`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`DIGITALOPTICS CORPORATION MEMS
`Patent Owner
`
`____________________
`
`Patent No. 7,697,829
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,697,829
`
`
`
`
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`TABLE OF CONTENTS
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
`
`III.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.15(a) .................................... 2
`
`IV. GROUNDS FOR STANDING ........................................................................ 2
`
`V.
`
`PRECISE RELIEF REQUESTED AND GROUNDS RAISED ..................... 2
`
`A.
`
`Claims for Which Review Is Requested ............................................... 2
`
`B.
`
`Statutory Grounds of Challenge ............................................................ 2
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 4
`
`VII. OVERVIEW OF THE ’829 PATENT AND THE PRIOR ART .................... 5
`
`A.
`
`Summary of the ’829 Patent .................................................................. 5
`
`B.
`
`C.
`
`The Prosecution History of the ’829 Patent ........................................12
`
`The Prior Art .......................................................................................12
`
`1.
`
`2.
`
`3.
`
`4.
`
`Hara ..........................................................................................12
`
`Hagimori ...................................................................................15
`
`Hosono ......................................................................................18
`
`Tsutsui .......................................................................................21
`
`VIII. CLAIM CONSTRUCTION ..........................................................................21
`
`IX. DETAILED EXPLANATION OF GROUNDS ............................................22
`
`A. Ground 1: Hara in view of Hagimori and Hosono Renders
`Claims 1, 11, and 14 Obvious .............................................................22
`
`1.
`
`2.
`
`Claim 1 ......................................................................................22
`
`Claim 11 ....................................................................................47
`
`i
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`
`
`3.
`
`Claim 14 ....................................................................................58
`
`B.
`
`Ground 2: Hara in view of Hagimori, Hosono, and Tsutsui
`Renders Claims 7 and 15 Obvious ......................................................60
`
`1.
`
`2.
`
`Claim 7 ......................................................................................60
`
`Claim 15 ....................................................................................63
`
`X.
`
`CONCLUSION ..............................................................................................64
`
`
`
`
`
`
`
`ii
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`
`
`
`Cases
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`
`805 F.3d 1359 (Fed. Cir. 2015) ............................................................................ 3
`
`Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131 (2016) ........................................................................................ 19
`
`KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007) .......................................................................... 31, 44, 55, 60
`
`Toyota Motor Corp. v. Cellport Systems, Inc.,
`
`IPR2015-00633, Paper 11 (August 14, 2015) .................................................... 19
`
`Statutes
`
`35 U.S.C.
`
`§ 102(b) ............................................................................................................. 3, 4
`
`§ 102(e) ............................................................................................................. 3, 4
`
`§ 103(a) ................................................................................................................. 3
`
`§ 112 .......................................................................................................... 8, 20, 52
`
`Other Authorities
`
`37 C.F.R. § 42.8 ......................................................................................................... 1
`
`37 C.F.R. § 42.15 ....................................................................................................... 2
`
`37 C.F.R. § 42.100(b) .............................................................................................. 19
`
`
`
`
`
`
`
`iii
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`
`
`Ex. 1001 U.S. Patent No. 7,697,829
`
`LIST OF EXHIBITS
`
`
`Ex. 1002 Declaration of Stanley Shanfield, Ph.D.
`
`Ex. 1003 Curriculum Vitae of Stanley Shanfield, Ph.D.
`
`Ex. 1004 Prosecution History of U.S. Patent No. 7,697,829
`
`Ex. 1005 U.S. Patent No. 7,085,484 to Hara (“Hara”)
`
`Ex. 1006 U.S. Patent No. 6,646,816 to Hagimori (“Hagimori”)
`
`Ex. 1007 Certified English translation of Japanese Patent No. JP2000-078816 to
`Hosono, Japanese language version of JP2000-078816, and translation
`certificate (“Hosono”)
`
`Ex. 1008 U.S. Patent No. 6,274,994 to Tsutsui (“Tsutsui”)
`
`
`
`iv
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. (“Petitioner”) requests inter partes review
`
`(“IPR”) of claims 1, 7, 11, 14, and 15 of U.S. Patent No. 7,697,829 (“the ’829
`
`patent”) (Ex. 1001) assigned to DigitalOptics Corporation MEMS (“Patent Owner”
`
`or “PO”). For the reasons below and accompanying evidence, the challenged
`
`claims should be found unpatentable and cancelled.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`Real Parties-in-Interest: Petitioner identifies the following as the real
`
`parties-in-interest: Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc.
