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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`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
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`_____________________
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`CASE: IPR2017-00178
`U.S. PATENT NO. 9,179,019
`_____________________
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`
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`REPLY TO PATENT OWNER RESPONSE
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`

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`Case No. IPR2017-00178
`Patent No. 9,179,019
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`Page
`INTRODUCTION ........................................................................................... 1
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`Table of Contents
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`PERSON OF ORDINARY SKILL IN THE ART .......................................... 2
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`I.
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`II.
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`III. CLAIM CONSTRUCTION ............................................................................ 2
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`IV. CLAIMS 1-3, 5-7, 20-28, 31, 41, 43, 44, 53, AND 63 ARE OBVIOUS
`IN OVER FUJINAWA IN VIEW OF KOKUBO ............................................ 3
`
`A.
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`B.
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`The Claims Do Not Require Precision Focusing .................................. 3
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`Kokubo Discloses the Drive Mechanism of Claims 1-3, 5-7, 20-28,
`31, 41, 43, 44, 53, and 63 ...................................................................... 4
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`1.
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`2.
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`3.
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`4.
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`Kokubo Discloses a Toothed Belt ............................................... 5
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`Kokubo’s Belt is Capable of Precision Focusing ........................ 7
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`Kokubo Does Not Discourage the Use of a Belt and Pulley....... 9
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`To “Teach Away” Requires that a Reference Teaches Away
`From All Embodiments ............................................................... 9
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`C.
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`Petitioner Established Kokubo Discloses the Toothed Belt of
`Claims 5 and 6 ..................................................................................... 11
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`D. One of Skill in the Art Would Know to Orient the Motor Shaft
`Substantially Parallel to the First Lead Member ................................. 11
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`V.
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`THE COMBINATION OF FUJINAWA AND KOKUBO DISCLOSE
`EVERY ELEMENT OF THE CLAIMS ....................................................... 12
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`A.
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`B.
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`It Would be Obvious to a POSA to Combine the Teachings of
`Digital Microform Readers ................................................................. 12
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`The Combination of Fujinawa and Kokubo Discloses Moving
`Elements Critical to Focusing ............................................................. 13
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`VI. CONCLUSION .............................................................................................. 14
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`Case No. IPR2017-00178
`Patent No. 9,179,019
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`List of Exhibits
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`Ex. 1001: U.S. Patent No. 9,179,019 (“‘019 Patent”)
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`Ex. 1002: Declaration of Anthony J. Senn
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`Ex. 1003: Curriculum vitae of Anthony J. Senn
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`Ex. 1004: U.S. Publication No. 2004/0012827 (“Fujinawa”)
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`Ex. 1005: U.S. Patent No. 5,585,937 (“Kokubo”)
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`Ex. 1006: U.S. Patent No. 5,061,955 (“Watanabe”)
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`Ex. 1007: 5100 FICHE SCANSTATION, Field Service Manual
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`Ex. 1008: Minolta UC-1 Universal Film Carrier (“Minolta”)
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`Ex. 1009: Parts Manual for UC-6E, EC, ECM Motorized Combo Squared Corner
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`Parts Numbers 210000-01,02,03 (“Minolta”)
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`Ex. 1010: Declaration of Philip G. Barboni
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`Ex. 1011: Excerpt of Fundamentals of Machine Design textbook
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`Ex. 1012: Deposition Transcript of Jonathan Ellis
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`Ex. 1013: Excerpt of Illustrated Sourcebook of Mechanical Components textbook
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`ii
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`Case No. IPR2017-00178
`Patent No. 9,179,019
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`I.
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`INTRODUCTION
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`Patent Owner’s (“PO”) Response fails to rebut the basic premise that a
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`substitution of one known drive mechanism for another yields a predictable
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`result—translation of motion. (Petition at 8-9, 22-24; see also, Decision at 14-16).
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`As the Board’s preliminary decision acknowledged, “if a person of ordinary skill
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`can implement a predictable variation (such as a simple substitution of one known
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`element for another), it is likely to be obvious under § 103.” (Decision at 15)
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`(citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-418 (2007)). PO’s
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`Response seeks to add complexity to what is a straight forward application of KSR
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`by misconstruing the prior art, the knowledge of one of skill in the art, and the
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`claim limitations. PO argues that “at the time of the invention smooth belts and
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`pulleys were known to slip, which if substituted into the ’019 Patent, would not
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`allow the device to function for its intended purpose of precision focusing.”
