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 RESPONSE TO THE PETITION
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`

`TABLE OF CONTENTS
`
`
`B.
`
`Page
`INTRODUCTION AND SUMMARY OF THE ARGUMENT .................... 1
`I.
`CLAIM CONSTRUCTION ........................................................................... 4
`II.
`III. PERSON OF ORDINARY SKILL IN THE ART ......................................... 4
`IV. BACKGROUND AND OVERVIEW OF THE ’019 PATENT .................... 4
`V.
`ST IMAGING BEARS THE BURDEN OF PROVING THAT
`CLAIMS 1–3, 5–7, 20–28, 31, 41, 43, 44, 53, AND 63 WOULD
`HAVE BEEN OBVIOUS BY PREPONDERANCE OF THE
`EVIDENCE .................................................................................................... 7
`VI. CLAIMS 1–3, 5–7, 20–28, 31, 41, 43, 44, 53, AND 63 REMAIN
`PATENTABLE OVER FUJINAWA IN VIEW OF KOKUBO .................... 9
`A.
`The Scope And Content Of The Prior Art Is Different From The
`Challenged Claims ............................................................................... 9
`ST Imaging’s Proposed Modification Of Fujinawa In Light Of
`Kokubo Is Not A Simple Substitution ............................................... 11
`1.
`ST Imaging has failed to establish that the proposed
`substituted components and their functions were known
`in the art ................................................................................... 13
`a.
`The function of Fujinawa’s threaded worms is to
`precisely position optical elements along an optical
`path................................................................................. 14
`The function of Kokubo’s belt and pulley system is
`not to precisely position optical elements along an
`optical path ..................................................................... 15
`One Of Ordinary Skill In The Art Could Not Have
`Substituted Kokubo’s Belt Drive System For Fujinawa’s
`Threaded Worm Because The Resulting Device Would
`Not Have Worked For Its Intended Purpose ............................ 20
`C. Kokubo Teaches Away From The Proposed Combination ............... 22
`D.
`Claims 5 And 6 Remain Patentable ................................................... 27
`E.
`Claim 26 Remains Patentable ............................................................ 28
`F.
`Claims 2, 3, 7, 9, 20–28, 31, 43, 44, And 53 Remain Patentable ...... 31
`VII. CONCLUSION ............................................................................................. 31
`
`a.
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`2.
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`-i-
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`
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`Number
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`2001
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`LIST OF EXHIBITS
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`Brief Description
`
`6/6/2013 Information Disclosure Statement submitted
`
`by applicant, Application Serial No. 13/560,283
`
`6/17/2013 List of References cited by applicant and
`
`2002
`
`considered by examiner, Application Serial No.
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`13/560,283
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`2003
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`2004
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`2005
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`2006
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`2007
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`6/25/2013 Notice of Allowance and Fee(s) Due,
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`Application Serial No. 13/560,283
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`11/4/2016 Claim Construction Order, Dkt. No. 38,
`
`e-ImageData Corp. v. Digital Check Corp., Civil
`
`Action No. 16-cv-576, E. D. Wis.
`
`Declaration of Jonathan D. Ellis
`
`Curriculum vitae of Jonathan D. Ellis
`
`Deposition Transcript of Anthony J. Senn
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`
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`-ii-
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`

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`
`I.
`
`INTRODUCTION AND SUMMARY OF THE ARGUMENT.
`The patent at issue in this proceeding relates to a digital microfilm imaging
`
`apparatus (DMIA). A DMIA magnifies a microform, such as microfilm or
`
`microfiche, so a user can view and read the microform. To do so, the DMIA must
`
`precisely position both a lens and image sensor along an optical path relative to the
`
`microform. The positioning is critical. If the lens or image sensor is out of
`
`position by thousandths of an inch, the image will not be in focus and will be
`
`unreadable. The claimed technology is aimed at reducing the overall size,
`
`complexity, and footprint of a DMIA, while still allowing for the required
`
`precision placement of the lens and sensor so that users can view different media at
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`different magnifications.
`
`To achieve this precise positioning, the ’019 Patent discloses a device that
`
`supports a lens and an area sensor on carriages that are driven by drive
`
`mechanisms along lead members. Claim 1 requires “a first drive mechanism . . .
`
`extending alongside and spaced apart from the first lead member” and “the lens
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`and area sensor are located on a first lateral side of the first lead member and
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`located on a first lateral side of the first drive mechanism.” Independent claims 41
`
`and 63 require a first or second drive mechanism extending alongside and spaced
`
`apart from the first lead member.
`
`1
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`

