UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
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`______________________
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`
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING
`Petitioner
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner
`
`______________________
`
`CASE: IPR2017-00346
`U.S. PATENT NO. 9,197,766
`______________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, VA 22313-1450
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`
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`

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`Petition For Inter Partes Review of U.S. Patent No. 9,197,766
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`TABLE OF CONTENTS
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`
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`Page
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`INTRODUCTION ........................................................................................... 1
`I.
`PAYMENT OF FEES ..................................................................................... 2
`II.
`III. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ..................... 2
`A.
`Real Party In Interest (37 C.F.R. § 42.8(b)(1)) ..................................... 2
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 2
`C.
`Notice Of Lead And Backup Counsel (37 C.F.R. § 42.8(b)(3)) ........... 2
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) ....................................... 3
`IV. STANDING ..................................................................................................... 3
`V.
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 4
`VI. REASONS FOR THE REQUESTED RELIEF .............................................. 4
`A.
`Summary of ‘766 Petition ..................................................................... 4
`B.
`Overview of the Prior Art Specifically Cited Below ............................ 4
`Fujinawa ..................................................................................... 5
`1.
`2. Minolta Film Carrier Manuals (“Minolta”) ................................ 5
`3. Wally ........................................................................................... 7
`Background of the Technology and Summary of ‘766 Patent .............. 7
`1.
`Support Structure Limitation .................................................... 10
`2.
`Light Source Limitation ............................................................ 11
`3.
`Fold Mirror Limitation .............................................................. 11
`4.
`Area Sensor Limitation ............................................................. 12
`5.
`Lens Limitation ......................................................................... 13
`6.
`Film Carrier Limitation ............................................................. 13
`The Relied-On Art Has Not Been Previously Considered .................. 14
`D.
`VII. PERSON OF ORDINARY SKILL IN THE ART ........................................ 15
`VIII. CLAIM CONSTRUCTION .......................................................................... 16
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`C.
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`Petition For Inter Partes Review of U.S. Patent No. 9,197,766
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`IX. PROPOSED GROUNDS OF REJECTION .................................................. 17
`A. Ground 1: Claims 41-43, 46, 49, 53, and 54 Are Unpatentable
`Under 35 U.S.C. § 103 As Obvious Over Fujinawa In View Of
`Minolta. ............................................................................................... 17
`1.
`Claim 41 .................................................................................... 17
`2.
`Claim 42 .................................................................................... 33
`3.
`Claim 43 .................................................................................... 34
`4.
`Claim 46 .................................................................................... 40
`5.
`Claim 49 .................................................................................... 45
`6.
`Claim 53 .................................................................................... 47
`7.
`Claim 54 .................................................................................... 48
`Ground 2: Claims 41-43, 46, 49, 53 and 54 Are Unpatentable
`Under 35 U.S.C. § 103 As Obvious Over Fujinawa In View Of
`Minolta and Wally. .............................................................................. 52
`1.
`Claim 41 .................................................................................... 53
`2.
`Claim 42 .................................................................................... 58
`3.
`Claim 43 .................................................................................... 58
`4.
`Claim 46 .................................................................................... 58
`5.
`Claim 49 .................................................................................... 58
`6.
`Claim 53 .................................................................................... 58
`7.
`Claim 54 .................................................................................... 58
`CONCLUSION .............................................................................................. 59
`
`X.
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`B.
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`Petition For Inter Partes Review of U.S. Patent No. 9,197,766
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`
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`LIST OF EXHIBITS
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`Ex. 1001: U.S. Patent No. 9,197,766 (“‘766 Patent”)
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`Ex. 1002: Declaration of Anthony J. Senn
`
`Ex. 1003: Curriculum vitae of Anthony J. Senn
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`Ex. 1004: U.S. Publication No. 2004/0012827 (“Fujinawa”)
`
`Ex. 1005: U.S. Patent No. 5,585,937 (“Kokubo”)
`
`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
`
`Parts Numbers 210000-01,02,03 (“Minolta”)
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`Ex. 1010: Declaration of Philip G. Barboni
`
`Ex. 1011: U.S. Patent No. 5,574,577 (“Wally”)
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`
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`iii
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`Petition For Inter Partes Review of U.S. Patent No. 9,197,766
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`I.