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`(Response at 12). But PO’s Response suffers from one fatal flaw—the prior art
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`teaches toothed belts which PO’s expert concedes provide the required precision.
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`Indeed, PO’s Response was systematically dismantled by its expert who was
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`forced to admit that the (1) prior art of record discloses a “toothed belt” and (2)
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`toothed belts are capable of precision movement. Moreover, PO’s Response fails
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`to address the plain teachings of the combination of the prior art references. In the
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`1
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`Case No. IPR2017-00178
`Patent No. 9,179,019
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`end, PO’s Response does not undercut the Petition’s reasoning with respect to
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`Claims 1-3, 5-7, 20-28, 31, 41, 43, 44, 53, and 63.
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`II.
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`PERSON OF ORDINARY SKILL IN THE ART
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`Petitioner submits that a person of ordinary skill in the art (“POSA”) of the
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`‘019 Patent would have had at least a bachelor’s of science degree in either
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`electrical engineering or mechanical engineering with at least 3 years’ experience
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`designing electro-mechanical products including experience designing imaging
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`equipment such as copiers, scanners, and/or microform scanners and readers.
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`(Petition at 16). The Board did not disagree with the definition of a POSA
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`proposed by Petitioner. (See generally, Decision). PO provided a separate
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`definition of a POSA: a degree in mechanical or optical engineering and 3 years of
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`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
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`the prior art. (PO Response at 4). However, PO did not argue how its proposal
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`would change the analysis, if at all. Under either definition of POSA, Petitioner’s
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`analysis remains the same.
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`III. CLAIM CONSTRUCTION
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`Petitioner agrees with the Board’s conclusion that the claim terms should be
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`given their ordinary and customary meaning in this proceeding. (Decision at 8).
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`PO’s Response suggests that the broadest reasonable interpretation of the preamble
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`2
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`Patent No. 9,179,019
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`phrase “digital microform imaging apparatus” limits the claims. (Response at 4).
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`However, PO has not articulated how this would impact its analysis. Petitioner
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`disagrees that this is the broadest reasonable interpretation. However, consistent
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`with the Petition, Petitioner maintains this is not germane to the proceeding
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`because each of the prior art references discloses the preamble limitation.
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`IV. CLAIMS 1-3, 5-7, 20-28, 31, 41, 43, 44, 53, AND 63 ARE OBVIOUS IN
`OVER FUJINAWA IN VIEW OF KOKUBO
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`Faced with prior art that reads squarely on the claims, PO seeks to add a
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`“precision” limitation not found in the claims and then argues this “precise
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`movement” was not disclosed by the prior art because the prior art only discloses a
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`smooth belt. Both arguments fail.
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`A. The Claims Do Not Require Precision Focusing
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`PO concedes the use of belt and pulley systems to move components was
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`known in the art. (Response at 15). Nonetheless, PO argues the proposed
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`substitution of the smooth belt and pulley drive system would not perform the
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`same function of “precision focusing.”1 (Response at 12-14, 21). Independent
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`Claim 1 requires the drive mechanism to cause the carriage “to move along the
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`1 It is worth noting, PO’s expert acknowledged a toothed belt, as opposed to a
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`smooth belt, is capable of providing the precise movement it alleges is required
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`by the claims. (Ex. 1012 at 20:2-17).
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`3
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`Case No. IPR2017-00178
`Patent No. 9,179,019
`first lead member.” (Ex. 1001 at claim 1)2. Independent claims 41 and 63 require
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`the first drive mechanism to “move the first carriage along the first lead member
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`through a first range of motion” and the second drive mechanism to move the
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`second carriage “along the trajectory substantially parallel to the first lead member
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`through a second range of motion.” (Ex. 1001 at Claim 41 and 63). The
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`“function” of the drive mechanism is to move the carriage, not provide “precision
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`focusing.” Indeed, the words “precision” and “precise” do not appear anywhere in
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`the claims or specification of the ‘019 Patent. Corning v. Fast Felt Corp., 873
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`F.3d 896, 901 (Fed. Cir. 2017) (even if “it is true that the preferred embodiments in
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`the [] patent focus on roofing materials that are or will be coated or saturated with
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`asphalt or asphalt mix…that is not enough to narrow the claim scope in the IPR.”);
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`see also, Belden Inc. v. Berk-Tek LLC, 610 Fed. Appx. 997 (2015) (affirming the
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`PTAB’s finding of invalidity based on its refusal to construe terms narrowly).