`

`
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`Petitioner, ST Imaging, has failed to prove the unpatentability of claims 1,
`
`41, and 63. The claims are valid because at the time of the invention, those of skill
`
`in the art believed smooth belts and pulleys easily slipped and were not capable of
`
`providing the precision placement necessary for optical focusing. ST Imaging has
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`not identified prior art using a smooth belt or pulley system to provide precision
`
`placement of objects for optical focusing. Further, ST Imaging has not proven it
`
`was known to use a smooth belt or pulley system to move components along an
`
`optical path. Fujinawa, the primary reference relied on by ST Imaging, precisely
`
`positions the lens and sensor using threaded worms, not a belt drive mechanism,
`
`which is nowhere in Fujinawa. Using hindsight to reconstruct the claims,
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`ST Imaging relies on Kokubo’s disclosure of a smooth belt and pulley system used
`
`for moving a reading unit in a flatbed scanner. Kokubo’s belt and pulley system is
`
`not used for precisely positioning a lens relative to a sensor or a sensor relative to a
`
`lens along an optical path. Having found no motivation to combine the references,
`
`ST Imaging improperly contends that the use of a belt-based drive system from a
`
`flatbed scanner in the precision focusing device of Fujinawa would have been a
`
`simple substitution.
`
`ST Imaging’s simple substitution argument fails for at least three reasons.
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`First, none of the references at issue in this proceeding disclose use of a belt-based
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`drive mechanism to position a lens or sensor along an optical path. ST Imaging
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`2
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`

`

`
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`has accordingly failed to show that it was known in the prior art to use a belt-based
`
`drive mechanism to position a lens or sensor along an optical path. Second,
`
`substituting Kokubo’s smooth belt drive system for Fujinawa’s threaded worm
`
`results in Fujinawa’s device being unsuitable for its intended purpose because the
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`smooth belt drive system cannot accomplish the necessary precision to focus an
`
`image. Third, Kokubo’s own disclosure discourages use of a belt and pulley drive
`
`system to position a lens while encouraging use of a threaded screw to position a
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`lens.
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`ST Imaging has additionally failed to prove that claims 5, 6, and 26 would
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`have been obvious. For claims 5 and 6, ST Imaging has failed to identify a toothed
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`belt in the prior art. For claim 26, ST Imaging has failed to demonstrate that it
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`would have been obvious to reorient the motor shaft of Kokubo’s device.
`
`Thus, by failing to identify all of the claim elements in the prior art and by
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`failing to identify prior art that used a smooth belt or pulley system to precisely
`
`adjust optical elements, or provide motivation for one of ordinary skill in the art to
`
`make such a substitution, ST Imaging has failed to prove the unpatentability of
`
`claims 1, 5, 6, 26, 41, and 63 of the ’019 Patent by a preponderance of the
`
`evidence. The Board should issue a final written decision upholding the validity of
`
`these claims and their dependent claims over the instituted prior art.
`
`3
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`