`
`INTRODUCTION
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`Digital Check Corp. d/b/a ST Imaging (“Petitioner”) requests Inter Partes
`
`Review (“IPR”) of claims 41-43, 46, 49, 53, and 54 (“Challenged Claims”) of U.S.
`
`Patent No. 9,197,766 (“‘766 Patent”) (Ex. 1001).
`
`The ‘766 Patent discloses and claims microform imaging apparatuses.
`
`Microform readers were ubiquitous long before the ‘766 Patent. The ‘766 Patent
`
`acknowledges that the principle features of microform readers–a chassis, a mirror,
`
`a lens, an image sensor and an adjuster–were well-known many years prior to the
`
`alleged invention. (Ex. 1001, 2:23-36). The ‘766 Patent further recognizes that the
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`digital aspects incorporated into the claimed invention were not novel. (Ex. 1001,
`
`2:28-31). Rather, digitization of microfilm was a natural result of the prevalence
`
`of computers and the digital age. (Ex. 1001, 1:60-67).
`
`The microform reader of the ‘766 Patent purports to be more “compact and
`
`versatile” than prior art readers. (Ex. 1001, 2:59-62; Ex. 1002, ¶22). Yet, the
`
`Challenged Claims fail to claim any novel elements or a novel arrangement of
`
`elements that were not already well-known in the prior art. In short, the
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`Challenged Claims are nothing more than a straightforward recitation of
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`conventional, well-known microform imaging technology.
`
`As described in detail below, the Board should institute IPR and cancel the
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`Challenged Claims.
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`Petition For Inter Partes Review of U.S. Patent No. 9,197,766
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`II.
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`PAYMENT OF FEES
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`The required fee for this Petition has been paid from Deposit Account No.
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`02-1818, and the Office is authorized to deduct any additional fees due in
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`association with this Petition.
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`III. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
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`A. Real Party In Interest (37 C.F.R. § 42.8(b)(1))
`
`Digital Check Corp. d/b/a ST Imaging, a Delaware corporation with a
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`principal place of business at 630 Dundee Road, Suite 210, Northbrook, IL 60062
`
`is the real party in interest.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
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`The ‘766 Patent is being asserted against Petitioner in the case E-ImageData
`
`Corp v. Digital Check Corp. in the Eastern District of Wisconsin (Case Nos. 2:15-
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`cv-0658 and 2:16-cv-576). Currently-pending U.S. Patent Application No.
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`14/931,583 (“‘583 Application”) was filed on November 3, 2015 as a continuation
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`of the ‘766 Patent. U.S. Patent Nos. 8,537,279 and 9,179,019 are also being
`
`asserted against Petitioner in Case No. 2:16-cv-0576. Petitioner previously filed an
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`IPR on U.S. Patent No. 8,537,279 (IPR2017-00177) and an IPR on U.S. Patent No.
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`9,179,019 (IPR2017-00178).
`
`C. Notice Of Lead And Backup Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel
`Jason A. Engel
`
`Backup Counsel
`Robert J. Barz
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`Petition For Inter Partes Review of U.S. Patent No. 9,197,766
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`
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`Reg. No. 51,654
`K&L Gates LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`jason.engel@klgates.com
`Phone: 312-807-4236
`Fax: 312-827-8145
`
`D.
`
`Reg. No. 74,363
`K&L Gates LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`robert.barz@klgates.com
`Phone: 312-807-4233
`Fax: 312-827-1265
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Papers concerning this matter should be served on Jason Engel at K&L
`
`Gates LLP, 70 W. Madison St., Suite 3100, Chicago, IL 60602 (Tel. 312-372-
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`1121; Fax 312-827-8000). Petitioner hereby consents to electronic service at the
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`following electronic mail addresses:
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`Jason.Engel.PTAB@klgates.com
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`IV. STANDING
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`The Petition is being filed within one year of Petitioner being served with a
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`complaint for infringement. Petitioner certifies that (1) the ‘766 Patent, issued on
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`November 25, 2015, is available for IPR; (2) Petitioner is not barred or estopped
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`from requesting IPR on the Grounds identified herein; and (3) Petitioner has not
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`filed a civil action challenging the validity of any claims of the ‘766 Patent. This
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`Petition is filed in accordance with 37 C.F.R. § 42.106(a). Concurrently filed
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`herewith is a Power of Attorney and an Exhibit List per 37 C.F.R. § 42.10(b) and §
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`42.63(e), respectively.