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`B.
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`Kokubo Discloses the Drive Mechanism of Claims 1-3, 5-7, 20-28,
`31, 41, 43, 44, 53, and 63
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`Even assuming PO is correct in arguing that the claims require a level of
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`precise movement and that this is only achieved using a toothed belt—Kokubo
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`teaches a toothed belt and guide rail. PO’s entire Response is premised on the
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`misconception that the belt described in Kokubo is a “smooth” belt that is “prone to
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`2 All emphasis herein added unless otherwise indicated.
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`4
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`Patent No. 9,179,019
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`slipping” and “unsuitable for its intended purpose.” (Response 21-22). Thus,
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`Kokubo’s teaching of a timing belt, which those of skill in the art, including PO’s
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`expert, understand is a toothed belt capable of precise movement, renders this
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`entire argument obsolete. Moreover, the slipping described in Kokubo, is in
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`reference to a prior art device that Kokubo improved over by using a guide rail and
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`a timing belt. Finally, teaching away requires that a reference teaches away from
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`all embodiments and the ‘019 Patent describes an embodiment just like the one
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`disclosed in Kokubo. Corning, 873 F.3d at 900-901.
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`1.
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`Kokubo Discloses a Toothed Belt
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`As presented in the Petition, Kokubo discloses the use of a timing belt to
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`move a carriage. Specifically, Kokubo discloses a “drive gear 7a, a driven pulley
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`9, and a timing belt 10” which work with the motor 7 to move the carriage. (Ex.
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`1005 at 9:11-17; Ex. 1002 at ¶ 60, see also Petition at 7-8, 30). A timing belt is
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`commonly understood by those in the art to be a toothed belt. (Ex. 2007 at 18:24-
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`19:4). Indeed, PO’s expert was forced to acknowledge that a timing belt is a
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`toothed belt. (Ex. 1012 at 9:25-10:2) (Q: And when you think of a timing belt, do
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`you think of a tooth belt? A: Yes.). This is also confirmed by contemporaneous
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`textbooks which depict timing belts with teeth as shown in the below figure from
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`the 2006 text book, Machine Component Design (Ex. 1011).
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`Patent No. 9,179,019
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`(Ex. 1011 at 755). Machine Component Design states that “Figure 19.5 illustrates
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`toothed belts, also known as timing belts.” (Ex. 1011 at 755). PO’s expert
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`reviewed Exhibit 1011 during his deposition and opined that the book’s
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`illustrations and passages describing timing belts as toothed belts were accurate.
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`(Ex. 1012 at 32:3-33:9).
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`The only “support” proffered by PO to argue one of ordinary skill in the art
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`would have understood that Kokubo is using a smooth belt is the figures of
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`Kokubo. (See generally, PO Response; Ex. 2005 at ¶30). PO’s expert (Dr. Ellis)
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`relied heavily on the fact that the belt 10 illustrated in Figs. 1 and 4 of Kokubo does
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`not depict teeth. Notably, Figs. 1 and 4 also do not depict teeth for drive gear 7a
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`and drive pulley 8, despite the fact that Dr. Ellis agrees that both would have teeth.
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`(Ex. 1012 at 21:13-18) (Q: So in Figure 1, 7-A is not shown. At least I can’t see
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`that there are teeth on that drive gear. A: I would agree with that. Q: But because
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`it's called a drive gear, you would understand there are teeth on that gear, right? A:
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`Yes.). The flaw in Dr. Ellis’ reasoning is further illustrated by his own admission
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`that in his “experience of drawing [ ] patent figures that sometimes things are left
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`out explicitly of the figures.” (Ex. 1012 at 14:16-15:1).
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`2.
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`Kokubo’s Belt is Capable of Precision Focusing
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`PO’s expert confirmed the toothed belt in Kokubo is capable of the precise
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`movement PO alleges is required by the claims: “Q: But would you understand,
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`because it’s an imaging apparatus, that you would have to use a tooth belt to drive
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`these components to get that precision? A: Yes. That’s correct.” (Ex. 1012 at 20:2-
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`5). He further confirmed the prior art uses “geared systems or toothed belt-type
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`[drive mechanisms] or lead screws” to affect changes in the focal path. (Ex. 1012
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`at 20:2-23).