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`
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`II. CLAIM CONSTRUCTION.
`Since ST Imaging filed the Petition, the district court in the parallel litigation
`
`issued its claim construction order. The court adopted the parties’ stipulated
`
`construction of “first carriage” and construed the term to mean “first movable
`
`support structure.” (Ex. 2004 at 4.) The court also concluded that the preamble
`
`phrase “digital microform imaging apparatus” limits the claims. (Ex. 2004 at 19.)
`
`Consistent with the Petition, Patent Owner e-Image has interpreted these
`
`constructions to be the broadest reasonable interpretations and has applied them
`
`herein. (See Petition at 16–17.) Regardless of the constructions of these terms, the
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`claims would not have been obvious.
`
`III. PERSON OF ORDINARY SKILL IN THE ART.
`A person of ordinary skill in the art at the time of the invention would have
`
`an undergraduate degree in mechanical or optical engineering and 3 years of
`
`experience working with or designing scanners, camera systems or printers, which
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`involve opto-mechanical systems similar to that described in the ’019 Patent and
`
`the prior art. (Ex. 2005 ¶ 20.)
`
`IV. BACKGROUND AND OVERVIEW OF THE ’019 PATENT.
`A DMIA magnifies a microform media so a user can view and read the
`
`microform media. (Ex. 2007 at 8:17–24.) Microform media are reproductions of
`
`original documents that have been reduced in size. (Ex. 2007 at 6:15–17.) Types
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`4
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`

`
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`of microform media include microfilm and microfiche. (Ex. 2007 at 6:12–14.)
`
`The range of reduction ratios for microform extends from seven times the original
`
`size to over one hundred times the size of the original document. (Ex. 2007 at
`
`6:18–7:5.)
`
`DMIAs generally include a light source that shines light through or reflects
`
`light off the microform to a lens or lens system. (Ex. 2007 at 9:13–23.) The lens
`
`then focuses the light onto an image sensor, which captures the light as optical
`
`data. (Ex. 2007 at 9:24–10:14.) The optical data can then be viewed by a user in
`
`real time or saved to a disk. (Ex. 2007 at 9:24–10:1.)
`
`For the magnified image of the microform to be in focus, the lens and image
`
`sensor must be precisely positioned relative to the microform in the optical path.
`
`(Ex. 2007 at 10:8–11; Ex. 2005 ¶ 38.) If the lens or sensor are in the improper
`
`position along the optical path, the image will not be in focus and the microform
`
`will not be readable. (Ex. 2007 at 67:14–24.) A positioning error of a thousandth
`
`of an inch could cause an image to be out of focus. (Ex. 2007 at 67:4–12; Ex. 2005
`
`¶ 38.)
`
`The ’019 Patent discloses a DMIA that reduces the overall size, complexity,
`
`and footprint of a DMIA through the unique positioning of components, while still
`
`allowing for the required precision placement of the lens and sensor so that users
`
`can view different media at different magnifications. (Ex. 2005 ¶ 22.) To achieve
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`5
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`

`

`
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`this functional result, the ‘019 Patent uses lead members and drive mechanisms to
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`precisely position the lens and sensor along the optical path. (Ex. 2005 ¶ 22, 23.)
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`The lens and sensor are supported by carriages that are coupled to lead members.
`
`(Ex. 2005 ¶ 23.) The drive mechanisms move the carriages to the proper positions
`
`along the optical path for the DMIA to achieve the desired magnification and to
`
`focus the image. (Ex. 2005 ¶ 23.)
`
`Claim 1 is illustrative. The text of claim 1 is reproduced below:
`
`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;
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`a first elongated and substantially strait lead member supported by the
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`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
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`alongside and spaced apart from the first lead member;
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`a first motor including a first motor shaft that engages the first drive
`
`mechanism;
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`a first carriage coupled to the first lead member for movement there
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`along and coupled to the chassis via the first drive mechanism and the first
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`6
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`

