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 IPR2017-00346
`Patent 9,197,766 B2
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`
`B.
`
`C.
`
`B.
`
`THE BOARD SHOULD NOT INSTITUTE AN INTER PARTES
`REVIEW ......................................................................................................... 1
`SUMMARY OF THE TECHNOLOGY AND CITED ART ......................... 2
`II.
`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PETITION IS PROCEDURALLY DEFECTIVE .......................................... 3
`A.
`The Board Should Decline To Consider Grounds 1 And 2
`Because They Are Cumulative Of Prior Office Proceedings .............. 3
`The Board Should Deny Institution Of Grounds 1 And 2
`Because Minolta Is Not A Printed Publication .................................... 8
`The Proposed Grounds of Rejection Are Horizontally
`Redundant ........................................................................................... 12
`IV. ST IMAGING HAS FAILED TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE CLAIM IS
`UNPATENTABLE ....................................................................................... 13
`A.
`The Standard For Instituting An Inter Partes Review Gives
`ST Imaging The Burden Of Proving A Reasonable Likelihood
`That The Claims Would Have Been Obvious .................................... 13
`ST Imaging Is Not Reasonably Likely To Prevail On Ground 1 ....... 15
`1.
`Fujinawa and Minolta fail to disclose numerous claim
`limitations of independent claims 41 and 49 ........................... 17
`a.
`Fujinawa does not disclose “a support structure
`that forms first and second cavities.” ............................ 17
`Fujinawa does not disclose “the first and second
`cavities spaced apart to form a substantially
`horizontal gap there between.” ...................................... 18
`Fujinawa does not disclose “an illumination source
`mounted . . . to direct light . . . into a front portion
`of the second cavity.” .................................................... 18
`Fujinawa does not disclose “the second range
`overlapping the first range.” .......................................... 19
`Claims 41 and 49 would not have been obvious ..................... 21
`
`b.
`
`c.
`
`d.
`
`2.
`
`
`
`
`
`-i-
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`

`

`TABLE OF CONTENTS
`(continued)
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`Page
`
`
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`-ii-
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`
`
`C.
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`
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`V.
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`
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`
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`
`
`ST Imaging Is Not Reasonably Likely To Prevail On Ground 2. ...... 24
`1. Wally does not remedy Fujinawa’s failure to disclose
`overlapping ranges of movement as claimed in claims 41
`and 49 ....................................................................................... 26
`Claims 41 and 49 would not have been obvious over
`Fujinawa, Minolta, and Wally ................................................. 28
`a.
`ST Imaging’s rationale for combining Fujinawa
`with Wally is insufficient and based on
`impermissible hindsight ................................................. 28
`One of skill in the art would have been
`discouraged from modifying Fujinawa in the
`manner proposed by ST Imaging .................................. 31
`Claims 42, 43, 46, 53, and 54 would not have been
`obvious ..................................................................................... 32
`CONCLUSION ............................................................................................. 32
`
`2.
`
`3.
`
`b.
`
`

`

`LIST OF EXHIBITS
`
`
`
`Number
`
`Brief Description
`
`2001
`
`2002
`
`“Got Film? ST200X” Brochure
`
`8/15/2013 Information Disclosure Statement submitted
`
`by applicant, Application Serial No. 13/968,080
`
`10/8/2014 List of References cited by applicant and
`
`2003
`
`considered by examiner, Application Serial No.
`
`13/968,080
`
`2004
`
`2/26/2015 Notice of Allowance and Fee(s) Due,
`
`Application Serial No. 13/968,080
`
`11/4/2016 Claim Construction Order, Dkt. No. 38,
`
`2005
`
`e-ImageData Corp. v. Digital Check Corp., Civil
`
`Action No. 16-cv-576, E. D. Wis.
`
`
`
`
`
`-iii-
`
`
`
`

