54–572
`Minolta
`Fujinawa and Minolta
`64–68, 74, 79, 81, 84–87, 91–96, 101
`As a preliminary matter, we note that Petitioner collectively refers to
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`both Exhibits 1008 and 1009 as “Minolta.” Pet. 5. But, Exhibits 1008 and
`1009 are two different references that describe different products, have
`different authors, and have copyright dates that differ by ten years. See
`Ex. 1008, Ex. 1009. Petitioner does not provide any explanation or reason
`for why these references are collectively referred to as one reference.
`However, Petitioner states that the disclosures of Exhibit 1009 alone, in view
`of the declarations from its witnesses, are sufficient to support every
`assertion about Minolta in the asserted grounds, and that Exhibit 1008 is not
`required as the only support for any of the contentions. Pet. 6–7.
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`We determine Petitioner improperly conflates these two references in
`its challenges based on “Minolta.” In view of Petitioner’s statement that
`Exhibit 1009 is sufficient to support every assertion in its challenges based
`on Minolta, we exercise our discretion under 37 C.F.R. §§ 42.5(a) and
`42.108(a) to confine “Minolta” in the applicable grounds in this proceeding
`to only Exhibit 1009.
`
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`2 In the Petition, the proposed grounds of rejection table and the section
`header for this ground additionally list claim 41. Pet. 17, 53. However, we
`treat this as a typographical error because the section body for this ground
`does not include any discussion of claim 41. See id. at 53–66.
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`E. Related Proceedings
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`Patent Owner identifies the ’019 patent as a continuation of U.S.
`Patent No. 8,269,890 (’890 patent) and U.S. Patent No. 8,537,279 (’279
`patent). Paper 4. Petitioner and Patent Owner identify numerous matters as
`related to this proceeding, including currently pending U.S. Patent
`Application No. 14/931,583, which is a continuation of the ’019 patent;
`Petitioner’s concurrently filed Petition for inter partes review of the ’279
`patent (IPR2017-00177); and a number of district court litigation matters
`involving the ’019, ’890, and ’279 patents. See Paper 4; Pet. 2.
`II. ANALYSIS
`A. Claim Construction
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`In an inter partes review, claims of an unexpired patent are
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`interpreted 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, 2144–46 (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).
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`Petitioner proposes constructions for a number of terms that appear in
`the claims of the ’019 patent. See Pet. 17. Petitioner asserts the
`constructions for these terms are the constructions proposed by Patent
`Owner in the related district court case between the parties, and that these
`constructions are the broadest reasonable constructions. Id. Patent Owner
`proposes constructions for the same terms and a number of additional terms.
`See Prelim. Resp. 9–10. Patent Owner asserts its constructions are the
`constructions adopted by the district court in the related litigation and that
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`these constructions are the broadest reasonable interpretations. Id. Patent
`Owner’s constructions of the terms construed by Petitioner are identical to
`Petitioner’s proposed constructions, with the exception of the proposed
`constructions of the term “diffusing element.” Compare Pet. 17, with
`Prelim. Resp. 9–10. Petitioner’s proposed construction for this term is a
`“device that spreads or scatters light to create a more uniform illumination
`source”; Patent Owner’s proposed construction for this term differs only in
`that it omits “or scatters” from its construal. See Pet. 17; Prelim. Resp. 10.
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`For purposes of this Decision, we do not find it necessary to construe
`any terms, and accord them their ordinary and customary meaning. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
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`B. Obviousness Over Fujinawa and Kokubo
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`Petitioner contends that claims 1–3, 5–9, 20–32, 41, 43, 44, 47, 53,
`and 63 are unpatentable as obvious under 35 U.S.C. § 103(a) over Fujinawa
`and Kokubo. Pet. 18–53. For the reasons discussed below, we are
`persuaded, based on the current record, that Petitioner has demonstrated a
`reasonable likelihood of prevailing on this ground as to claims 1–3, 5–7, 20–
`28, 31, 41, 43, 44, 53, and 63. Petitioner fails to establish a reasonable
`likelihood of prevailing on this ground as to claims 8, 9, 29, 30, 32, and 47.