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`Contemporaneous text books also confirm that toothed belt drive systems
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`provide precision. For example, the 2006 text book, Machine Component Design
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`(Ex. 1011) states that “[s]ince the drive is by means of teeth rather than friction,
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`there is no slippage and the driving and driven shafts remain synchronized.” (Ex.
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`1011 at 755). Furthermore, the 2000 textbook, Illustrated Sourcebook of
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`Mechanical Components (Ex. 1013), which illustrates a synchronous belt as a
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`toothed belt, states that “[s]ynchronous long length belting offers high positioning
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`Patent No. 9,179,019
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`accuracy” and that “[s]ynchronous belts are often used where precise positioning
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`of components is required.” (Ex. 1013 at 3-5, 3-7). PO’s expert not surprisingly
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`confirmed that synchronous belts are toothed belts and are used for timing
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`purposes. (Ex. 1012 at 8:8-9:10).
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`Indeed, even assuming Kokubo’s belt is smooth, PO has likewise failed to
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`prove it would not provide precise movement. Petitioner’s expert, Tony Senn,
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`testified that a belt and pulley system is advantageous over gears because of its low
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`or nonexistent backlash. (Ex. 2007 at 19:14-17). Mr. Senn further testified that a
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`control system “could capture any error that might arise from the smooth belts” if
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`designed to do so. (Ex. 2007 at 20:8-12). This is consistent with the ‘019 Patent
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`specification which discusses “algorithms for moving the lens and sensor to
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`appropriate respective locations to achieve proper magnification and focus of the
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`image.” (Ex. 1001 at 5:63-6:3). In contrast, Petitioner’s only support for its
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`proposition that a smooth belt and pulley is not precise is the testimony of its
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`expert, who by his own admission, has “not used any sort of belt system since
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`undergraduate engineering.” (Ex. 1012 at 27:7-10). Nothing in the claims or
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`specification of the ‘019 Patent, nor the understanding of those of skill in the art at
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`the time of filing, contends that the prior art belt and pulleys, whether smooth or
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`toothed, would not provide precision focusing.
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`8
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`Case No. IPR2017-00178
`Patent No. 9,179,019
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`3.
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`Kokubo Does Not Discourage the Use of a Belt and Pulley
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`Patent Owner improperly extrapolates Kokubo discouraging the use of an
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`un-guided wire rope system to reach the conclusion Kokubo “discourag[es] [the]
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`use of a belt system because belts and wires achieve the same functional result and
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`subject to the same deficiencies.” (Response at 26-27). The key difference,
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`however, between Kokubo’s invention and the prior art described in Fig. 49 of
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`Kokubo is that Kokubo uses a timing belt instead of a wire rope to help eliminate
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`slippage. (Ex. 1005 at 2:48-56, 9:10-20; see also Ex. 2007 at 35:16-19 (“I just
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`want to make it clear though that Figure 49 is a very different belt and 18 pulley
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`mechanism than the item shown in Figure 1 which is 19 Belt 10, Pulley 8 and
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`Pulley 9.”)). Additionally, and very germane to the discussion here, Kokubo’s
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`invention uses a guide rail 5 to further improve accuracy. (Ex. 1005 at 8:55-60).
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`In other words, PO improperly confuses Kokubo’s description of inferior prior art
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`devices with what Kokubo actually teaches (e.g., a timing belt and guide rail). It is
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`not surprising that PO misunderstands the teaching of Kokubo as its own expert
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`admitted he had “not analyzed the Kokubo reference in context of its own prior art
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`references.” (Ex. 1012 at 24:9-13).
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`4.
