Paper 6
`Trials@uspto.gov
`571-272-7822 Entered: June 12, 2017
`
`
`
`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
`____________
`
`
`
`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A., HAAPALA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 12, 2017
`
`
`
`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
`____________
`
`
`
`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A., HAAPALA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-00346
`Patent 9,197,766 B2
`
`
`I.
`INTRODUCTION
`A. Background and Summary
`Digital Check Corp. d/b/a ST Imaging (“Petitioner”) filed a Petition
`
`requesting inter partes review of U.S. Patent No. 9,197,766 B2 (“the ’766
`patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the
`patentability of claims 41–43, 46, 49, 53, and 54 of the ’766 patent on
`grounds of obviousness under 35 U.S.C. § 103. e-ImageData Corp. (“Patent
`Owner”) filed a Preliminary Response to the Petition. Paper 5 (“Prelim.
`Resp.”).
`An inter partes review may not be instituted “unless . . . the
`
`information presented in the petition . . . 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). Having considered
`the arguments and evidence presented by Petitioner and Patent Owner, we
`determine that Petitioner has not demonstrated a reasonable likelihood that it
`would prevail in establishing the unpatentability of the challenged claims of
`the ’766 patent.
`
`B. Related Proceedings
`Patent Owner identifies the ’766 patent as a continuation of U.S.
`
`Patent No. 9,179,019, which is a continuation of U.S. Patent No. 8,537,279,
`which is a continuation of U.S. Patent No. 8,269,890. Paper 4. One or both
`parties identify, as matters involving or related to the ’766 patent, a number
`of district court litigation matters involving these patents, including
`e-ImageData Corp v. Digital Check Corp., No. 2:16-cv-576 (E.D. Wis.), and
`Patent Trial and Appeal Board cases IPR2017-00177 (U.S. Patent
`
`2
`
`
`
`IPR2017-00346
`Patent 9,197,766 B2
`
`No. 8,537,279) and IPR2017-00178 (U.S. Patent No. 9,179,019). Pet. 2;
`Paper 4.
`
`C. The ’766 Patent
`The ’766 patent describes a digital microform imaging apparatus
`
`(DMIA) that may be used to view/scan a broad range of microfilm media
`types (e.g., microfilm, microfiche, aperture cards, 16 mm or 36 mm film
`roll). See Ex. 1001, 1:19–20, 7:56–58. The DMIA can accommodate a
`broad range of image reduction ratios without the need to change zoom
`lenses. See id. at 3:28–30. According to the ’766 patent, an advantage of an
`embodiment is that “it provides a compact microfilm viewer/scanner.” Id. at
`3:26–27. Figure 4 of the ’766 patent is reproduced below:
`
`
`Figure 4 illustrates a perspective view of a DMIA with the cover removed
`and as viewed from generally rearward of the apparatus. Id. at 3:65–67.
`
`The DMIA illustrated in Figure 4 includes: microform media support
`44; chassis 66; mirror mount 78; first lead screw 86; second lead screw 88;
`
`3
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`IPR2017-00346
`Patent 9,197,766 B2
`
`lens 90; area sensor 97; first carriage 92; second carriage 98; first motor 100;
`second motor 108; timing pulleys 102, 106, 110, 114; and belts 104, 112.
`See id. at 5:8–6:11. Microform media support 44 is configured to support a
`microform media. Id. at 5:8–10. A fold mirror (not shown) reflects incident
`light transmitted through microform media and is connected to mirror mount
`78, which is connected to chassis 66. Id. at 5:31–33, 5:36–38. Lens 90 is
`connected to first carriage 92, which is linearly adjustable by rotating first
`lead screw 86. Id. at 5:43–45. Area sensor 97 is connected to second
`carriage 98, which is linearly adjustable by rotating second lead screw 88.
`Id. at 5:52–54. First motor 100 is rotationally coupled to first lead screw 86
`by timing pulley 102, belt 104 with teeth, and timing pulley 106; and second
`motor 108 is rotationally coupled to second lead screw 88 by timing pulley
`110, belt 112 with teeth, and timing pulley 114. Id. at 6:7–9.
`
`A controller (not shown) is electrically connected to first motor 100,
`second motor 108, and area sensor 97. Id. at 6:11–13. The controller
`receives commands and inputs, controls first and second motors 100, 108
`and other components of the DMIA, and outputs an image data of area
`sensor 97. Id. at 6:13–17. The layout of the DMIA, including separately
`adjustable area sensor 97 and lens 90, and algorithms for moving the lens
`and sensor to appropriate respective locations to achieve proper
`magnification and focus of the image, allows the DMIA to autofocus to
`accommodate different reduction ratios of different film media without the
`need for iterative measurements and refocusing of lens 90. Id. at 5:61–6:3.