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`Petition For Inter Partes Review of U.S. Patent No. 9,197,766
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`V.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner asks that the Board review the accompanying prior art and
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`analysis, institute a trial for IPR of the Challenged Claims, and cancel the
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`Challenged Claims as invalid under 35 U.S.C. §103.
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`VI. REASONS FOR THE REQUESTED RELIEF
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`A.
`
`Summary of ‘766 Petition
`
`The Challenged Claims are obvious in view of the prior art. They cover
`
`nothing more than the straightforward combination of well-known microform
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`imaging apparatus designs and/or very well-known features of such microform
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`imaging apparatuses.
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`B. Overview of the Prior Art Specifically Cited Below
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`The relied-on prior art all relate to microform readers. The narrowness of
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`this field motivates a person of skill in the art to look to the relied-on references
`
`since they are analogous art. The prior art references show the well-known
`
`features of microform readers available at the time of alleged invention. These
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`well-known features could have been easily incorporated and/or substituted from
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`one microform reader to the other to achieve predictable outcomes. For example, a
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`person of skill in the art would have been motivated to combine the teachings of
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`U.S. Publication No. 2004/0012827 (“Fujinawa”), various Minolta user manuals,
`
`and/or U.S. Patent No. 5,5574,577 (“Wally”) to develop a digital microform
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`Petition For Inter Partes Review of U.S. Patent No. 9,197,766
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`imaging apparatus. Furthermore, given that all of the art is related to microform
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`readers, a person of skill in the art would have been motivated to seek out these
`
`references when looking to develop a digital microform imaging apparatus.
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`1. Fujinawa
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`Fujinawa published on January 22, 2004. (Ex. 1004). Fujinawa is prior art
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`under 35 U.S.C. § 102(b). Fujinawa discloses an image reading apparatus for
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`reading film images that includes a light source, a film carrier, a lens, a mirror, and
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`an image sensor.
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`2. Minolta Film Carrier Manuals (“Minolta”)
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`The Minolta Film Carrier Publication and Parts List (Exs. 1008 and 1009)
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`(collectively, “Minolta”) have copyright dates of 1992 and 2002 respectively.
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`Minolta is prior art under at least 35 U.S.C. § 102(a) and 102(b). Minolta discloses
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`film transporters that are designed to work with microform imaging apparatus such
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`as Minolta’s line of universal reader-printers.
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`Ex. 1008 is a publication titled “Minolta UC-1 Universal Film Carrier”
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`published by the American Library Association in Library Technology Reports,
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`28.5 (September-October 1992), 625. (Ex. 1008). Ex. 1008 bears a University of
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`Washington Libraries receipt stamp dated April 16, 1993. This publication has
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`been publically available at University of Washington Library since April 16,
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`1993. Ex. 1008 provides a written description of Minolta’s Universal Film Carrier,
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`including specifications and instructions for operation. Ex. 1008 discloses that the
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`Minolta Universal Film Carrier was intended to operate with “readers/printers” and
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`to accommodate various microform media. (Ex. 1008).
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`Ex. 1009 is a is a parts manual for the UC-6 universal microfilm carrier,
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`specifically for the 6E, 6EC, and 6ECM models having parts numbers 210000-01, -
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`02, and -03, respectively. (Ex. 1009; Ex. 1010, ¶¶1-9). The models described and
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`depicted in Ex. 1009 were designed to work universally with reader-printers from
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`various companies such as Minolta and Canon. (Ex. 1010, ¶5). In the ordinary
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`course of business, Ex. 1009 was published to distributors for the UC-6 product,
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`including Minolta and Canon in 2002. (Ex. 1010, ¶¶6-7). The disclosures of Ex.
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`1009 alone, in view of the Senn and Barboni declarations (Ex. 1002, Ex. 1010), are
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`sufficient to support every assertion about Minolta in Proposed Grounds of
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`Rejection Nos. 1 and 2, below. The disclosures of Ex. 1008 and Ex. 1009 together
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`provide a clear picture of the prior art disclosures of the Minolta universal carriers.