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`
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`motor such that rotation of the first motor shaft causes the first carriage to
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`move along the first lead member along a trajectory that is substantially
`
`parallel to the second optical axis;
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`an area sensor supported by the first carriage and aligned with the
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`second optical axis for movement along the second optical axis within a first
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`range to adjust a distance between the area sensor and the fold mirror; and
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`a lens supported by the chassis along the second optical axis and
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`positioned between the area sensor and the fold mirror;
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`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.
`
`(Ex. 1001, clm. 1.)
`
`V.
`
`ST IMAGING BEARS THE BURDEN OF PROVING THAT CLAIMS
`1–3, 5–7, 20–28, 31, 41, 43, 44, 53, AND 63 WOULD HAVE BEEN
`OBVIOUS BY PREPONDERANCE OF THE EVIDENCE.
`In an inter partes review, the petitioner bears the ultimate burden of proving
`
`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). ST
`
`Imaging’s only instituted ground of unpatentability alleges 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
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`7
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`
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`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.” Id. 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 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
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`(3) provide a “satisfactory explanation” for the motivation finding that includes an
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`express and “rational” connection with the evidence presented. In re Nuvasive,
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`Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`
`The requirement of an articulated reasoned basis to explain the obviousness
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`conclusion “remains the primary guarantor against a non-statutory hindsight
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`analysis.” Ortho-McNeil, 520 F.3d 1358, 1364–65 (Fed. Cir. 2008). “[A] patent
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`composed of several elements is not proved obvious merely by demonstrating that
`
`each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at
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`418. “This is so because inventions in most, if not all, instances rely upon building
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`blocks long since uncovered, and claimed discoveries almost of necessity will be
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`combinations of what, in some sense, is already known.” Id. at 418–19.
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`Accordingly, to show a reasonable likelihood of success on its obviousness
`
`grounds, ST Imaging’s Petition must have identified a reason that would have
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`8
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`

`
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`prompted one of skill in the art to combine the elements in the way the claimed
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`invention does. Id. at 406. ST Imaging has failed to carry its burden.
`
`VI. CLAIMS 1–3, 5–7, 20–28, 31, 41, 43, 44, 53, AND 63 REMAIN
`PATENTABLE OVER FUJINAWA IN VIEW OF KOKUBO.
`A. The Scope And Content Of The Prior Art Is Different From The
`Challenged Claims.
`ST Imaging has failed to prove that claims 1–3, 5–7, 20–28, 31, 41, 43, 44,
`
`53, and 63 would have been obvious over Fujinawa in view of Kokubo. A claim is
`
`not patentable if the differences between it and the prior art are such that the
`
`subject matter as a whole would not have been obvious to a person of ordinary skill
`
`in the art at the time of the invention. KSR, 550 U.S. at 405. Here, the prior art
`
`does not disclose the use of a belt system to move carriages containing optical
`
`elements, or the optical elements themselves, along an optical path for focusing an
`
`image.
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`ST Imaging concedes that Fujinawa does not disclose all of the limitations
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`of independent claims 1, 41, and 63. Regarding claim 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 first lateral side of the first
`
`drive mechanism.” Regarding claims 41 and 63, Fujinawa does not disclose a first
`
`or second drive mechanism extending alongside and spaced apart from the first
`
`9
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`
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`lead member. Instead, Fujinawa discloses a motor 26 having a shaft coupled to a
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`worm that is threadingly coupled to the line sensor 28. (Ex. 1004 Fig. 4.) The line
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`sensor 28 moves with rotation of the motor shaft. (Ex. 1004 ¶ 0059.) Fujinawa
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`also discloses a separate motor 27 having a shaft coupled to a worm that supports a
`
`lens 29. (Ex. 1004 Fig. 4.) Thus, Fujinawa teaches that the sensor and lens may be
`
`moved along the optical path using threaded worms. Both the line sensor 28 and
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`the lens 29 are positioned along the optical path, shown in red below.
`
`
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`Ex. 1004 Fig. 4 (cropped and annotated)
`
`
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`ST Imaging attempts to remedy the deficiencies of Fujinawa by relying on
`
`Kokubo. (Petition at 24, 47, 52.) Kokubo discloses a flatbed scanner that includes
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`a movable reading unit 6. (Ex. 1005 Fig. 1; Ex. 2005 ¶¶ 28, 29.) Kokubo
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`discloses that the reading unit 6 and its components move as a whole using a motor
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`7 having a drive gear 7a on a rotation shaft, a drive pulley 8, a driven pulley 9, and
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`10
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`