`
`Related Matters: The ’829 patent is at issue in FotoNation Ltd. v. Samsung
`
`Electronics Co., Ltd., Case No. 2-17-cv-00669 (E.D. Tex). U.S. Patent Nos.
`
`7,574,016 (“the ’016 patent”); 7,860,274 (“the ’274 patent”); 8,331,715 (“the ’715
`
`patent”); 8,908,932 (“the ’932 patent”); 7,620,218 (“the ’218 patent”); 7,916,897
`
`(“the ’897 patent”); and 8,254,674 (“the ’674 patent”) are also asserted in this
`
`action. Petitioner is concurrently filing IPR petitions challenging claims of the
`
`’218 patent, the ’897 patent, and the ’674 patent. Petitioner has previously filed
`
`IPR petitions challenging claims of the ’274 patent (IPR No. 2018-01798), the
`
`’016 patent (IPR No. 2018-01799), the ’932 patent (IPR Nos. 2018-01800 and
`
`2018-01801), and the ’715 patent (IPR No. 2018-01802).
`
`1
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`Counsel and Service Information: Lead counsel is Naveen Modi (Reg.
`
`No. 46,224) and Backup counsel are (1) Joseph E. Palys (Reg. No. 46,508), (2)
`
`Quadeer A. Ahmed (Reg. No. 60,835), (3) Paromita Chatterjee (Reg. No. 63,721),
`
`and (4) Arvind Jairam (Reg. No. 62,759). Service information is Paul Hastings
`
`LLP, 875 15th St. N.W., Washington, D.C., 20005, Tel.: 202.551.1700, Fax:
`
`202.551.1705, email: PH-Samsung-Fotonation-IPR@paulhastings.com. Petitioner
`
`consents to electronic service.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15(a)
`
`The PTO is authorized to charge all fees due at any time during this
`
`proceeding, including filing fees, to Deposit Account No. 50-2613.
`
`IV. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’829 patent is available for IPR, and Petitioner is
`
`not barred or estopped from requesting IPR on the grounds identified herein.
`
`V.
`
`PRECISE RELIEF REQUESTED AND GROUNDS RAISED
`
`A. Claims for Which Review Is Requested
`
`Petitioner respectfully requests review of claims 1, 7, 11, 14, and 15
`
`(“challenged claims”) of the ’829 patent, and cancellation of these claims as
`
`unpatentable.
`
`B.
`
`Statutory Grounds of Challenge
`
`The challenged claims should be canceled as unpatentable on the following
`
`grounds:
`
`2
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`Ground 1: Claims 1, 11, and 14 are unpatentable under pre-AIA 35 U.S.C.
`
`§ 103(a) in view of U.S. Patent No. 7,085,484 to Hara (“Hara”) (Ex. 1005), U.S.
`
`Patent No. 6,646,816 to Hagimori (“Hagimori”) (Ex. 1006), and Japanese Patent
`
`Publication No. JP2000-78861 to Hosono (“Hosono”) (Ex. 1007); and
`
`Ground 2: Claims 7 and 15 are unpatentable under pre-AIA 35 U.S.C. §
`
`103(a) in view of Hara, Hagimori, Hosono, and U.S. Patent No. 6,274,994 to
`
`Tsutsui (“Tsutsui”) (Ex. 1008).1
`
`For purposes of this proceeding, Petitioner assumes the earliest effective
`
`filing date of the ’829 patent is September 2, 2005, which is the filing date of U.S.
`
`Provisional Patent Application No. 60/713,971 (“the ’971 application”) to which
`
`the ’829 patent claims priority. (Ex. 1001 at Cover.) Hara issued on August 1,
`
`2006 from U.S. Patent Application No. 10/617,634 filed on July 11, 2003, and
`
`published as U.S. Patent Publication No. 2004/0013420 on January 22, 2004. (Ex.