`

`
`
`I.
`
`THE BOARD SHOULD NOT INSTITUTE AN INTER PARTES
`REVIEW.
`The Board should deny ST Imaging’s Petition for inter partes review of U.S.
`
`Patent No. 9,197,766 for both procedural and substantive defects.
`
`
`
`First, procedural defects warrant denial of institution. The Office has
`
`already found that the ’766 Patent is patentable over the same or substantially the
`
`same references that ST Imaging relies upon in the Petition. Additionally, for both
`
`Grounds 1 and 2, ST Imaging relies on a reference that is not a printed publication.
`
`
`
`Second, the Board should deny institution because ST Imaging’s Petition
`
`does not “demonstrate that it is more likely than not that any one of the claims
`
`challenged in the petition is unpatentable.” See 37 C.F.R. § 42.208(c).
`
`ST Imaging improperly used the ’766 Patent as a roadmap for putting together the
`
`various elements of the claimed invention. ST Imaging demonstrates its
`
`impermissible hindsight reconstruction by failing to adequately articulate a reason
`
`why one of skill in the art would have made the proposed modifications.
`
`Additionally, the teachings of the prior art references do not render the claims
`
`obvious. The cited prior art does not disclose numerous claim limitations and
`
`ST Imaging has failed to show that the proposed combinations would have been
`
`obvious.
`
`For at least the foregoing reasons, ST Imaging’s Petition should be denied in
`
`its entirety.
`
`
`
`1
`
`

`

`
`
`II.
`
`SUMMARY OF THE TECHNOLOGY AND CITED ART.
`Throughout the Petition, ST Imaging oversimplifies the technology and
`
`mixes two different types of microfilm technology. Microform readers and
`
`microform scanners operate differently. Microform readers are specific devices
`
`that allow users to (1) load a physical microform onto a carrier; (2) move the
`
`microform through an optical path; (3) locate a specific document image of the
`
`microform by observing the document images on a viewing screen concurrently as
`
`the carrier is moved; and (4) read the specific document image without having to
`
`scan the document first. In contrast, microform scanners rapidly move a
`
`microform relative to an image capture device to capture the entire image. The
`
`scanner then outputs the entire image to a computer or stores the image on a hard
`
`disk. The scanner does not allow a user to observe a specific portion of the image
`
`while it is being scanned. Because of the differences between readers and
`
`scanners, components appropriate for a reader are often times not suitable for
`
`scanners and vice versa.
`
`The ’766 Patent describes a microform reader that can also function as a
`
`microform scanner. (Ex. 1001 at 3:26–27.) The imaging device described and
`
`claimed in the ’766 Patent allows a user to view a specific image of the microform
`
`on a viewing screen concurrently, without having to scan the document first. (Ex.
`
`1001 at 1:36–39.) The imaging device also allows a user to scan a microform for
`
`
`
`2
`
`

`

`
`
`storage and later viewing. (Ex. 1001 at 4:52–59.) The microform imaging
`
`apparatus of the ’766 Patent is designed to read or scan many different microforms
`
`including microfilm, microfiche, aperture cards, jackets, 16 mm or 35 mm film,
`
`roll film, cartridge film, and micro opaques. (Ex. 1001 at 7:53–64.)
`
`The microform imaging apparatus described and claimed in the ’766 Patent
`
`offers many advantages over the prior art microform imaging devices. The novel
`
`optical layout of the microform imaging apparatus, including the fold mirror and
`
`separately adjustable area sensor and lens, allows for a compact and versatile
`
`digital microform imaging apparatus, which can easily adapt to a broad range of
`
`reduction ratios and media types while providing good resolution of the images
`
`and ease of use. (Ex. 1001 at 2:59–62.)
`
`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PETITION IS PROCEDURALLY DEFECTIVE.
`A. The Board Should Decline To Consider Grounds 1 And 2 Because
`They Are Cumulative Of Prior Office Proceedings.
`The Board should exercise its discretion not to institute an inter partes
`
`review because the references cited in the Petition are the same or substantially the
`
`same references considered by the Examiner during prosecution of the ’766 Patent.
`
`Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a); 37
`
`C.F.R. § 42.108. The Board may decline to institute an inter partes review when
`
`“the same or substantially the same prior art or arguments previously were
`
`
`
`3
`
`