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`To “Teach Away” Requires that a Reference Teaches Away
`From All Embodiments
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`PO also alleges Kokubo teaches away from the use of a wire rope or smooth
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`belt and pulley system to position a lens within the optical path. (Response at 22-
`9
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`27). Kokubo, as previously discussed, discloses a toothed timing belt, not a smooth
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`belt as alleged by PO. More importantly, Federal Circuit law dictates that to teach
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`away, a reference must teach away from all embodiments. Corning, 873 F.3d at
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`900-901. The ‘019 Patent expressly teaches that the present invention can include
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`alternate designs which can separate the lead screw’s dual function of guiding and
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`driving by using, for example, “rails or unthreaded rods or a combination thereof
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`for guiding, and a belt or rack and pinion arrangement or a combination thereof for
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`driving.” (Ex. 1001 at 6:27-32). Thus, the ‘019 Patent proposes a configuration of
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`a rail and a belt drive system, which is exactly what is disclosed in Kokubo.
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`Notably, the ‘019 Patent offers no explanation as to how this alternate rail and a
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`belt drive system operates, leaving that implementation to those of skill in the art.
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`As discussed in the Petition and above, Kokubo discloses a configuration using
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`timing belt 10 and a guide rail 5. For example, Kokubo discloses a “drive gear 7a,
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`a driven pulley 9, and a timing belt 10” which work with the motor 7 to move the
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`carriage along guide rail 5. (Ex. 1005 at 8:52-59, 9:11-17; Ex. 1002 at ¶¶ 27, 77-
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`79, see also Petition at 3-24). Accordingly, Kokubo does not teach away from
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`Petitioner’s proposed combination as it discloses an embodiment contemplated and
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`indeed claimed by at least Claim 5 of the ‘019 Patent.
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`10
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`Case No. IPR2017-00178
`Patent No. 9,179,019
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`C.
`
`Petitioner Established Kokubo Discloses the Toothed Belt of
`Claims 5 and 6
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`PO’s Response with regard to claims 5 and 6 fails to credit Mr. Senn’s
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`testimony which unequivocally states that timing belts are generally toothed and
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`that is “the accepted terminology.” (Ex. 2007 at 19:18-23; Ex. 1002 at ¶52). PO
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`further fails to credit the Petition’s well reasoned explanation of why Kokubo
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`discloses the toothed belt and toothed pulley of claims 5 and 6. (Petition at 32).
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`Far from not providing an explanation, as PO contends, the disclosure of Kokubo
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`and the understanding of those of skill in the art confirm the timing belt of Kokubo
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`would have been understood to be toothed. See also, Section IV.B.1.
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`D. One of Skill in the Art Would Know to Orient the Motor Shaft
`Substantially Parallel to the First Lead Member
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`One of skill in the art would know to orient the first motor shaft substantially
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`parallel to the first lead member as this is nothing more than a simple
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`rearrangement of parts. (See Ex. 1002 at ¶78). A person of ordinary skill is “not
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`an automaton” limited to physically combining references. University of
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`Maryland, 2017 WL 5041459, at *3 (quoting KSR, 550 U.S. at 421). Here,
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`Fujinawa discloses that the first motor shaft is parallel to the first lead member.
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`(Ex. 1004 at Fig. 4). One of skill in the art would have understood how to design
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`the apparatus of Fujinawa with the drive mechanism of Kokubo such that the
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`motor shaft was parallel to the first lead member. (Ex. 1002 at ¶¶54, 78). Indeed,
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`this is nothing more than a simple design choice that does not impact the function
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`of the motor or drive mechanism. See Ex Parte Giridhari L. Argawal and Charles
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`W. Buckley, 2017 WL 3034931, *3, Patent Tr. & App. Bd., (No. 2016-008288)
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`(July 13, 2017) (finding the claims obvious over the prior art because the location
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`of the bearing “would not appear to change the function of the thrust bearing for
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`fixing the axial position of a shaft,” and “any difference between the location of
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`[the prior art] thrust bearing and the thrust bearing of [the patent at issue] would
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`have been an obvious rearrangement of parts.”).
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`V. THE COMBINATION OF FUJINAWA AND KOKUBO DISCLOSE
`EVERY ELEMENT OF THE CLAIMS
`A.
`
`It Would be Obvious to a POSA to Combine the Teachings of
`Digital Microform Readers
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`PO makes the unsupported statement that Petitioner has failed to carry its
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`burden to prove it would have been obvious to combine the teachings of Fujinawa
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`and Kokubo. The motivation is simple—the references teach digital microform
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`readers and methods of translating motion. As presented in the petition, and
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`confirmed by those of skill in the art, there exists a finite number of ways to
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`translate motion and the replacement of one known drive mechanism for another is
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`nothing more than a simple substitution that yields predicable results. (Ex. 2007 at
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`56:15-18) (“There are a finite quite short list, means of converting rotary motion to
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`linear motion.”).