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`One of skill in the art at the time of the invention would not need Ex. 1008 to
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`understand the disclosure of Ex. 1009, however, Ex. 1008 explicitly details several
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`concepts inherent to parts manual, Ex. 1009. (Ex. 1002, ¶56).
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`3. Wally
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`Wally issued on November 12, 1996. (Ex. 1011). Wally is prior art under 35
`
`U.S.C. § 102(b). Wally discloses an image reading device that, like Fujinawa,
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`includes a light source, a film carrier, a lens, and an image sensor.
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`C. Background of the Technology and Summary of ‘766 Patent
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`The ‘766 Patent describes a microform imaging apparatus. (Ex. 1001,
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`Abstract, 1:17-18; Ex. 1002, ¶¶20, 21). Microform readers have existed for
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`decades and certainly predate the ‘766 Patent. The ‘766 Patent discloses
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`microform reader patents dating back to 1973, but these reading devices were well-
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`known long before the 1970s. (Ex. 1001, 1:48-50, 2:2-3, 2:25-27, 2:50-51).
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`Microform reading devices have been used for nearly a century to read and view
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`documents stored as microform including Microfilm, Microfiche, Aperture cards,
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`etc. (Ex. 1002, ¶23). Microform is stored on reel film or as cassettes, which can
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`hold thousands of pages of miniaturized documents for efficient archiving and
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`storage. (Ex. 1002, ¶23). A user operates a microform reader to access the
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`archived documents through magnification and display. (Ex. 1002, ¶23).
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`Microform’s ability to store many documents in a small space became increasingly
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`popular in the 1950s when libraries used it for the archival of deteriorating
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`newspaper collections and record preservation. (Ex. 1002, ¶23).
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`Due to the increased popularity of microform, microform readers were
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`increasingly developed to enable users to retrieve and view the image information
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`stored on the microform. (Ex. 1002, ¶24). The basic operation of a microform
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`reader has not changed for decades, i.e., microform readers retrieve image
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`information by projecting a magnified view of microform images to readable
`
`proportions. (Ex. 1002, ¶24). The image can then be viewed, printed, or saved by
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`the user. (Ex. 1002, ¶24).
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`To improve image quality, many prior art microform readers included focus
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`and magnification adjustment functionality, which is typically achieved by moving
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`the lens and/or image sensor. (Ex. 1002, ¶25). Devices with moving components
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`are not a new concept. Rotating and translating parts have been a part of
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`mechanical reading and imaging devices for the last century. (Ex. 1002, ¶25).
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`Achieving motion within a microform reading or imaging device has been
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`accomplished much in the same way for decades. (Ex. 1002, ¶25). The well-
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`known and long used configurations to convert motor drive shaft rotational energy
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`into linear motion include lead members, guide rails, and rack and pinion
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`arrangements. (Ex. 1002, ¶25). A lead member arrangement, such as a threaded
`
`lead screw (e.g., worm) and threaded (driven) nut enables linear motion as the
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`threaded nut moves along the rotating lead member (e.g., worm). (Ex. 1002, ¶25).
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`The motor shaft can be directly connected to the lead member or can be coupled to
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`the lead member through the use of pulleys and belts gears or other means of rotary
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`motion transmission. (Ex. 1002, ¶25). Another well-known technique includes a
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`guide rail, pulleys, and a drive belt. The drive belt may be coupled to a carriage
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`that slides along the guide rail as the drive shaft rotates a drive pulley. (Ex. 1002,
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`¶25). Additionally, a rack and pinion gear arrangement can be used, such that
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`rotation of the motor shaft guides the pinion gear along the rack. (Ex. 1002, ¶25).
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`The various configurations discussed above can be used to move the lens and
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`image sensor through ranges of motion. (Ex. 1002, ¶25).
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`With the advent of the computer and advances in electronic storage, digital
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`conversions of microform became popular. (Ex. 1001, 1:63 to 2:3). Microform
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`readers were adapted with image sensors such as line sensors and area sensors to
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`capture the image information from the projected film, which could then be saved
`
`and stored electronically. (Ex. 1002, ¶26). Many microform readers were
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`integrated with computers to save digital copies of the scanned images. (Ex. 1002,
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`¶26).