`

`
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`a smooth timing belt 10. (Ex. 1005 at 9:10–20, Fig. 1 (reproduced below); Ex.
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`2007 at 27:24–28:8; Ex. 2005 ¶ 29.)
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`
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`Ex. 1005 Fig. 1
`
`The timing belt and pulleys depicted in Figure 1 of Kokubo are used to
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`translate the reading unit during the mechanical scanning operation. (Ex. 2005 ¶
`
`30.) A person of ordinary skill in the art would understand that the belt drive
`
`system depicted in Figure 1 does not move the lens relative to the sensor. (Ex.
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`2005 ¶ 31.)
`
`B.
`
`ST Imaging’s Proposed Modification Of Fujinawa In Light Of
`Kokubo Is Not A Simple Substitution.
`ST Imaging erroneously asserts that one of skill in the art would have known
`
`to replace Fujinawa’s threaded worm with Kokubo’s belt-based drive mechanism,
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`11
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`

`

`
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`contending that the modification would have been a simple substitution. (Petition
`
`at 23.) ST Imaging’s proposed substation of the belt and pulley drive system of
`
`Kokubo for the threaded worms of Fujinawa is not a simple substitution for at least
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`two reasons. First, it is not a simple substitution because the substituted
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`components would not be performing the same function that was disclosed in the
`
`prior art, namely they would now be moving elements critical to optical focusing,
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`when in the prior art the elements moved components unrelated to optical focusing.
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`Second, it is not a simple substitution because at the time of the invention smooth
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`belts and pulleys were known to slip, which if substituted into the ’019 Patent,
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`would not allow the device to function for its intended purpose of precision
`
`focusing.
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`A proposed modification is only a simple substitution if it involves replacing
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`one known prior art element for another known prior art element according to their
`
`established functions. KSR, 550 U.S. at 401. For example, one of the original
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`“simple substitution” cases is Hotchkiss v. Greenwood, where the Supreme Court
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`found that a claim to a specific design of a clay doorknob was obvious where the
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`prior art disclosed the specific door knob design made out of wood and other prior
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`art disclosed that door knobs can be made from clay. 52 U.S. 248 (1851). More
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`recently, the Federal Circuit affirmed a finding that a claim directed to a metallic
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`air valve for a plumbing system was obvious where one prior art reference
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`12
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`
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`disclosed the air valve and a second reference disclosed that plumbing fixtures can
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`be made out of a variety of metals. In re Lackey, 371 F. App’x 80, 82 (Fed. Cir.
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`2010).
`
`A claim can only be found obvious based on a simple substitution if the
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`claim “‘simply arranges old elements with each performing the same function it
`
`had been known to perform’ and yields no more than one would expect from such
`
`an arrangement.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
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`1314, 1326 (Fed. Cir. 2009) (emphasis original) (quoting KSR, 550 U.S. at 417).
`
`Substitutions that change the “basic principles under which the prior art was
`
`designed to operate, or that render the prior art inoperable for its intended purpose,
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`may fail to support a conclusion of obviousness.” Plas-Pak Indus., Inc. v. Sulzer
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`Mixpac AG, 600 F. App’x 755, 758 (Fed. Cir. 2015) (internal quotations and
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`citations omitted).
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`ST Imaging’s simple substitution argument fails because the proposed
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`substituted components are not performing their same disclosed function and
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`because the resulting device would be unsuitable for its intended purpose.
`
`1.
`
`ST Imaging has failed to establish that the proposed
`substituted components and their functions were known in
`the art.
`ST Imaging proposes to simply substitute the belt and pulley system of
`
`Kokubo for the threaded worm of Fujinawa, but ST Imaging has not identified a
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`13
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`
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`prior art reference that discloses a belt and pulley system that accomplishes the
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`function of the threaded worms in Fujinawa. ST Imaging has accordingly not
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`shown that the substituted belt and pulley system of Kokubo would be performing
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`the same function it has been known to perform. DePuy Spine, 567 F.3d at 1326.
`
`a.
`
`The function of Fujinawa’s threaded worms is to
`precisely position optical elements along an optical
`path.
`In Fujinawa, the threaded worms do more than merely translate rotational
`
`motion to linear motion. (Ex. 2005 ¶ 26.) The threaded worms precisely position
`
`a lens relative to an image sensor and vice versa. (Ex. 2005 ¶ 26.)
`
`DMIAs have recognized the need for providing precise positioning in the
`
`focusing elements. (Ex. 2005 ¶ 38.) A DMIA must magnify microfilm so it is
`
`readable. (Ex. 2007 at 8:17–24.) A DMIA magnifies microform using a lens
`
`system to focus an image onto a sensor. (Ex. 2007 at 10:2–22.) To focus an image
`
`onto a sensor, the DMIA must precisely position the lens and the sensor relative to
`
`the microform. (Ex. 2007 at 11:8–11; Ex. 2005 ¶ 38.) If the DMIA improperly
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`positions the lens, the image will not be in focus and will be unreadable. (Ex. 2007
`
`at 13:16–18.) Similarly, if the DMIA improperly positions the sensor, the image
`
`will not be in focus. (Ex. 2007 at 14:13–18.) The DMIA must be able to position
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`the lens and sensor very precisely because errors of thousandths of an inch result in
`
`an image that is not in focus. (Ex. 2007 at 67:4–12; Ex. 2005 ¶ 38.)
`
`14
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`