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`Case No. IPR2017-00178
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`One of skill in the art would be motivated to make the replacement for any
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`number of reasons. For example, replacing the worm gear of Fujinawa with the
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`guide rail and belt and pulley of Kokubo could be advantageous in eliminating
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`backlash. (See Ex. 2007 at 18:24-19:4). Indeed, PO’s expert admitted his
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`experience working with non-microform scanners informed his understanding of
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`how they work. (Ex. 1012 at 7:18-25). Specifically, Dr. Ellis testified that the
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`“underlying principles are the same, so whether it’s scanning microfilm or in some
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`of the work that we do trying to scan a piece of tissue and take images of it, it’s --
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`the principles are the same, it just depends on what the actual objects are in -- of
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`interest.” (Ex. 1012 at 7:18-8:1).
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`B.
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`The Combination of Fujinawa and Kokubo Discloses Moving
`Elements Critical to Focusing
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`PO further confuses Petitioner’s arguments and the Board’s preliminary
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`reliance on the combination of Kokubo’s drive mechanism and the teachings in
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`Fujinawa to argue that Kokubo does not disclose moving elements critical to
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`focusing; i.e., moving the lens and sensor along an optical path. This exact
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`scenario was recently addressed by the Federal Circuit in University of Maryland,
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`in which the PO sought to avoid the prior art by arguing the prior art references
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`taught two separate configurations and the combination would “completely
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`chang[e] the fundamental principle of operation of [the second reference].”
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`13
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`Case No. IPR2017-00178
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`University of Maryland, 2017 WL 5041459, at *3. The Federal Circuit found that
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`the “basic principle” of the second reference was “independent of [its] pertinence
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`to the Board’s obviousness determination” because it was only being used to teach
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`the use of different sensors. Id. at *3. Here, likewise, Kokubo is being used to
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`disclose a type of drive mechanism. (Petition at 23-24). Specifically, Kokubo
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`discloses that “optical parts for reading a text image such as mirrors and a lens tube
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`[ ] and a line sensor [ ] are mounted on the reading unit 6” and that “[t]he reading
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`unit 6 is therefore moved in the direction A or B by the timing belt 10 which
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`moves due to the rotation of the motor 7.” (Ex. 1005 at 8:61-64 and 9:15-16; see
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`also Petition at 29). Fujinawa discloses positioning the lens and sensor along the
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`optical path, and Kokubo discloses positioning components such as a lens tube
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`(e.g., lens) and line sensor (e.g., image sensor) with a belt and pulley system. So
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`the combination of Fujinawa and Kokubo discloses the use of a belt and pulley to
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`move a lens and sensor along an optical path. PO’s final efforts to avoid the
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`undisputable teachings of the prior art are unconvincing.
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`VI. CONCLUSION
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`Since the PO Response does nothing to undermine the Petition (or the
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`Board’s institution), the Board should cancel claims 1-3, 5-7, 20-28, 31, 41, 43, 44,
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`53, and 63 of the ‘019 Patent.
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`Case No. IPR2017-00178
`Patent No. 9,179,019
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`Respectfully submitted,
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`By:
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`/Jason A. Engel/
`Jason A. Engel
`Reg. No. 51,654
`Counsel for Petitioner
`Dated: November 8, 2017
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 8, 2017, a true and correct copy of the
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`foregoing was caused to be served electronically on the following counsel of
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`record for Patent Owner at the following email addresses:
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`Joel Austin
`joel.austin@quarles.com
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`Michael Piery
`michael.piery@quarles.com
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`Johanna Wilbert
`johanna.wilbert@quarles.com
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`/Jason A. Engel/
`Jason A. Engel
`Reg. No. 51,654
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`CERTIFICATION OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned hereby certifies that the
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`foregoing paper contains 3,330 words according to the word count of the word-
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`processing software used to prepare the paper.
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`/Jason A. Engel/
`Jason A. Engel
`Reg. No. 51,654
`Customer No. 24573
`Date: November 8, 2017
`K&L GATES LLP
`Jason.Engel.PTAB@klgates.com
`T: (312) 807-4236
`F: (312) 827-8145
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`By:
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