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`1. Overview of Fujinawa and Kokubo
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`Fujinawa describes an image reading apparatus that can handle films
`having different sizes. Ex. 1004 ¶ 3. Figure 4 of Fujinawa is reproduced
`below:
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`Figure 4 depicts one embodiment of an image reading apparatus during
`reading of roll film. Id. ¶ 22. Image reading apparatus 1 includes cartridge
`3, used to house roll film, and insertion opening 6, used for inserting strip
`film and slide-mounted film. Id. ¶ 33. Image reading apparatus 1 further
`includes reading device motor 26, lens motor 27, line sensor 28, and
`reflective mirror 30. Lens 29 is supported by a worm that couples lens 29 to
`the rotating shaft of lens motor 27 so that it can move in accordance with
`rotation of the rotating shaft. Id. ¶ 59. Line sensor 28 is supported by a
`worm that couples line sensor 28 to rotating shaft of reading device motor 26
`so that the position of the light-receiving surface can be moved in
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`accordance with the rotation of the rotating shaft. Id.3 Fujinawa further
`describes that an area-type sensor could be provided instead of line sensor
`28. Id. ¶¶ 49, 112. A CPU (not depicted) determines the type of film
`inserted into image reading apparatus 1 from information provided by film
`information reading sensor 24 and film detection sensor 35. Id. ¶ 66. CPU
`separately drives reading motor 26 and lens motor 27 to adjust the reading
`scope and resolution according to the results of this determination. Id. ¶¶ 60,
`66. Figure 4 depicts additional components of image reading apparatus 1
`that are not described.
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`Kokubo describes an image reading device which optically reads a
`text image by moving an image reading unit on which a line sensor and a
`light source for text illuminating is mounted. Ex. 1005, 1:8–11. Figure 1 of
`Kokubo is reproduced below:
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`3 Because other sections of Fujinawa describes element 26 as “reading
`device motor” (see e.g., Ex. 1004 ¶¶ 39, 60), we agree with Petitioner that
`Fujinawa mislabels reading motor 26 in paragraph 59 as “take-up motor 26.”
`See Pet. 25 n.2.
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`Figure 1 is a plan view showing features of an image reading device with the
`upper part of the chassis cut away. Id. at 5:66–6:1. The image reading
`device comprises chassis 1, reading unit 6, and motor 7. Id. at 8:52–57,
`9:10–11. Reading unit 6 is supported by guide shaft 4 and rail 5, such that it
`is free to slide toward the front and rear of the image reading device. Id. at
`8:56–59. Image reading unit 6 may include movable mirror, lens tube,
`consisting of a series of lenses, and a line sensor (components not depicted).
`Id. at 11:63–12:6. Motor 7 is provided with drive gear 7a on a rotation shaft,
`drive pulley 8 rotated by the drive force of drive gear 7a, driven pulley 9,
`and timing belt 10 wound around drive pulley 8 and driven pulley 9, which
`is also fixed to reading unit 6. Id. at 9:10–15. Reading unit 6 is therefore
`moved by timing belt 10, which moves due to the rotation of motor 7. Id. at
`9:15–17. Figure 1 includes additional components not described.
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`2. Discretion Whether to Institute Under 35 U.S.C. § 325(d)
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`Petitioner asserts “[i]nstitution is warranted under 35 U.S.C. § 325(d)
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`because the Petitioner relies on new obviousness combinations not
`considered during examination of the ’019 patent.” Pet. 15. Patent Owner
`contends the Board should exercise its discretion not to institute inter partes
`review for this ground because the cited references (Fujinawa and Kokubo)
`are the same or substantially the same prior art considered by the Examiner
`during prosecution of the ’019 patent. Prelim. Resp. 2. Patent Owner
`asserts the Examiner considered Fujinawa during prosecution of the ’019
`patent because the Examiner indicated the reference was considered in an
`Information Disclosure Statement (IDS) submitted by applicant. Id. at 4.
`Patent Owner further asserts that the Examiner also considered a reference
`substantially similar to Kokubo (Watanabe (Ex. 1006)) in the IDS submitted
`by applicant. Id. Therefore, Patent Owner argues that we should deny
`institution because this ground is cumulative of prior Office proceedings. Id.
`at 5.
`Institution of inter partes review is discretionary. See 35 U.S.C.
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`§ 314(a); 37 C.F.R. § 42.108. Section 325(d) provides: “[i]n determining
`whether to institute . . . a proceeding . . . , the Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`The evidence supports Patent Owner’s assertion that Fujinawa and
`Watanabe were cited in an IDS and the Examiner considered both
`references. See Ex. 2002. But, there is no indication in the record that the
`Examiner rejected any claims based on either reference or that the Examiner
`or applicant substantively discussed either reference during prosecution of
`the ’019 patent. Furthermore, Petitioner’s obviousness challenge also relies
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`on the testimony of its witness, Anthony J. Senn (see Pet. 15); and Patent
`Owner does not argue this testimony is duplicative of evidence submitted
`previously to the Office. Under these circumstances, we decline to exercise
`our discretion to deny this ground under § 325(d).