`
`1005 at Cover.) Therefore, Hara is prior art at least under pre-AIA 35 U.S.C. §
`
`
`
` For each proposed ground, Petitioner does not rely on any prior art reference
`
` 1
`
`other than those listed here. To the extent other references are discussed, they are
`
`provided to show the state of the art at the time of the alleged invention. See, e.g.,
`
`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015).
`
`3
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`102(b) and 102(e). Hagimori issued on November 11, 2003, Hosono published on
`
`March 14, 2000, and Tsutsui issued on August 14, 2001. Therefore, Hagimori,
`
`Hosono, and Tsutsui are prior art at least under pre-AIA 35 U.S.C. § 102(b). Hara,
`
`Hagimori, and Hosono were not considered by the Patent Office during
`
`prosecution of the ’829 patent. (See generally Ex. 1004; Ex. 1001 at Cover.)
`
`Tsutsui was relied upon by the Examiner to reject some dependent claims during
`
`prosecution, but the Applicant did not make any substantive arguments against it
`
`(Applicant elected to rewrite the identified allowable subject matter in independent
`
`form without arguing against any of the rejections). (Ex. 1004 at 55-56, 65-74, 83-
`
`84, 91-100, 105-108.) Moreover, Tsutsui was not considered by the Patent Office
`
`in combination with the prior art as presented in this Petition. Nor did the Patent
`
`Office have the benefit of the testimony of Petitioner’s expert, Dr. Stanley
`
`Shanfield.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) at the time of the alleged
`
`invention of the ’829 patent would have had either (1) a Master’s Degree in
`
`Electrical Engineering, Mechanical Engineering, Computer Science, Physics, or
`
`equivalent related field with course work in the field of actuator control systems
`
`for positioning systems or related technologies or (2) a Bachelor’s Degree in
`
`Electrical Engineering, Mechanical Engineering, Computer Science, Physics, or a
`
`4
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`related field plus at least two years of experience in the field of actuator control
`
`systems for positioning systems, or a related field. (Ex. 1002 at ¶¶21-22.)2 More
`
`education can supplement practical experience and vice versa. (Id.)
`
`VII. OVERVIEW OF THE ’829 PATENT AND THE PRIOR ART
`
`A.
`
`Summary of the ’829 Patent
`
`The ’829 patent relates to “electronic damping for stage positioning” for
`
`small stages such as those in micro-electromechanical systems (MEMS) including
`
`“[m]iniature cameras [in] cellular telephones.” (Ex. 1001 at Title, 1:19-21, 1:30-
`
`31.) The techniques for electronic dampening for stage positioning in MEMS
`
`devices disclosed and claimed in the ’829 patent were conventional and well-
`
`known before the alleged invention of the ’829 patent. (Ex. 1002 at ¶¶32-40; id. at
`
`¶¶23-31 (describing the technical background of the ’829 patent); infra Section
`
`IX.)
`
`For example, the ’829 patent discloses “systems and techniques [that] use
`
`actuation waveforms that substantially or entirely reduce ringing, without the need
`
`for physical damping mechanisms” such that “stage elements may be rapidly and
`
`
`
` Petitioner submits the declaration of Dr. Stanley Shanfield (Ex. 1002), an expert
`
` 2
`
`in the field of the ’829 patent. (Ex. 1002 at ¶¶3-15; Ex. 1003.)
`
`5
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`accurately moved among a range of target positions in [a] miniature electronic
`
`device.” (Ex. 1001 at 4:65—5:3; Ex. 1002 at ¶34; see also Ex. 1001 at 4:4-13.)
`
`Figure 3a illustrates an embodiment of a device 300 having: (1) a stage
`
`system 310 with resonance frequencies “OR”; (2) a positioner 312; (3) an actuator
`
`314; and (4) a controller 316. (Ex. 1001 at 5:6-9.)
`
`(Id. at FIG. 3A.) Figure 3b illustrates “the relative positioning of positioner 312 at
`
`different times, relative to position extremes Xmin and Xmax of stage system 310.
`
`
`
`(Id. at 5:9-12.)
`
`6
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`(Id. at FIG. 3B.)
`
`Figure 2 illustrates a method to actuate stage system 310. (Id. at 5:4-8.)