`
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`Fujinawa’s threaded worms perform the critical functions of precisely
`
`positioning the lens and sensor. (Ex. 1004 Fig. 4 items 28, 29.) Accordingly, any
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`components substituted for the threaded worms must be able to precisely position a
`
`lens relative to an image sensor or precisely position an image sensor relative to a
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`lens. DePuy Spine, 567 F.3d at 1326; see also Ex. 2005 ¶¶ 26, 37.
`
`a.
`
`The function of Kokubo’s belt and pulley system is
`not to precisely position optical elements along an
`optical path.
`The function of the worms in Fujinawa is fundamentally different from the
`
`function of the belt and pulley system in Kokubo. (Ex. 2005 ¶ 37.) In Kokubo, the
`
`belt and pulley system translates the entire reading unit. (Ex. 2005 ¶ 37.) The belt
`
`and pulley system is not used to position components within the optical path. (Ex.
`
`2005 ¶¶ 30, 31.) The belt and pulley system is also not used to position the lens
`
`relative to the sensor and thus is not used for adjusting focus. (Ex. 2007 at 27:16–
`
`28:8; Ex. 2005 ¶ 37.) The belt and pulley system of Kokubo does not need the
`
`same precision as the worms in Fujinawa because the image is already in focus
`
`when the belt and pulley system moves the reading unit. (Ex. 2007 at 23:10–19;
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`Ex. 2005 ¶ 30.) Once the image is in focus, the belt and pulley system moves the
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`entire reading unit across the image to scan the image. (Ex. 2007 at 23:10–19; Ex.
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`2005 ¶ 29.)
`
`15
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`

`
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`As shown in Figures 17 and 18, reproduced below, the movable reading unit
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`6 contains a fixed mirror 37, a movable mirror 38, a lens tube 40 having a series of
`
`lenses (shown in blue), a mirror 39 fixed to the lens tube, a mirror 41 fixed to the
`
`frame, and a line sensor 42 fixed to the frame. (Ex. 1005 at 11:63–12:8, Fig. 17;
`
`Ex. 2005 ¶ 29.) The lens tube 40 and sensor 42 are positioned along the optical
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`path (shown in red). (Ex. 1005 Fig. 17; Ex. 2005 ¶ 32.) The lens moves along the
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`optical path. (Ex. 1005 Fig. 17, Fig. 18; Ex. 2005 ¶ 32.) The lens, however,
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`moves along the optical path by the device depicted in Figs. 14–16, not by the belt
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`and pulley system of Fig. 1. (Ex. 2007 at 27:16–28:11; Ex. 2005 ¶ 31.)
`
`16
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`