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`3. Claims 1–3, 20–28, 31, 41, 43, 44, 53, and 63
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`Petitioner contends the combination of Fujinawa and Kokubo teaches
`the limitations recited in independent claim 1. Pet. 18–30. Petitioner asserts
`Fujinawa discloses a digital microform imaging apparatus nearly identical to
`the claimed digital microform imaging apparatus. Id. at 19. In particular,
`Petitioner asserts Fujinawa discloses the claimed fold mirror, first elongated
`strait lead member, first motor, first carriage, area sensor, and lens
`limitations recited in claim 1. Id. at 18–22, 24–29. Petitioner relies on
`Kokubo to disclose a drive mechanism spaced apart from the first lead
`member. Id. at 23–24. Petitioner asserts that both Fujinawa and Kokubo
`disclose the lens and area sensor are located on a first lateral side of the first
`lead member and a first lateral side of the first drive mechanism, as recited
`in the wherein clause. Id. at 28–30. Petitioner contends one of skill in the
`art at the time of the invention of the ’019 patent would have known to
`simply substitute one well-known drive mechanism for moving a carriage
`along an optical path (Fujinawa’s motor that turns a lead screw) for another
`well-known drive mechanism for moving a carriage along an optical path
`(Kokubo’s belt and pulley drive mechanism) to achieve a predictable result.
`Id. at 24–25; see also Pet. 23 (asserting that one of skill in the art would
`recognize that Kokubo’s drive mechanism could be simply substituted for
`Fujinawa’s drive mechanism to achieve the same, predictable, result). In
`support of its assertions, Petitioner relies on the testimony of Mr. Senn. See
`Pet. 17–30 (citing Ex. 1002).
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`Patent Owner contends Petitioner’s rationale is insufficient to support
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`the proposed modification of Fujinawa’s drive mechanism with Kokubo’s
`drive mechanism. See Prelim. Resp. 16–24. Specifically, Patent Owner
`argues Petitioner did not explain why one of ordinary skill in the art would
`have made the substitution, which Patent Owner asserts would add
`complexity and be a substantial redesign of Fujinawa. See id. at 17–20.
`Patent Owner further argues the proposed modification of Fujinawa to
`incorporate a belt-based drive mechanism would render the device
`unsuitable for its intended purpose because it does not allow movement
`sufficiently precise to focus an image. Id. at 21–22. Patent Owner also
`argues one of skill in the art would have been discouraged from making the
`proposed modification because the belt and pulley system would increase
`the size of Fujinawa’s device, would require numerous additional
`components, and would violate a fundamental principle of mechanical
`design that the number of moving parts should be minimized. Id. at 23–24.
`Additionally, Patent Owner asserts the combination of Fujinawa and
`Kokubo would not have resulted in the claimed invention, but rather would
`have resulted in a single image reading unit that houses the image reading
`components because Kokubo’s disclosure relates to a device that has a single
`image reading unit that contains the necessary reading components. See id.
`at 24–26.
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`We have reviewed the information provided by Petitioner and
`determine, based on the current record and for purposes of this Decision,
`that Petitioner sufficiently establishes the combination of Fujinawa and
`Kokubo teaches the limitations recited in claim 1. For example, Petitioner
`sufficiently shows that Fujinawa discloses “a first elongated and
`substantially strait lead member supported by the chassis and aligned along a
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`substantially horizontal axis, the first lead member including an elongated
`shaft” and Kokubo discloses “a first drive mechanism supported by the
`chassis and extending alongside and spaced apart from the first lead
`member.” Pet. 20–21, 23. Petitioner adequately shows that Kokubo
`discloses “wherein the lens and area sensor are located on a first lateral side
`of the first lead member and located on a first lateral side of the first drive
`mechanism.” Id. at 29–30. Petitioner also sufficiently establishes, for
`purposes of this Decision, that Fujinawa teaches the remaining limitations
`set forth in claim 1. See id. at 18–28.