`

`
`
`presented to the Office.” 35 U.S.C. § 325(d). When an Examiner has already
`
`considered the prior art at issue, it is not an efficient use of the Board’s or parties’
`
`resources to adjudicate a dispute on an already-considered issue. Nu Mark LLC v.
`
`Fontem Holdings 1, B.V., No. IPR2016-01309, Paper No. 11 at 12–13 (P.T.A.B.
`
`Dec. 15, 2016). This is true even where the Examiner did not specifically address
`
`a prior art reference in an Office Action. See id.
`
`
`
`For example, in Nu Mark, the Board denied institution of the inter partes
`
`review because the Examiner considered substantially similar prior art during
`
`prosecution. Id. The petitioner in Nu Mark asserted a ground of unpatentability
`
`based on the combination of Brooks and Whittemore. Id. at 6. During
`
`prosecution, an information disclosure statement identified Whittemore and a
`
`reference “largely identical” to Brooks. Id. at 6–7. The Examiner indicated that
`
`the references were considered by appending the following to the bottom of the
`
`information disclosure statement: “ALL REFERENCES CONSIDERED EXCEPT
`
`WHERE LINED THROUGH. /D.W.M./.” Id. at 7. The Examiner allowed the
`
`claims at issue and indicated that the prior art did not teach all of the limitations of
`
`the claims. Id. at 7–8. Although the Examiner did not mention the reference
`
`largely identical to Brooks in an Office Action, the Board nevertheless found that
`
`the Examiner considered the references. Id. at 11–12. The Board denied
`
`institution because, by relying on previously considered prior art, the petitioner
`
`
`
`4
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`

`

`
`
`was “asking the Board, essentially, to second-guess the Office’s previous decision
`
`on substantially the same issues.” Id. at 12–13.
`
`As Nu Mark demonstrates, the Office need not have considered a specific
`
`reference for that reference to be cumulative of prior Office proceedings. The
`
`relevant inquiry is whether the Office previously considered the substance of the
`
`disclosures relied upon. Nu Mark, IPR2016-01309, Paper No. 11 at 9. If the
`
`substance of the disclosures relied upon in the petition was previously presented to
`
`and previously considered by the Office, that reference is cumulative under 35
`
`U.S.C. § 325(d) even if that reference had not been previously considered. Id.
`
`Here, the Board should not institute Ground 1 because the Examiner
`
`considered Fujinawa and a reference substantially the same as Minolta. The
`
`Examiner considered both Fujinawa (Ex. 1004) and a brochure titled “Got Film?
`
`ST200X” (Ex. 2001) during prosecution and found that the claims of the ’766
`
`Patent were patentable over the references. The applicant submitted an
`
`information disclosure statement that listed Fujinawa and the ST200X brochure.
`
`(Ex. 2002 at 3–4.) The Examiner indicated that the references were considered by
`
`appending the following to the top of the information disclosure statement: “ALL
`
`REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. /K.D./.”
`
`(Ex. 2003; see also MPEP § 609.04(a) (An Examiner’s initials on an IDS form
`
`“provide[ ] . . . a clear record in the application to indicate which documents have
`
`
`
`5
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`

`

`
`
`been considered by the examiner in the application.”).) On the same day, the
`
`Examiner issued a notice of allowance. (Ex. 2004 at 7.)
`
`The substance of the disclosures of the ST200X brochure is substantially
`
`similar to the disclosures of Minolta (Ex. 1009). Minolta describes a universal
`
`microfilm carrier designed to work with reader-printers from various companies.
`
`(Ex. 1009; Petition at 6). The ST200X device depicted in the brochure is an Elmo
`
`projector that uses the Minolta carrier. (Ex. 2001 at 1.) As the figures below
`
`demonstrate, the ST200X brochure depicts the Minolta microfilm carrier of Exhibit
`
`1009 used with ST Imaging’s ST200X reader-printer. (Ex. 2001 at 2.)
`
`
`
`
`
`Minolta Carrier (Ex. 1009 at 4 (cropped).)
`
`6
`
`

`

`
`
`
`ST200X with Minolta Carrier (Ex. 2001 at 2 (cropped).)
`
`Because the Examiner considered both Fujinawa and a reference
`
`substantially similar to Minolta before allowing the claims of the ’766 Patent,
`
`ST Imaging’s Ground 1 is cumulative of prior Office proceedings and should not
`
`be instituted. As in Nu Mark, the Board should deny institution of Ground 1 and
`
`not second-guess the Office’s previous decision on the same issue.
`
`
`
`The Board should also deny institution of Ground 2 as cumulative of prior
`
`Office proceedings. In Ground 2, ST Imaging again relies on Fujinawa and
`
`Minolta. (Petition at 52.) ST Imaging additionally relies on Wally (Ex. 1011).
`
`(Id.) ST Imaging introduces Wally “solely for the purpose to illustrate a larger
`
`range of overlapping between the area sensor and lens.” (Petition at 53.)
`
`ST Imaging, however, also relies on Fujinawa as allegedly disclosing the
`
`overlapping between the area sensor and lens. (Petition at 29–31.) ST Imaging is
`
`accordingly relying on Fujinawa and Wally for substantially the same disclosures.
`
`
`
`7
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`