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`One of the basic, well-known prior art processes for retrieving and
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`displaying an image is illustrated below:
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`(See, e.g., Ex. 1004, Fig. 4). Since microform readers are designd to project and
`
`save film images, there are a handful of components common to many of the
`
`designs. For example, most designs include a light source, a film carrier, a lens, a
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`mirror, and an image sensor. (See generally Ex. 1004; Ex. 1005; Ex. 1006; Ex.
`
`1011). The claim elements of the ‘766 Patent are not unique, but instead include
`
`the same common components typically used in microform and other imaging
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`devices.
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`1.
`
`Support Structure Limitation
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`Support structures and frames, such as chassis and/or housing, have been
`
`used in microform readers since their inception to support the different components
`
`of the microform reader. (Ex. 1002, ¶29). For example, the support structure is
`
`used to support lenses, mirrors, image sensors, etc. (Id.). The support structure
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`may include a frame and/or an enclosure to support the light source, film carrier,
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`fold mirror, lens, sensor, etc. (Id.). Almost universally, prior art microform
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`readers include a support structures that supports and/or encloses the other
`
`components of the microform reader. (Ex. 1004, ¶0033, Figs. 3-6; Ex. 1005, 8:52-
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`54, Figs. 1, 2, 4, and 6-8; Ex. 1006, 5:9-13, Fig. 1; Ex. 1007, Fig. 2.1b; Ex. 1011,
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`5:34-37, 5:20-45, Figs. 1 and 4).
`
`2.
`
`Light Source Limitation
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`Light sources have been used with image reading devices and in microform
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`readers to transmit light through the film and passed through optics, such as a lens,
`
`and captured by an image sensor. (Ex. 1002, ¶30). It was well-known in the prior
`
`art for the light source to direct light through film along an optical axis of the
`
`device. (Ex. 1002, ¶30; Ex. 1004, ¶0039, 0055, 0058, 0059, Figs. 3-6; Ex. 1005,
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`8:59-66, Figs. 17 and 18; Ex. 1006, 5:20-24, 6:54-57, Figs. 1-4; Ex. 1007, 8, 16,
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`18, Fig. 2.2a, Fig. 2.2b; Ex. 1011, 4:19-23, 5:45-46, 7:20-30, Figs. 5, 9, 12).
`
`3.
`
`Fold Mirror Limitation
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`Mirrors have been used in microform readers to change the direction of the
`
`light path within the device. (Ex. 1002, ¶31). Even the earliest of projector
`
`systems and microform readers used mirrors to project images illuminated by a
`
`light source onto a projector screen. (Id.). In the same sense, fold mirrors are used
`
`in digital systems to direct light towards the image sensor, which enables the
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`optical components to be positioned on different axes than the light source. (Id.).
`
`A fold mirror is supported by the chassis and typically directs light from the light
`
`source, through the lens to the sensor. Utilizing a fold mirror to direct light
`
`through the lens to the image sensor or CCD was well-known and fundamental to
`
`prior art microform readers (Ex. 1004, ¶0039, Figs. 3-6; Ex. 1005, 8:61-64, 12:1-
`
`33, Figs. 17, 18, and 56; Ex. 1006, 5:24-27, Figs. 1-4 and 6; Ex. 1007, Figs. 2.2a
`
`and 2.2b, p.16).
`
`4.
`
`Area Sensor Limitation
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`As discussed above, with the advent of the computer and the continuing
`
`advances in electronic storage, digital conversions of microform became popular.
`
`(Ex. 1001, 1:63-2:3). Microform readers were adapted with image sensors such as
`
`line sensors and area sensors to capture the image information from the projected
`
`film. (Ex. 1002, ¶32). In the prior art, it was well-known that a sensor, e.g., an
`
`area sensor, would be used to capture image data of the microform. (Ex. 1002,
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`¶35; Ex. 1004, ¶¶0009, 0039, 0049, 0055, 0059, 0112, Figs. 3-6; Ex. 1005, 8:61-
`
`64, 11:63 to 12:6, 2:37-39, Figs. 17, 18, 56; Ex. 1006, 6:62-65, 7:66-68, 10:4-13,
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`Fig. 2; Ex. 1007, 7, 14-17, Fig. 2b; Ex. 1011, 7:31-40, 8:12-14, 8:34-40, Figs. 5, 6,
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`9).