`
`
`
`(Id. at FIG. 2; Ex. 1002 at ¶35.)
`
`
`
`7
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`The ’829 patent discloses that at step 210, with positioner 312 at initial
`
`position X0, controller 316 receives target position X1. (Ex. 1001 at 5:20-22.) At
`
`step 220, controller 316 generates a stimulus waveform for stage system 310 based
`
`on target position X1 and resonance frequencies. (Id. at 5:22-26.) In one
`
`embodiment, the ’829 patent discloses generating a stimulus waveform such that
`
`“the amplitude of frequency components at the resonant frequency or frequencies
`
`of stage system 310 is substantially zero.”3 (Id. at 5:27-31; see also id. at 6:37-40.)
`
`The ’829 patent discloses that a waveform can be generated by input shaping or
`
`filtering the waveform. (Id. at 6:4-45, 7:4-10.) The ’829 patent discloses that
`
`input shaping can be achieved by selecting durations of pulse segments “to
`
`substantially eliminate frequency components at the resonant frequency of the
`
`stage system.” (Id. at 6:16-28, 6:33-46.) Filtering can be achieved, for example,
`
`by real-time finite impulse response (FIR) low pass filtering. (Id. at 7:4-10; Ex.
`
`1002 at ¶36.)
`
`
`
` The ’829 patent does not provide any objective guidance on the metes and bounds
`
` 3
`
`of “substantially zero.” Petitioner reserves the right to assert, in other proceedings,
`
`that the term as recited in the challenged claims is indefinite under 35 U.S.C. §
`
`112. (See infra Sections IX.A.2(d), IX.A.3.)
`
`8
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`At step 230, the stimulus waveform is applied to actuator 314, which in turn,
`
`at step 240, exerts a force on positioner 312 according to the applied waveform
`
`such that positioner 312 moves rapidly and accurately to target position X1 from
`
`initial position X0, “with little or no oscillation about the final position.” (Ex. 1001
`
`at 5:31-37, 6:21-24; Ex. 1002 at ¶37.)
`
`The ’829 patent discloses that when stage system 310 implements the
`
`relative movement of optical elements (e.g., lenses) in a miniature camera, the
`
`relative movement may be used to provide zoom, variable focus, and autofocus
`
`features. (Ex. 1001 at 8:66—9:13.) Figure 11 illustrates such an embodiment,
`
`wherein “miniature camera system 1100 include[es] a moveable optical element
`
`1115 . . . positioned on a stage 1117 configured to move optical element 1115 as
`
`desired” relative to “[f]ixed optical element 1125.” (Id. at 9:24-37.)
`
`9
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`
`
`(Id. at FIG. 11; Ex. 1002 at ¶38.)
`
`The ’829 patent admits that electronic dampening for stage positioning was
`
`known using physical damping mechanisms (e.g., viscous material such as oil),
`
`specifically to reduce or eliminate the “ringing” effect. (See, e.g., Ex. 1001 at
`
`4:64-65 (“existing systems . . . actuate stage elements using step function
`
`waveforms.”); see also id. at 4:4-63 (describing the “ringing” effect).) The ’829
`
`patent alleges that its “systems and techniques [] use actuation waveforms that
`
`substantially or entirely reduce ringing, without the need for physical damping
`
`10
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`mechanisms.” (Id. at 4:64—5:1.) Yet, the claims recite generic steps for
`
`electronic dampening for stage positioning. For example, claim 1 of the ’829
`
`patent recites:
`
`1. A method comprising:
`
`receiving information indicative of a target position of a
`
`portion of a stage system included in a miniature camera,
`
`the target position being different than a current position
`
`of the portion of the stage system and included in a range
`
`extending from a minimum position to a maximum
`
`position, and wherein the stage system has at least one
`
`mechanical resonance frequency;
`
`generating a waveform configured to move the portion to
`
`the target position, the waveform not including the at
`
`least one mechanical resonance frequency; and
`
`wherein the information indicative of the target position
`
`is indicative of a desired zoom or focus of the miniature
`
`camera.
`
`(Id. at 10:57—11:3.) Independent claim 11 recites similar features.