`

`
`
`Because Wally adds nothing to what has already been presented to the Office, the
`
`Board should also deny institution of Ground 2.
`
`B.
`
`The Board Should Deny Institution Of Grounds 1 And 2 Because
`Minolta Is Not A Printed Publication.
`The Board should not institute Grounds 1 and 2 because ST Imaging has
`
`failed to show that Minolta (Ex. 1009) is a printed publication. A petitioner can
`
`only challenge the patentability of claims “on the basis of prior art consisting of
`
`patents or printed publications.” 35 U.S.C. § 311(b). The Petitioner bears the
`
`burden of showing that the alleged prior art references underlying its challenges
`
`are patents or printed publications. Seabery N. Am., Inc. v. Lincoln Global, Inc.,
`
`No. IPR2016-00749, Paper 13 at 9 (P.T.A.B. Sept. 21, 2016). The Board declines
`
`to institute trials when a petitioner does not meet its burden in establishing that a
`
`reference is a printed publication. See, e.g., id.; Samsung Elecs. v. Rembrandt
`
`Wireless Techs., No. IPR2014-00514, Paper 18 at 9–10 (P.T.A.B. Sept. 9, 2014).
`
`
`
`Public accessibility is the key question in determining whether a reference is
`
`a printed publication. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). A
`
`reference is publicly accessible if it was “disseminated or otherwise made available
`
`to the extent that persons interested and ordinarily skilled in the subject matter or
`
`art exercising reasonable diligence, can locate it.” Id. (internal quotation omitted).
`
`Thus, “[a] party seeking to introduce a reference should produce sufficient proof of
`
`its dissemination or that it has otherwise been available and accessible to persons
`
`
`
`8
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`

`

`
`
`concerned with the art to which the document relates and thus most likely to avail
`
`themselves of its contents.” Xactware Sols., Inc. v. Eagle View Techs., Inc., No.
`
`IPR2016-00582, Paper 15 at 4–6 (P.T.A.B. Aug. 16, 2016) (internal quotation
`
`omitted).
`
`
`
`For example, in Koninklijke Philips N.V. v. Zoll Medical Corp., the Federal
`
`Circuit held that an FDA application was not a printed publication. 656 F. App’x
`
`504, 529–30 (Fed. Cir. 2016). The application was submitted to the FDA and not
`
`subject to confidentiality restrictions. Id. at 529. The accused infringer argued that
`
`the application was sufficiently accessible to the public interested in the art
`
`because a member of the public could have found out about the application,
`
`requested it from the FDA, and received a copy of the application. Id. The Federal
`
`Circuit disagreed, finding that the accused infringer’s argument relied on a
`
`considerable amount of conjecture not supported by the record. Id. The accused
`
`infringer additionally failed to carry its burden because it presented “no evidence
`
`of indexing or cataloguing, which, while not prerequisites, serve as hallmarks of
`
`public accessibility.” Id.
`
`
`
`9
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`

`

`
`
`
`
`Here, ST Imaging has not offered sufficient proof of the dissemination of
`
`Minolta.1 Minolta is a parts manual that contains a copyright date, but no evidence
`
`that it has ever been indexed or available in a commercial database. (Ex. 1009 at
`
`1.) The only evidence of public accessibility is a declaration from a former
`
`employee and consultant of the Petitioner. The declaration merely states that Ex.
`
`1009 “was published to ICT’s distributors for the UC-6 product, including Minolta
`
`and Canon” and “Ex. 1009 was not marked confidential.” (Ex. 1010 ¶ 6.) This
`
`declaration is insufficient to establish public accessibility.
`
`
`
`The declaration does not explain the scope of the distribution. ST Imaging
`
`identifies two distributors that received the document but offers no evidence as to
`
`the number of distributors in the distribution network, the territory covered by the
`
`two distributors, or the percentage of distributors who did not receive the
`
`document. (See Ex. 1010 ¶ 6.) There is no evidence that the interested public
`
`
`1 Because ST Imaging relies on the Minolta parts manual (Ex. 1009) “to support
`
`every assertion about Minolta in Proposed Grounds of Rejection Nos. 1 and 2”
`
`(Petition at 6), the public accessibility of the document titled “Minolta UC-1
`
`Universal Film Carrier” (Ex. 1008) is irrelevant to the determination of whether the
`
`Minolta Parts Manual (Ex. 1009) was publicly accessible.
`
`
`
`10
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`