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`5.
`
`Lens Limitation
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`Lenses are used to magnify and/or focus the image on the film such that the
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`film is readable. (Ex. 1002, ¶33). It was well-known in the prior art to position a
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`lens on a movable carriage between a sensor and a fold mirror to help focus the
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`image. (Ex. 1004, ¶¶0039, 0055, 0059, Figs. 3-6; Ex. 1005, 8:61-64, 2:37-39,
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`12:1-6, Figs. 17, 18, and 56; Ex. 1006, 5:22-27, Figures 1-4 and 6; Ex. 1007, Figs.
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`2.2a and 2.2b, 15-17; Ex. 1011, 8:41-51, Figs. 5, 6, 12).
`
`6.
`
`Film Carrier Limitation
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`Film carriers or microform media support structures are used to position and
`
`support the film within the device. (Ex. 1002, ¶34). Film carriers may be movable
`
`such that the film can be moved in a transverse or longitudinal direction. (Id.).
`
`Several other example microform readers also include film carriers. (Ex. 1004,
`
`¶¶0039, 0045-0048, 0082, 0083, Figs. 3-6; Ex. 1005, 14:8-16, 2:57-64, Figs. 19,
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`51-56; Ex. 1006, 7:13-22, Figs. 2, 3; Ex. 1007, Fig. 2.2b, 8, 16; Ex. 1008, 3-5, 7;
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`Ex. 1009; Ex. 1011, 5:45-53, 5:60-63, 6:3-7, Fig. 11).
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`Prior to the alleged invention of the ‘766 Patent, Accessory film carriers and
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`universal film carriers (e.g., microform media support structures) were well known
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`for their versatile design, enabling them to work with a wide variety of microform
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`media and multiple models of microform readers regardless of the mechanics of
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`the readers. (Ex. 1002, ¶35). It was well known that such Accessory film carriers
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`or microform media support structures could be independently designed and sold
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`separately from microform readers, yet still be entirely compatible with the
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`readers. (Ex. 1008, 3, 4, 10; Ex. 1009; Ex. 1002, ¶35). Although some prior art
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`microform readers included their own microform media support structures, it was
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`well known that a prior art accessory film carriers (e.g., microform media support
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`structures) would be capable of fitting on or into those prior art readers such that it
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`would work in conjunction with the readers mechanical and optical components.
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`(Ex. 1004, ¶¶ 0039, 0045-0048, 0082, 0083, Figs. 3-6; Ex. 1005, 14:8-16, 2:57-64,
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`Figs. 19, 51-56; Ex. 1006, 7:13-22, Figs. 2, 3; Ex. 1007, Fig. 2.2b, pp. 8, 16; Ex.
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`1011, 5:45-53, 5:60-63, 6:3-7, Fig. 11; Ex. 1002, ¶35). Further, it was well known
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`that the prior art accessory support structures could fit above the microform
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`reader’s light source thereby allowing the projected film image to be passed
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`through the optical components (e.g., fold mirror, lens, etc.) to the image sensor.
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`(Ex. 1008, 3-7; Ex. 1009; Ex. 1002, ¶35).
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`D. The Relied-On Art Has Not Been Previously Considered
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`Institution is warranted under 35 U.S.C. § 325(d) because this Petition relies
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`on new obviousness combinations not considered during examination of the ‘766
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`Patent. Additionally, this petition includes an expert declaration to help explain
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`the prior art landscape and give context to the presented combinations. (Ex. 1002).