`The DMIA depicted in Figure 4 includes additional components not
`described.
`
`4
`
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`IPR2017-00346
`Patent 9,197,766 B2
`
`
`D. Illustrative Claim
`Of the challenged claims of the ’766 patent, claims 41 and 49 are
`
`independent claims. The remaining challenged claims directly depend from
`claim 41 or claim 49. Claim 41, reproduced below, is illustrative:
`41. A digital microform imaging apparatus, comprising:
`
`a support structure that forms first and second cavities, the
`first and second cavities spaced apart to form a substantially
`horizontal gap there between;
`
`a microform media support structure mounted within the
`horizontal gap for movement along a substantially horizontal
`longitudinal direction and a substantially horizontal transverse
`direction that is substantially perpendicular to the longitudinal
`direction;
`
`an illumination source mounted within the first cavity to
`direct light along a first substantially vertical optical axis across
`the gap and into a front portion of the second cavity;
`
`a fold mirror including a reflecting surface, the fold mirror
`supported within the second cavity and aligned with the first
`optical axis so that at least a portion of the light from the
`illumination source is directed at the reflecting surface, the
`reflecting surface forming a substantially 45 degree angle with
`the first optical axis and directing light that subtends the
`reflecting surface along a substantially horizontal second optical
`axis that forms a substantially 90 degree angle with the first
`optical axis, the second optical axis extending away from the
`reflecting surface and toward a rear portion of the second cavity;
`
`an area sensor supported within the second cavity and
`aligned along the second optical axis, the area sensor supported
`along the second optical axis for movement there along within a
`first range of movement; and
`
`a lens supported within the second cavity between the fold
`mirror and the area sensor for movement along the second optical
`axis within a second range of movement, the second range
`overlapping the first range at least somewhat.
`Ex. 1001, 12:20–52.
`
`5
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`Patent 9,197,766 B2
`
`
`Reference
`
`E. Applied References
`Dates
`
`Filed Apr. 2, 2003;
`Published Jan. 22, 2004
`Copyright 2002
`
`Exhibit
`No.
`Ex. 1004
`
`Ex. 1009
`
`Fujinawa US 2004/0012827 A1
`
`Image Capture Techs., Parts
`Manual for UC-6E, EC, ECM,
`Motorized Combo Squared Carrier
`Part Numbers 210000-01, 02, 03
`(“Minolta”)1
`Wally
`US 5,574,577
`
`Filed Apr. 11, 1994;
`Issued Nov. 12, 1996
`
`Ex. 1011
`
`Petitioner also relies on the Declaration of Anthony J. Senn, dated
`
`Nov. 30, 2016, (Ex. 1002) and the Declaration of Mr. Philip G. Barboni,
`dated Nov. 3, 2016, (Ex. 1010) in support of its arguments.
`
`
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis
`Claims
`Fujinawa and Minolta
`§ 103(a) 41–43, 46, 49, 53, and 54
`Fujinawa, Minolta, and Wally § 103(a) 41–43, 46, 49, 53, and 54
`
`As a preliminary matter, we note that Petitioner collectively refers to
`
`both Exhibits 1008 and 1009 as “Minolta.” Pet. 5. But Exhibits 1008
`and 1009 are two different references that describe different products, have
`different authors, and have copyright dates that differ by ten years. See
`
`
`1 We note that “Minolta” is not an author or the title of this reference, but as
`both Petitioner and Patent Owner refer to this reference as Minolta (see e.g.,
`Pet. 5, Prelim. Resp. 6), we use the same shortened form for consistency and
`to avoid confusion.
`
`6
`
`
`
`IPR2017-00346
`Patent 9,197,766 B2
`
`Ex. 1008, Ex. 1009. Petitioner does not provide any explanation or reason
`for why these references are collectively referred to as one reference.
`However, Petitioner states that the disclosures of Exhibit 1009 alone, in view
`of the declarations from its witnesses, are sufficient to support every
`assertion about Minolta in the asserted grounds, and that Exhibit 1008 is not
`required as the only support for any of the contentions. Pet. 6.
`
`We determine Petitioner improperly conflates these two references in
`its challenges based on “Minolta.” In view of Petitioner’s statement that
`Exhibit 1009 is sufficient to support every assertion in its challenges, we
`exercise our discretion under 37 C.F.R. §§ 42.5(a) and 42.108(a) to confine
`“Minolta” in the applicable grounds in this proceeding to only Exhibit 1009.