`
`
`could access the document that was in the possession of only two of ICT’s
`
`distributors.
`
`
`
`The declaration further fails to state whether the document was available to
`
`the interested public. ICT’s distributors are not the interested public. Lister, 583
`
`F.3d at 1311 (the public to which a reference must have been accessible includes
`
`“persons interested and ordinarily skilled in the subject matter or art”). The lack of
`
`a confidentiality designation is not sufficient proof that the document was available
`
`to the public. See Koninklijke, 656 F. App’x at 529–30. The parts list could have
`
`merely been kept by the distributors and not offered or available to the interested
`
`public. There is no evidence that the interested public could have ascertained the
`
`existence of the document, located the document, and availed itself of the contents.
`
`
`
`When faced with a similar lack of evidence regarding public availability of a
`
`document, the Board held the document was not a printed publication. In
`
`Samsung, the Board held that a draft proposed IEEE standard was not a printed
`
`publication. IPR2014-00514, Paper 18 at 6–10. The Board found that the
`
`petitioner’s declaration was insufficient to establish that the draft standard was
`
`sufficiently accessible to the public interested in the art. Id. at 7. Although the
`
`declaration asserted that the draft standard was available to anyone who wanted to
`
`view it, the declaration failed to assert that this document was available to anyone
`
`who did not already know about the draft standard. Id. The draft standard was not
`
`
`
`11
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`

`

`
`
`advertised or otherwise announced to the public. Id. Only individuals who were
`
`part of the group working on the draft standard would have known to request a
`
`copy or be added to an e-mail list for access to the draft standard. Id.
`
`
`
`Here, as in Koninklijke and Samsung, ST Imaging has failed to submit
`
`sufficient evidence to prove that Minolta was publicly accessible. Accordingly,
`
`ST Imaging has failed to show that Minolta (Ex. 1009) is a printed publication, and
`
`the Board should not institute Grounds 1 and 2, which both rely on Minolta.
`
`C. The Proposed Grounds of Rejection Are Horizontally Redundant.
`The Board should deny institution of Ground 2 because it is redundant to
`
`Ground 1. ST Imaging’s Petition offers horizontally redundant grounds by
`
`proposing two grounds of obviousness rejections for each of the challenged claims.
`
`The Board has made clear “that multiple grounds, which are presented in a
`
`redundant manner by a petitioner who makes no meaningful distinction between
`
`them, are contrary to the regulatory and statutory mandates, and therefore are not
`
`all entitled to consideration.” Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
`
`No. CBM2012-00003, Paper No. 7 at 2 (P.T.A.B. Oct. 25, 2012) (expanded panel).
`
`A petitioner presents redundant grounds when it applies a plurality of prior art
`
`references as distinct and separate alternatives. Id. at 3. To avoid a determination
`
`that a requested ground is redundant, a petitioner must articulate a meaningful
`
`distinction of relative strengths and weaknesses of the prior art reference
`
`
`
`12
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`

`

`
`
`disclosures to one or more claim limitations. LG Elecs., Inc. v. ATI Techs. ULC,
`
`No. IPR2015-00330, Paper 17 at 4 (P.T.A.B. Sept. 2, 2015). But “[s]imply
`
`proposing different grounds of unpatentability directed to the same subset of
`
`claims does not distinguish meaningfully the applied prior art references.” Aker
`
`Biomarine AS v. Neptune Techs., No. IPR2014-00003, Paper 106 at 6 (P.T.A.B.
`
`July 9, 2015).
`
`Here, in Ground 1, ST Imaging asserts that claims 41–43, 46, 49, 53, and 54
`
`would have been obvious over Fujinawa in view of Minolta. In Ground 2,
`
`ST Imaging challenges claims 41–43, 46, 49, 53, and 54 as obvious over Fujinawa
`
`in view of Minolta and Wally. Despite asserting multiple grounds for these
`
`challenged claims, ST Imaging does not set forth any discussion of the grounds’
`
`relative strengths or the relative strengths of the rationales used in the two sets of
`
`obviousness challenges. Accordingly, the Board should not institute Ground 2 as
`
`redundant.
`
`IV. ST IMAGING HAS FAILED TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE CLAIM IS
`UNPATENTABLE.
`A. The Standard For Instituting An Inter Partes Review Gives
`ST Imaging The Burden Of Proving A Reasonable Likelihood
`That The Claims Would Have Been Obvious.
`The Board may institute an inter partes review of a granted patent only if
`
`“the information presented in the petition . . . and any [preliminary] response . . .
`
`
`
`13
`
`