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`At this stage of the proceeding, we are not persuaded by Patent
`Owner’s arguments that Petitioner does not sufficiently explain why one of
`skill in the art would have made the modification. Although an assertion of
`obviousness cannot be sustained by mere conclusory statements, if a person
`of ordinary skill can implement a predictable variation (such as a simple
`substitution of one known element for another), it is likely to be obvious
`under § 103. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417. We
`determine, for purposes of this Decision, that Petitioner’s stated reason for
`the combination, namely that replacing Fujinawa’s drive mechanism with
`Kokubo’s belt and pulley drive mechanism is a simple substitution that
`yields predictable results, is sufficient rationale to support the combination.
`In reaching our determination, we credit the testimony of Petitioner’s
`witness, Mr. Senn. See Ex. 1002 ¶¶ 101–104. On the current record, we are
`not persuaded by Patent Owner’s attorney arguments that the proposed
`modification would not allow movement sufficiently precise to focus an
`image or that one of skill in the art would have been discouraged from
`making the modification. Additionally, at this stage of the proceeding, we
`are not persuaded by Patent Owner’s arguments that Petitioner’s proposed
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`modification to replace the drive mechanism of Fujinawa with Kokubo’s
`drive mechanism also would have bodily incorporated Kokubo’s single
`image reading unit and, thus, not resulted in the claimed invention.
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`With respect to independent claims 41 and 63, and dependent claims
`2, 3, 20–28, 31, 43, 44, and 53 (which depend from claim 1 or 41), we have
`reviewed Petitioner’s analysis and determine, for purposes of this Decision,
`that Petitioner sufficiently supports its contentions that the combination of
`Fujinawa and Kokubo teaches the limitations recited in these claims. See
`Pet. 62–85.
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`For the foregoing reasons, we are persuaded Petitioner has
`demonstrated a reasonable likelihood of prevailing in establishing that
`claims 1–3, 20–28, 31, 41, 43, 44, 53, and 63 would have been obvious over
`the combination of Fujinawa and Kokubo.
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`3. Claims 5–7
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`Petitioner contends Kokubo teaches “the first drive mechanism
`includes a toothed belt,” as recited in dependent claim 5. Pet. 32. Petitioner
`also contends Kokubo teaches “a toothed pulley on the first shaft that
`engages the toothed belt,” as recited in dependent claim 6. Id. In particular,
`Petitioner asserts that one of ordinary skill in the art would have understood
`the timing belt disclosed by Kokubo is toothed. Id. Petitioner further asserts
`that Kokubo discloses the toothed belt interacts with a driven pulley, which
`one of skill in the art would have understood would also be toothed. Id. In
`support of its assertions, Petitioner relies on the testimony of its witness,
`Mr. Senn. See id. (citing Ex. 1002).
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`Patent Owner argues that Kokubo depicts a smooth timing belt and
`smooth pulley, and not a toothed belt and pulley. Prelim. Resp. 26–27.
`Patent Owner contends Petitioner’s conclusion that Kokubo’s timing belt
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`and driven pulley are toothed is not supported by the record and is
`insufficient to establish obviousness. Prelim. Resp. 26–27.
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`We have reviewed the information provided by Petitioner, and
`determine, based on the current record and for purposes of this Decision,
`that Petitioner sufficiently shows Kokubo teaches the limitations recited in
`claims 5 and 6. Petitioner’s contentions are supported by testimony of its
`witness, Mr. Senn, which we credit. See Ex. 1002 ¶ 53 (explaining that
`“[o]ne of ordinary skill in the art would have recognized that based on the
`disclosure of Kokubo both ‘timing belt 10’ and ‘driven pulley 9’ would be
`toothed”).
`
`We also determine, for purposes of this Decision, that Petitioner
`adequately shows the combination of Fujinawa and Kokubo teaches the
`limitations recited in claim 7, which depends from claim 6. See Pet. 32–35.
`For example, Petitioner sufficiently supports its contention that Fujinawa
`discloses a second carriage supported for movement along an axis that is
`substantially parallel to the second optical axis. See Pet. 33.
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`For the foregoing reasons, we conclude Petitioner has demonstrated a
`reasonable likelihood of prevailing in establishing claims 5–7 would have
`been obvious over the combination of Fujinawa and Kokubo.
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`4. Claims 8, 9, and 47
`
`Claim 8 depends from claim 7 and further recites “the second motor
`shaft extends along an axis that is substantially parallel to the second optical
`axis.” Claim 47 recites the same limitation. Petitioner relies on the
`combination of Fujinawa and Kokubo to teach this limitation. See Pet. 35.