`Where it is unclear as to which exhibit Petitioner is referring, we will treat
`the discussion as if it pertains to the exhibit not in the ground, Exhibit 1008.
`It is incumbent upon Petitioner to articulate an unambiguous ground.
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo
`Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the
`broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`7
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`IPR2017-00346
`Patent 9,197,766 B2
`
`Petitioner apparently does not propose an explicit claim construction
`
`for any term, asserting that it is applying the constructions of the District
`Court’s claim construction order.2 Pet. 16. On this record and for purposes
`of this decision, we determine that no claim terms require express
`construction.
`
`B. The Alleged Obviousness of Claims 41–43, 46, 49, 53, and 54
`Over Fujinawa and Minolta
`Petitioner alleges that claims 41–43, 46, 49, 53, and 54 of the ’766
`
`patent would have been obvious over Fujinawa and Minolta. Pet. 17–52.
`Patent Owner opposes. Prelim. Resp. 3–24.
`1. Fujinawa (Ex. 1004)
`Fujinawa describes an image reading apparatus that can handle films
`
`having different sizes. Ex. 1004 ¶ 3. Figure 4 of Fujinawa is reproduced
`below:
`
`
`2 Petitioner does not provide a citation to an exhibit that is the referenced
`claim construction order. See Pet. 16. Patent Owner filed as Exhibit 2005 a
`Claim Construction Order, dated Nov. 4, 2016, issued by the United States
`District Court for the Eastern District of Wisconsin.
`
`8
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`IPR2017-00346
`Patent 9,197,766 B2
`
`
`
`Figure 4 depicts one embodiment of an image reading apparatus during
`reading of roll film. Id. ¶ 22. Image reading apparatus 1 includes
`cartridge 3, used to house roll film, and insertion opening 6, used for
`inserting strip film and slide-mounted film. Id. ¶ 33. Image reading
`apparatus 1 further includes reading device motor 26, lens motor 27, line
`sensor 28, and reflective mirror 30. Id. ¶ 39. Lens 29 is supported by a
`worm that couples lens 29 to the rotating shaft of lens motor 27 so that it can
`move in accordance with rotation of the rotating shaft. Id. ¶ 59. Line
`sensor 28 is supported by a worm that couples line sensor 28 to rotating
`shaft of reading device motor 26 so that the position of the light-receiving
`surface can be moved in accordance with the rotation of the rotating shaft.
`Id. Fujinawa further describes that an area-type sensor could be provided
`instead of line sensor 28. Id. ¶¶ 49, 112. A central processing unit (CPU,
`
`9
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`IPR2017-00346
`Patent 9,197,766 B2
`
`not depicted) determines the type of film inserted into image reading
`apparatus 1 from information provided by film information reading sensor
`24 and film detection sensor 35. Id. ¶ 66. The CPU separately drives
`reading motor 26 and lens motor 27 to adjust the reading scope and
`resolution according to the results of this determination. Id. ¶¶ 60, 66.
`Opposing rollers 37, 38, 39, 40 are driven separately to convey the film at a
`constant speed during image reading via a line sensor. See id. ¶¶ 47, 48.
`Fujinawa explains: “As is known, if an area-type image sensor were
`provided instead of the line sensor 28, it would not be necessary to feed the
`film using rollers 38 and 39 during image reading of a frame.” Id. ¶ 49.
`2. Minolta (Ex. 1009)
`Minolta is a parts manual for the UC-6E, EC, and ECM Motorized
`
`Combo Squared Carrier. Ex. 1009, 1. The manual includes various
`assembly figures of the Motorized Combo Squared Carrier models and Bills
`of Material for different assemblies. See Ex. 1009. Petitioner’s witness,
`Mr. Barboni, testifies that the UC-6 models were designed to work
`universally with reader-printers for various companies, such as Minolta and
`Canon. Ex. 1010 ¶ 5.
`3. Analysis of the Alleged Obviousness of Claim 41 in View of
`Fujinawa and Minolta
`a) Reason to Combine
`Claim 41 recites a microform media support structure mounted for
`
`movement in two horizontal directions, longitudinally and transversely.
`Ex. 1001, 12:24–28. Petitioner asserts that Fujinawa discloses a microform
`media support structure, Pet. 21–22, but “[a]rguably Fujinawa lacks” one
`configured specifically as recited, id. at 32. Petitioner contends that at least
`
`10
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`IPR2017-00346
`Patent 9,197,766 B2
`
`Fujinawa’s opposing rollers 37, 38, 39, and 40 together constitute a
`microform media support structure. Pet. 19, 21; Ex. 1002 ¶¶ 45, 46. For the
`recited horizontally movable configuration, Petitioner identifies Minolta’s
`fiche assembly and bottom trays as the microform media support structure.