`

`
`
`shows that there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`In an inter partes review, the petitioner bears the ultimate burden of proving
`
`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
`
`
`
`In the Petition, ST Imaging’s grounds of unpatentability all allege
`
`obviousness. A claim is not unpatentable for obviousness unless the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which the subject matter
`
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Rejections
`
`on obviousness grounds cannot be sustained by “mere conclusory statements.”
`
`KSR, 550 U.S. at 418; see also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
`
`1324, 1330 (Fed. Cir. 2009). The Federal Circuit recently explained that a
`
`conclusion of obviousness in an inter partes review must (1) “articulate a reason
`
`why a PHOSITA would combine the prior art references”; (2) have an adequate
`
`evidentiary basis for that finding; and (3) provide a “satisfactory explanation” for
`
`the motivation finding that includes an express and rational connection with the
`
`evidence presented. In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`
`The requirement of an articulated reasoned basis to explain the obviousness
`
`conclusion “remains the primary guarantor against a non-statutory hindsight
`
`
`
`14
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`

`

`
`
`analysis.” Ortho-McNeil, 520 F.3d at 1364–65. “[A] patent composed of several
`
`elements is not proved obvious merely by demonstrating that each of its elements
`
`was, independently, known in the prior art.” Id. at 418. “This is so because
`
`inventions in most, if not all, instances rely upon building blocks long since
`
`uncovered, and claimed discoveries almost of necessity will be combinations of
`
`what, in some sense, is already known.” Id. at 418–19. Accordingly, to show a
`
`reasonable likelihood of success on its obviousness grounds, ST Imaging must
`
`identify a reason that would have prompted one of skill in the art to combine the
`
`elements in the way the claimed invention does. KSR, 550 U.S. at 406.
`
`ST Imaging has failed to carry its burden.
`
`B.
`ST Imaging Is Not Reasonably Likely To Prevail On Ground 1.
`ST Imaging is not reasonably likely to prevail in showing that claims 41–43,
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`46, 49, 53, and 54 would have been obvious over Fujinawa in view of Minolta.
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`Fujinawa and Minolta fail to disclose or teach several claim limitations. Even if
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`the references disclosed the missing claim limitations, one of skill in the art would
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`not have found it obvious to combine the references to arrive at the claimed
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`invention.
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`For context, Fujinawa discloses a scanner for scanning 35 mm film and roll
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`film. (Ex. 1004 ¶¶ 0010, 0011.) Fujinawa’s scanner is designed specifically for 35
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`mm film and roll film, and cannot accommodate microfilm. (See Ex. 1004
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`¶ 0011.) Fujinawa does not allow a user to load a physical microform into a carrier
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`but rather accommodates only photographic film. Fujinawa does not allow users to
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`locate and read specific portions of a document concurrently without first scanning
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`the entire image. (See Ex. 1004 ¶ 0073, Fig. 8.) Instead, Fujinawa’s device
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`captures the image and outputs the image data to be stored in the memory of a host
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`computer. (Ex. 1004 ¶ 0067.)
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`Fujinawa’s scanner incorporates a compact design including two motors
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`with threaded worms extending from the motor shafts. (Ex. 1004 Fig. 4.)
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`Fujinawa discloses that a lens is coupled to one threaded worm and a line sensor is
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`coupled to the other threaded worm. (Ex. 1004 ¶ 0059.) Fujinawa’s scanner
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`senses whether 35mm film or roll film is used and modifies the resolution of the
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`optical system based on the film size by having the motors precisely and accurately
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`position the lens and line sensor through rotation of the worms. (Ex. 1004
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`¶¶ 0010–12, 0044–60.)
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`In contrast, Minolta discloses a film carrier for a microform reader. The
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`carrier includes an X-Y table to allow a user to locate and view specific portions of
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`the media by moving the table. (Ex. 1009 at 4.) To use Minolta’s support
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`structure, a user must first pull the lever forward so the top glass plate opens. (See
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`Ex. 1009 at 4; Ex. 1008 at 5.) The user then places the media on top of the bottom
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`glass plate and pushes the lever so the top glass plate closes on the media. (Id.)
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`The user can then move the X-Y table to locate the specific portion of the media to
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`view on the screen.
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`1.
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`Fujinawa and Minolta fail to disclose numerous claim
`limitations of independent claims 41 and 49.
`Fujinawa does not disclose “a support structure that
`forms first and second cavities.”
`The combination of Fujinawa and Minolta fails to disclose two cavities as
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`a.
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`claimed. Claims 41 and 49 each require “a support structure that forms first and
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`second cavities, the first and second cavities spaced apart to form a substantially
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`horizontal gap there between.” In contrast, Fujinawa discloses a housing that
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`forms only a single cavity. (Ex. 1004 Fig. 4.) ST Imaging’s arbitrary coloring of