`

`
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`(Ex. 2005 ¶ 32.)
`
`
`
`Like Fujinawa, Kokubo uses a feed screw to position the lens along the
`
`optical path. (Ex. 1005 Figs. 14–16 item 57; Ex. 2005 ¶ 31.) Kokubo depicts a
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`lens displacing unit in Figure 16. (Ex. 2005 ¶ 31.) The motor 52 rotates the feed
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`screw 57 so that the moving member 58 moves in the direction A-B to move the
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`lens tube 40. (Ex. 1005 at 12:24–56.) The feed screw 57 is controlling the
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`positioning of the lens tube 40 along the optical path. (Ex. 2007 at 29:11–15; Ex.
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`17
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`2005 ¶ 31.) Thus, in the optical path, Kokubo explicitly discloses use of a threaded
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`worm device (feed screw) for positioning components. (See Ex. 2005 ¶ 31.)
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`Kokubo does not use the belt and pulley system for positioning the lens or sensor
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`along the optical path. (Ex. 2005 ¶ 31.)
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`(Ex. 1005, Fig. 16.)
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`In fact, as ST Imaging’s expert admitted, none of the references cited by
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`ST Imaging disclose moving a lens relative to a sensor using a belt. (Ex. 2007 at
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`65:8–11; see also Ex. 2005 ¶ 40.) Likewise, none of the references cited by
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`ST Imaging disclose moving a sensor relative to a lens using a belt. (Ex. 2007 at
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`18
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`19–24.) Instead, both cited references disclose a toothed or threaded member that
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`precisely positions the lens relative to the image sensor. (Ex. 2005 ¶ 40.) In
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`Fujinawa, a threaded worm precisely positions the lens and area sensor. (Ex. 1004
`
`at Fig. 4; Ex. 2005 ¶ 40.) In Kokubo, a threaded screw controls the position of the
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`lens tube while the line sensor is stationary relative to the lens. (Ex. 1005 Figs.
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`14–16; Ex. 2005 ¶ 40.)
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`ST Imaging has failed to show that it was known to use a belt based drive
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`mechanism for moving a carriage along an optical path. The belt and pulley
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`system of Kokubo is moving the entire optical path. (Ex. 2007 ¶ 29.) The belt and
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`pulley system is not moving the lens along the optical path. (Ex. 2007 ¶ 31.) The
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`device that moves the lens carriage along the optical path is in fact a threaded
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`screw, like that of Fujinawa. (Ex. 1005 Fig. 16, item 57; Ex. 2007 ¶¶ 31, 32.)
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`ST Imaging has accordingly failed to identify a prior art belt and pulley
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`system that performs the function of precisely positioning a lens relative to a
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`sensor or vice versa. Because ST Imaging has failed to prove that the proposed
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`substituted components and their functions were known in the art, ST Imaging’s
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`simple substitution argument fails.
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`19
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`2. One Of Ordinary Skill In The Art Could Not Have
`Substituted Kokubo’s Belt Drive System For Fujinawa’s
`Threaded Worm Because The Resulting Device Would Not
`Have Worked For Its Intended Purpose.
`Substituting Kokubo’s belt and pulley system for Fujinawa’s threaded
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`worms would result in a device that does not work for its intended purpose. As to
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`whether the combination would be a “simple substitution,” the Federal Circuit
`
`explains, “[a]lthough predictability is a touchstone of obviousness, the ‘predictable
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`result’ discussed in KSR refers not only to the expectation that prior art elements
`
`are capable of being physically combined, but also that the combination would