`
`As acknowledged by the ’829 patent and discussed in more detail below,
`
`these claimed features were well-known in the prior art before the alleged
`
`invention of the ’829 patent. (Ex. 1002 at ¶¶32-40; see also id. at ¶¶23-31
`
`(describing the technical background of the ’829 patent); infra Section IX.)
`
`11
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`B.
`
`The Prosecution History of the ’829 Patent
`
`U.S. Patent Application No. 11/485,812, which issued as the ’829 patent,
`
`was filed on July 12, 2006 as a continuation-in-part of U.S. Application No.
`
`11/361,608 filed on February 24, 2006, and further claims priority to U.S.
`
`Provisional Patent Application No. 60/713,971 filed on September 2, 2005.
`
`During examination, the Examiner rejected most of the claims based on prior art
`
`and identified some allowable subject matter. (Ex. 1004 at 52-57 (first Office
`
`Action).) Applicant elected to rewrite the allowable subject matter in independent
`
`form and did not attempt to distinguish the rejected claims from the prior art of
`
`record. (Id. at 52-57 (first Office Action), 65-74 (response to first Office Action),
`
`80-85 (second Office Action), 91-100 (response to second Office Action), 105-108
`
`(Allowance).)
`
`C. The Prior Art
`
`1. Hara
`
`Hara, assigned to Minolta Co., Ltd., discloses a method for driving a
`
`movable member 24 by way of an impact-type piezoelectric actuator 11 with a
`
`member sensor 27 for detecting a present position of the movable member 24 in a
`
`camera. (Ex. 1005 at Abstract, 1:10-17, 3:37-46, FIGs. 1-2; Ex. 1002 at ¶¶43-45.)
`
`A drivable object 30 to be driven is mounted on mounting portions 241 of the
`
`movable member 24. (Ex. 1005 at 4:39-57, FIGs. 1-2.) Hara discloses that “the
`
`12
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`drivable object 30 is a focusing lens, a zoom lens and a camera shake correction
`
`lens in the case that the apparatus is a camera.” (Id. at 4:58-65; see also id. at FIG.
`
`1.)
`
`(Id. at FIG. 1.)
`
`13
`
`
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`
`
`(Id. at FIG. 2.)
`
`Hara’s method for driving the movable member 24 includes at least the
`
`following: (i) calculating a control target position of the movable member 24, (ii)
`
`generating a drive voltage to drive the actuator 11 in a specified resonant state, (iii)
`
`controlling an operative state of the movable member 24 by adjusting one or more
`
`quantities specifying the drive voltage as a maneuverable quantity in accordance
`
`with a difference between the present position and the control target position so
`
`that the movable member 24 pursues the control target position, and (iv) executing
`
`a position servo control while the movable member 24 is being driven in a
`
`specified resonant state. (Id. at Abstract; Ex. 1002 at ¶44.)
`
`14
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`Hara discloses that in conventional driving devices, the actuator “can be
`
`constantly driven at a mechanical resonance frequency and is not intended to
`
`control the position of a vibrating body which corresponds to the movable
`
`member.” (Ex. 1005 at 1:46-54.) Hara further discloses that “[a]s can be seen
`
`from FIG. 5, if an attempt is made to drive the driving device 10 of this
`
`embodiment at the resonance frequency set as the basic driving frequency, the
`
`moving speed of the movable member 24 largely changes in relation to a small
`
`variation of the driving frequency.” (Id. at 10:22-26; see also id. at 8:14-25.)
`
`Therefore, in Hara, “the basic driving frequency is so set as to drive the driving
`
`device 10 at a frequency deviated from a complete resonance frequency in this
`
`embodiment of the present invention.” (Id. at 10:34-37; Ex. 1002 at ¶45.)
`
`2. Hagimori
`
`Hagimori, assigned to Minolta Co., Ltd. just like Hara, is directed to a
`
`“portable telephone 1 [] provided with a body 2 and a camera unit 3” along with an
`
`image sensing unit 4. (Ex. 1006 at Abstract, 1:10-21, 2:59—3:9, 3:25-36, FIGs. 1-
`
`2; Ex. 1002 at ¶¶46-47.)
`
`15
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`(Ex. 1006 at FIGS. 1 (left), 2 (right).)