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`two portions of Fujinawa’s single cavity does not show a disclosure of two
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`cavities. (See Petition at 21.) The two colored sections are both merely portions of
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`the same cavity created by Fujinawa’s housing. (Ex. 1004 Fig. 1, Fig. 4.)
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`Fujinawa does not disclose two distinct cavities and, accordingly, does not meet
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`the claim limitation requiring two cavities. See, e.g., In re Robertson, 169 F.3d
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`743, 745 (Fed. Cir. 1999) (reversing Board’s anticipation finding because prior art
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`reference that disclosed two fastening means could not meet claims that required
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`three fastening means); Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed.
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`Cir. 1994) (holding that a single conveyor did not meet claims requiring two
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`conveyors).
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`b.
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`Fujinawa does not disclose “the first and second
`cavities spaced apart to form a substantially
`horizontal gap there between.”
`The combination of Fujinawa and Minolta additionally fails to disclose a gap
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`between cavities. Claims 41 and 49 each recite “the first and second cavities
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`spaced apart to form a substantially horizontal gap there between.” As shown in
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`Fig. 1, Fujinawa’s housing forms a single, continuous cavity. (Ex. 1004 Fig. 1.)
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`ST Imaging identifies the region between the rollers as the gap. (Petition at 20.)
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`This region, however, is not a gap between the first and second cavities because it
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`is within the single cavity of Fujinawa. (Ex. 1004 Fig. 4.) It is irrelevant whether
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`the region between the rollers forms a horizontal gap; the gap must be between the
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`two cavities, as claimed.
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`c.
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`Fujinawa does not disclose “an illumination source
`mounted . . . to direct light . . . into a front portion of
`the second cavity.”
`Claims 41 and 49 each require “an illumination source mounted within the
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`first cavity to direct light along a first substantially vertical optical axis across the
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`gap and into a front portion of the second cavity.” Even if Fujinawa disclosed two
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`cavities (it does not), the illumination source does not direct light into a front
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`portion of the purported second cavity. As shown in ST Imaging’s annotated
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`figure, Fujinawa’s illumination source 31 directs light into the fold mirror 30,
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`which is centrally located in the purported second cavity. (Petition at 25.) The
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`18
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`illumination source 31 does not direct light into a front portion of the purported
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`second cavity.
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`(Petition at 25.)
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`d.
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`Fujinawa does not disclose “the second range
`overlapping the first range.”
`Claims 41 and 49 each require an “area sensor supported along the second
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`optical axis for movement there along within a first range of movement” and “a
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`lens supported . . . for movement along the second optical axis within a second
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`range of movement, the second range overlapping the first range at least
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`somewhat.” Fujinawa does not disclose or render obvious the range of motion of
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`the lens overlapping with the range of motion of the image sensor. ST Imaging’s
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`strained interpretation of Fujinawa’s drawings does not overcome Fujinawa’s lack
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`of disclosure in the written description.
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`ST Imaging’s reliance on the drawings to show overlapping ranges of
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`motion is misplaced. “[I]t is well established that patent drawings do not define
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`the precise proportions of the elements and may not be relied on to show particular
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`sizes if the specification is completely silent on the issue.” Hockerson-
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`Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000).
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`Consequently, “arguments based on drawings not explicitly made to scale in issued
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`patents are unavailing.” Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir.
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`2005).
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`
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`Here, ST Imaging’s contention that Fujinawa discloses the claimed
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`overlapping ranges of motion is based entirely on an interpretation of modified
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`figures unsupported by the specification. (Petition at 29, 31.) Fujinawa does not
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`describe the ranges of movement of the lens and sensor, other than stating that the
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`lens and sensor move in accordance with rotation of the rotating shafts. (Ex. 1004
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`¶ 0059.) In light of Fujinawa’s lack of disclosure