`Pet. 22–23; see Ex. 1009, 3 (items 5, 7). Petitioner reasons that Motorola’s
`Universal Film Carrier was intended for use with a variety of readers and
`“[o]ne of skill in the art would recognize that Minolta’s microform media
`support structure could be substituted for Fujinawa’s microform media
`support structure.” Pet. 23–24 (citing Ex. 1002 ¶¶ 46, 48, 59, 73–75;
`Ex. 1008; Ex. 1010 ¶ 5).3 Patent Owner argues that one of ordinary skill in
`the art would not have modified Fujinawa with the teachings of Minolta.
`Prelim. Resp. 22.
`
`We determine that Petitioner has not articulated adequate reasoning
`with rational underpinnings to support a conclusion of obviousness. See In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As an initial matter, we are not
`persuaded of the correctness of Petitioner’s characterization of Fujinawa
`prior to modification. Petitioner asserts, without citation, that Minolta is like
`Fujinawa in that it discloses a media support structure that “is capable of
`moving along a substantially horizontal longitudinal direction and a
`substantially horizontal transverse direction that is substantially
`perpendicular to the longitudinal direction.” Pet. 22. Similarly, Mr. Senn,
`apparently referring to the purported media support structure of Fujinawa,
`
`
`3 Petitioner, in the same discussion, also proposes a combination with an
`embodiment of the other Minolta reference, Ex. 1008. Pet. 32–33. As
`discussed above, we confine “Minolta” to only Ex. 1009 in the asserted
`grounds.
`
`11
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`IPR2017-00346
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`
`opines that “it would have been within the knowledge of one of ordinary
`skill in the art to mount the media support structure within the gap for
`movement in a longitudinal direction and transverse direction.” Ex. 1002
`¶ 46. Neither Petitioner nor Mr. Senn explains adequately, and we fail to
`see, how Fujinawa’s sets of opposing rollers—argued to be the media
`support structure—are capable of front-to-back and side-to-side movement
`or why one of ordinary skill would mount the rollers to be so configured.
`Further, Petitioner’s reasoning as to why one would modify Fujinawa by
`substituting the opposing rollers with the fiche assembly and related
`components of Minolta lacks adequate explanation and is too conclusory to
`meet Petitioner’s burden of demonstrating a likelihood of prevailing.4 See
`Pet. 23–24.
`
`b) Overlapping Ranges of Movement
`Claim 41 calls for the range of movement of the lens to overlap at
`
`least somewhat the range of movement of the area sensor. Ex. 1001, 12:44–
`52. Petitioner, relying on modified and annotated versions of Fujinawa’s
`Figure 4 and on the testimony of Mr. Senn, argues that the two components
`would have movement ranges that overlap. Pet. 26–32; see Ex. 1002 ¶ 53.
`Patent Owner argues that Fujinawa is silent as to the dimensions and that the
`figures are not drawn to scale and therefore cannot be used to establish the
`disclosure of the claimed overlapping. Prelim. Resp. 20. We agree with
`Patent Owner. Drawings can be cited against the claims of a patent even
`
`
`4 Because we determine Petitioner does not provide sufficient reason to
`combine Fujinawa and Minolta, we decline to reach Patent Owner’s
`arguments that Minolta is not a printed publication, Prelim. Resp. 8–12.
`
`12
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`
`though the features shown in the drawing are not explained in the
`specification. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). However,
`“it is well established that patent drawings do not define the precise
`proportions of the elements and may not be relied on to show particular sizes
`if the specification is completely silent on the issue.” Hockerson-
`Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000).
`Here, Petitioner relies on the relative distances between components
`illustrated in Figure 4, but does not cite to any sections of Fujinawa which
`describe the proportions between the relied upon component or otherwise
`describe that Figure 4 is drawn to scale. See Pet. 29–31.
`
`Further and as Patent Owner notes (Prelim. Resp. 21), Petitioner
`acknowledges (Pet. 27–29) that the sensor movement range is limited by
`stops that presumably would prevent the sensor from reaching the end its
`worm, yet asserts that the lens would travel unbounded to the end of the
`worm screw (id. at 30–31). Petitioner’s assumption is too speculative and
`questionable to establish a reasonable likelihood of prevailing in its
`challenge.