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`have worked for its intended purpose.” DePuy Spine, 567 F.3d at 1326. In other
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`words, if a proposed modification would render the prior art invention
`
`unsatisfactory for its intended purpose, then there is no suggestion or motivation to
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`make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
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`1984).
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`ST Imaging’s proposed modification of Fujinawa’s device to incorporate a
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`smooth belt-based drive mechanism would render the device unsuitable for its
`
`intended purpose because smooth timing belts like those disclosed in Kokubo are
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`prone to slipping. (See Ex. 1005 at 2:48–56; Ex. 2005 ¶ 38) Slipping causes errors
`
`in the displacement of the sensor leading to image distortion. (Ex. 2007 at 34:8–
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`35:12; Ex. 2005 ¶ 38.) Slipping is not a concern in Fujinawa because Fujinawa
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`20
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`uses threaded worms that engage corresponding threads or teeth, which prevent
`
`slipping (Ex. 1004 Fig. 4; Ex. 2005 ¶ 38.)
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`Because of displacement errors such as slipping, modifying Fujinawa’s
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`device to incorporate a smooth belt-based drive mechanism would render the
`
`device unsuitable for its intended purpose because smooth belt systems cannot
`
`obtain the necessary precision to focus an image. (Ex. 2005 ¶ 39.) Fujinawa’s
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`device relies on precise movement of the lens and line sensor to focus the image
`
`onto the line sensor and capture the image. (Ex. 1004 ¶¶ 0059–61, clm. 16; Ex.
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`2005 ¶ 26.) A smooth belt drive system is unsuitable for a Fujinawa’s intended
`
`purpose because a smooth belt drive system does not allow movement sufficiently
`
`precise to focus an image. (Ex. 2005 ¶ 39.) Smooth belt drive systems are suitable
`
`for scanners, such as Kokubo’s device, because they only need to move the reading
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`unit to capture the image that is already in focus. (Ex. 2005 ¶ 30, 41.)
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`Kokubo discloses a belt and pulley system including a smooth timing belt
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`10. (Ex. 1005 at 9:11–15.) One of ordinary skill in the art would have understood
`
`the disclosed timing belt to be smooth because there is no disclosure anywhere in
`
`Kokubo that the timing belt or the pulleys are toothed. (Ex. 2005 ¶ 30.) One of
`
`ordinary skill in the art would have understood that a smooth timing belt is suitable
`
`for a mechanical scanning operation like that disclosed in Kokubo. (Ex. 2005
`
`¶ 30.)
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`21
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`Smooth belt drive systems are unsuitable for moving optical components to
`
`focus an image because focusing requires precise movements in minute
`
`increments—on the scale of thousandths of an inch—that a smooth belt cannot
`
`achieve. (Ex. 2005 ¶ 38.) That is why Fujinawa, Kokubo, and the ’019 Patent all
`
`disclose use of threaded or toothed members to position a lens along the optical
`
`path. (Ex. 2005 ¶ 40.) Fujinawa discloses threaded worms that precisely position
`
`the lens and area sensor. (Ex. 1004 ¶ 0059.) Kokubo discloses that the feed screw
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`precisely positions the lens tube. (Ex. 1005 at 13:31–54, Fig. 15.) The ’019 Patent
`
`discloses that the lead screws precisely position the lens and area sensor for
`
`focusing the image. (Ex. 1001 at 6:40–7:15.) Because a belt drive mechanism
`
`would not provide the necessary precision to focus the image, it would not have
`
`been obvious to modify Fujinawa to replace the precise worm drive system with a
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`belt based drive system. See DePuy Spine, 567 F.3d at 1326.
`
`Because ST Imaging’s proposed modification to Fujinawa’s device would
`
`render it unsuitable for its intended purpose, ST Imaging’s simple substitution
`
`argument does not carry ST Imaging’s burden of proving obviousness.
`
`C. Kokubo Teaches Away From The Proposed Combination.
`It additionally would not have been obvious to modify Fujinawa to use the
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`belt and pulley mechanism of Kokubo because Kokubo discourages a person of
`
`ordinary skill in the art from using a smooth belt and pulley system to position a
`
`22
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`lens within the optical path. By discouraging use of a belt and pulley syst