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`Patent Owner contends that if one of skill in the art incorporated
`Kokubo’s drive system into Fujinawa, the motor shafts would extend
`perpendicular to the direction of travel of carriages, and, thus, would not be
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`parallel to the second optical axis, as claimed. Prelim. Resp. 27–28. Patent
`Owner argues that to meet the limitations of claim 8, one of skill in the art
`would have needed to modify Fujinawa to incorporate Kokubo’s drive
`mechanism and then modify Kokubo’s drive mechanism to reorient the
`motor shafts and pulleys. Id. at 28–29. Patent Owner argues that Petitioner
`has offered no reason why one of skill in the art would have reoriented the
`motors of Kokubo. Id. at 29.
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`An obviousness analysis cannot be sustained by mere conclusory
`statements; instead, there must be some articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness. KSR,
`550 U.S. at 418. To meet the limitations of claim 7 (from which claim 8
`depends), Petitioner proposes to substitute the second drive mechanism
`disclosed by Fujinawa (motor that turns a rotating shaft) with Kokubo’s belt
`and pulley drive mechanism. See Pet. 32–35. Petitioner acknowledges
`Kokubo discloses the first motor shaft is perpendicular to the first lead
`member (and thus perpendicular to the second optical axis), but argues that
`one of ordinary skill in the art “would have understood how to design the
`obvious combination of the Fujinawa apparatus with the Kokubo drive
`mechanism such that the motor shaft was parallel to the first lead member.”
`See id. at 35. However, Petitioner does not sufficiently explain why a
`person of ordinary skill in the art would have made the proposed
`modification. Accordingly, we conclude Petitioner has not demonstrated a
`reasonable likelihood of prevailing in establishing that claims 8, 9 (which
`depends from claim 8), and 47 would have been obvious over the
`combination of Fujinawa and Kokubo.
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`5. Claims 29 and 30
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`Claim 29 recites “the distance along the second optical axis between
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`the fold mirror and the sensor array is greater than the distance along the
`first optical axis between the media support structure and the fold mirror.”
`Petitioner contends that Fujinawa discloses this limitation. Pet. 44.
`Specifically, Petitioner points to Figure 4 as meeting this limitation and
`further cites to testimony of Mr. Senn. Id. Mr. Senn also relies only upon
`Figure 4 of Fujinawa to disclose this limitation. Ex. 1002 ¶ 66.
`
`Patent Owner argues that Petitioner cannot rely on the figures of
`Fujinawa to depict relative distance because Fujinawa is silent as to the
`dimensions and relative distances between the components in the figures.
`Prelim. Resp. 30. We agree. Drawings can be cited against the claims of a
`patent, even though the features shown in the drawing are not explained in
`the specification. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979).
`However, “it is well established that patent drawings do not define the
`precise proportions of the elements and may not be relied on to show
`particular sizes if the specification is completely silent on the issue.”
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed.
`Cir. 2000). Here, Petitioner relies on the relative distances between
`components illustrated in Figure 4, but does not cite to any sections of
`Fujinawa which describe the proportions between the relied upon component
`or otherwise describes that Figure 4 is drawn to scale. See Pet. 44.
`Accordingly, we conclude Petitioner has not demonstrated a reasonable
`likelihood of prevailing in establishing that claim 29, and its dependent
`claim 30, would have been obvious over the combination of Fujinawa and
`Kokubo.
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`6. Claim 32
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`Claim 32 recites in part “a cover assembly . . . including front and
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`rear ends, the front end proximate the first ends of the first and second lead
`members.” Petitioner contends Fujinawa discloses this limitation. Pet. 46–
`47. However, Petitioner does not explain how Fujinawa discloses the front
`end of the cover assembly is proximate the first ends of the first and second
`lead members, and indeed does not provide any citation to Fujinawa for this
`limitation. See id. Rather, Petitioner merely quotes the language of claim
`32 and asserts that Fujinawa discloses the recited limitations. See id. at 47.
`In support of its conclusory assertion, Petitioner cites to testimony of Mr.
`Senn, but does not provide any explanation of Mr. Senn’s testimony. See id.
`We give no weight to evidence where a party fails to state its relevance. See
`37 C.F.R. § 42.104(b)(5). Therefore, Petitioner fails to establish that the
`cited references disclose a cover assembly proximate the first ends of first
`and second lead member, and we, accordingly, conclude Petitioner has not
`demonstrated a reasonable likelihood of prevailing in establishing that claim
`32 would have been obvious over the combination of Fujinawa and Kokubo.
` C. Obviousness Over Fujinawa, Kokubo, and Minolta and
`Obviousness Over F
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