`
`Lastly, Petitioner argues “it would have been obvious to one of skill in
`the art to adapt the length of the track (e.g., track that constrains image
`sensor 28 movement) or the length of the worms to provide additional
`overlap of the ranges of motion.” Pet. 32. This argument is made without
`citation to supporting evidence and is conclusory, and therefore is not
`persuasive. Id.; see Ex. 1002 ¶ 53 (Mr. Senn asserting the similar
`conclusory opinion that such would have been within the knowledge of one
`of ordinary skill in the art).
`
`13
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`
`
`c) Light Directed Into a Front Portion
`Claim 41 recites “an illumination source mounted within the first
`
`cavity to direct light along a first substantially vertical optical axis across the
`gap and into a front portion of the second cavity.” Ex. 1001, 12:29–33.
`Petitioner argues that this feature is disclosed by Fujinawa, and specifically
`in Figure 4. Pet. 24–25. Patent Owner argues that this is incorrect and that
`Fujinawa directs light into a centrally located fold mirror, not the front
`portion of a second cavity. Prelim. Resp. 18–19.
`
`Petitioner has not adequately shown how the disputed limitation is
`disclosed in Fujinawa. The illumination source and vertical portion of the
`light path in Fujinawa appear to be centrally located. See Pet. 25 (annotated
`version of Ex. 1004, Fig. 4). Further, we note that, even were the light path
`located along a side of the housing, that side would not be the front as
`Petitioner identifies a different side, the side with opening 6, as the front.
`See Pet. 44.
`
`d) Conclusion as to Claim 41 and Analysis of the
`Remaining Challenged Claims
`For the reasons discussed above, Petitioner has failed to demonstrate a
`
`reasonable likelihood of prevailing in its challenge of independent claim 41
`as obvious over Fujinawa and Minolta. As to independent claim 49,
`Petitioner relies on the same unpersuasive contentions. See Pet. 46–47. The
`remaining claims subject to this ground, claims 42, 43, 46, 53, and 54, each
`directly depends from claim 41 or claim 49. Petitioner’s arguments against
`these dependent claims refer to and rely on the same contentions discussed
`above regarding the obviousness of claim 41 based on Fujinawa and
`Minolta. See Pet. 33–44, 47–52. Thus, for the same reasons discussed
`
`14
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`
`above, Petitioner has not shown a reasonable likelihood of prevailing in
`showing that any of the challenged claims would have been obvious over
`Fujinawa and Minolta.
`
`C. Analysis of the Alleged Obviousness of Claims 41–43, 46, 49, 53,
`and 54 Over Fujinawa, Minolta, and Wally
`Petitioner offers this second ground in the alternative to the first, and
`
`challenges the same claims as in the first ground. See Pet. 52–53.
`Specifically, “Petitioner proposes Ground 2 where Wally is introduced solely
`for the purpose to illustrate a larger range of overlapping between the area
`sensor and the lens.” Id. at 53.
`
`Petitioner’s articulation of this second ground relies primarily on the
`contentions made in the first ground and fails to cure the above-discussed
`defects regarding the reason to combine the references’ teachings and
`regarding the limitation concerning the light directed into a front portion.5
`See Pet. 52–58. Thus, for the same reasons discussed above, Petitioner has
`not shown a reasonable likelihood of prevailing in showing that claims 41–
`43, 46, 49, 53, and 54 would have been obvious over Fujinawa, Minolta, and
`Wally.
`
`III. CONCLUSION
`Petitioner has not demonstrated that there is a reasonable likelihood of
`
`establishing the unpatentability of any of claims 41–43, 46, 49, 53, and 54 of
`the ’766 patent.
`
`5 Because the failure to cure at least some defects in the ground based on the
`underlying combination of Fujinawa and Minolta is dispositive, we do not
`reach the merits regarding whether the further modification involving Wally
`would cure the defect concerning the overlapping movement ranges.
`
`15
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`
`IV. ORDER
`For the foregoing reasons, it is
`
`ORDERED that the Petition is denied as to the challenged claims, and
`
`no trial is instituted.
`
`
`
`For PETITIONER:
`Jason A. Engel
`Robert J. Barz
`K&L GATES LLP
`jason.engel@klgates.com
`robert.barz@klgates.com
`
`
`
`For PATENT OWNER:
`
`Johanna M. Wilbert
`Joel A. Austin
`Michael T. Piery
`QUARLES & BRADY LLP
`johanna.wilbert@quarles.com
`joel.austin@quarles.com
`michael.piery@quarles.com
`
`
`16
`
`
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