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`VII. PERSON OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art is a hypothetical person presumed to
`
`know the relevant prior art. Gnosis S.p.A. v. S. Ala. Med. Sci. Found., IPR2013-
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`00116, Final Written Decision (Paper 68) at 9 (citing In re GPAC Inc., 57 F.3d
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`1573, 1579 (Fed. Cir. 1995)). Such person is of ordinary creativity, not merely an
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`automaton, and is capable of combining teachings of the prior art. Id. (citing KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007)). Citing the Federal Circuit,
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`the Board has held “the references themselves represent the level of ordinary skill
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`in the art.” eBay Inc. v. Locata LBS LLC, IPR2014-00585, Final Written Decision
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`(Paper 31) at 6 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
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`(the level of ordinary skill in the art usually is evidenced by the references
`
`themselves)); In re GPAC, 57 F.3d at 1579 (finding that the Board of Patent
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`Appeals and Interferences did not err in concluding that the level of ordinary skill
`
`in the art was best determined by the references of record).
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`From the “Field of the Disclosure” of the ‘766 Patent and the references
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`presented herein, it is evident that a person of ordinary skill in the art at the time of
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`filing of the ‘766 Patent had at least some experience with microform imaging
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`apparatuses. (See, e.g., Ex. 1001, 1:22-23 (“present disclosure relates to digital
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`microform imaging apparatus”)). Petitioner submits that a person of ordinary skill
`
`in the art of the ‘766 Patent at the time of filing the ‘766 Patent would have had
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`would have had at least a bachelor’s of science degree in either electrical
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`engineering or mechanical engineering with at least 3 years’ experience designing
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`electro-mechanical products including experience designing imaging equipment
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`such as copiers, scanners, and/or microform scanners and readers. (Ex. 1002, ¶38).
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`VIII. CLAIM CONSTRUCTION
`
`In an inter partes review, claim terms are given their “broadest reasonable
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`construction.” 37 C.F.R. § 42.100(b). A correct construction under this standard
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`must be “consistent with the specification” of the patent. In re Cuozzo Speed
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`Techs., LLC, 778 F.3d 1271, 1279 (Fed. Cir. 2015) (quoting In re Rambus, Inc.,
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`753 F.3d 1253, 1255 (Fed. Cir. 2014)). Claim terms are generally given their
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`ordinary and customary meaning to an artisan in the context of the disclosure. In
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`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citing Phillips v.
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`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). Any special
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`definition must be described in the specification “with reasonable clarity,
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`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`The court issued a claim construction order and concluded that the preamble
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`“digital microform imaging apparatus” limits the claims. The remaining
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`constructions for the other disputed terms do not appear in any of the challenged
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`claims of the ‘766 Patent. For the purpose of this proceeding, the constructions of
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`the court’s claim construction order are applied herein. However, each of the prior
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`Petition For Inter Partes Review of U.S. Patent No. 9,197,766
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`art references used in this petition discloses a “digital microform imaging
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`apparatus” or the mechanical components of a microform media support structure.
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`Accordingly, the Challenged Claims are obvious for the reasons set forth herein.
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`IX. PROPOSED GROUNDS OF REJECTION
`
`Ground
`1
`
`Statutory Basis
`35 U.S.C. § 103
`
`2
`
`35 U.S.C. § 103
`
`Challenge
`Obvious over Fujinawa in
`view of Minolta
`Obvious over Fujinawa in
`view of Minolta and Wally
`
`Claims
`41-43, 46, 49, 53,
`and 54
`41-43, 46, 49, 53,
`and 54
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`Petitioner provides the declaration of Anthony J. Senn, an expert in the
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`relevant field, in support of these Grounds. (Ex. 1002, ¶¶1-19, 36-37, 40, 56, 65).1
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`A. Ground 1: Claims 41-43, 46, 49, 53, and 54 Are Unpatentable
`Under 35 U.S.C. § 103 As Obvious Over Fujinawa In View Of
`Minolta.
`
`1.
`
`Claim 41
`
`
`
`1 Mr. Senn has a bachelor’s degree in Mechanical Engineering and has worked
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`on the design of mechanical products for over 25 years, and specifically
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`worked on microform and roll film scanning equipment for approximately the
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`last ten years. He is an expert in the field with specific experience in
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`microform imaging equipment. (Ex. 1003; Ex. 1002, ¶39).
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`[Element] - Shorthand
`
`[41.0] - preamble
`[41.1] - support structure
`
`- microform
`[41.2]
`media support structure
`
`[41.3]
`source
`
`-
`
`illumination
`
`[41.4] - mirror
`
`[41.5] - area sensor
`
`[41.6] - lens
`
`Claim 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.
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`Fujinawa di