`
`
`
`16
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`(Id. at FIG. 3.)
`
`Similar to Hara’s camera structure, Hagimori’s camera (part of which is
`
`shown in Figures 2-3 above) includes an image sensing element 40 for taking
`
`
`
`17
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`images, a piezoelectric element 41, a guide shaft 42 connected to an endface of the
`
`piezoelectric element 41, a slider 43 which is movable along the guide shaft 42,
`
`and a first lens unit 44 supported by the slider 42. (Ex. 1006 at 3:29-34, FIGs. 2-3;
`
`Ex. 1002 at ¶47.)
`
`3. Hosono
`
`Hosono, assigned to Minolta Co., Ltd. just like Hara and Hagimori, is
`
`directed to “a drive circuit for an actuator using an electromechanical transducer
`
`capable of precise positioning taking into consideration the resonance frequency of
`
`the drive system.” (Ex. 1007 at Abstract; see also id. at ¶¶[0023], [0048], [0053];
`
`Ex. 1002 at ¶¶48-51.) Hosono discloses that its “drive circuit [is] suited to the
`
`drive of an actuator that uses an electromechanical transducer utilized in an XY
`
`movement stage for precision measurement, an imaging lens of a camera, a
`
`projector lens of an overhead projector, a binocular lens or the like.” (Ex. 1007 at
`
`¶[0001].)
`
`18
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`
`
`(Id. at FIG. 8.)
`
`Similar to Hara’s operations for moving its movable member 24 from a
`
`current position to a target position, Hosono discloses that “[a] position signal of
`
`the slider 112 detected by the position sensor 126 is configured so as to be
`
`processed by the signal processing circuit 121 for input into the CPU 120, and a
`
`drive signal outputted by the voltage amplification circuit 125 is configured so as
`
`to be applied to the piezoelectric element 110. In addition, although illustration is
`
`omitted, the input port of the CPU 120 is configured so as to receive input of a
`
`signal indicating the target position of the slider 112, i.e., a moving body, from a
`
`keyboard or other input device not illustrated.” (Ex. 1007 at ¶[0019]; see also id.
`
`at ¶¶[0020]-[0022]; Ex. 1002 at ¶49.)
`
`19
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`In relation to the problems Hosono intends to solve, Hosono discloses that
`
`“[i]n a positioning control in an actuator using a piezoelectric element, the
`
`vibration inherent to the drive system, including the piezoelectric element, the
`
`drive axis and the slider, must be taken into account, but the transmission
`
`characteristics from the piezoelectric element behavior to the slider behavior have
`
`resonance points that generate mechanical resonance in a high frequency region
`
`due to compliance of the drive system, including the piezoelectric element, the
`
`drive shaft and the slider.” (Ex. 1007 at ¶[0023]; see also id. at ¶¶ [0024]-[0025];
`
`Ex. 1002 at ¶50.)
`
`Accordingly, Hosono discloses that a voltage signal IN for moving the slider
`
`14 is passed through a band blocking filter circuit “to effectively suppress the
`
`resonance of the actuator which changes according to the position of the slider 14.”
`
`(Ex. 1007 at ¶[0048]; see also id. at ¶¶[0032]-[0033], [0042], [0044]-[0045],
`
`[0048], [0053] (describing that “in the drive circuit of the invention, . . . it is
`
`possible to shift, from the crossover frequency range of the servo system, the
`
`resonance point of inherent vibration of the drive system that fluctuates according
`
`to the position of the moving member on the drive shaft, to curb the vibration of
`
`the servo system that carries out a fine movement control and to drive the actuator
`
`with a high positioning precision.”); Ex. 1002 at ¶51.)
`
`20
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`4.
`
`Tsutsui
`
`Tsutsui discloses a method for controlling a servo motor used to drive a
`
`machine tool or the like. (Ex. 1008 at 1:11-14.) Tsutsui discloses a servo control
`
`apparatus including a mechanical resonance suppressing filter 4 that is provided to
`
`remove resonance and vibrations caused by a characteristic frequency of a machine
`
`system or the like, similar to the objectives of suppressing the resonance frequency
`
`of the driving systems in Hara and Hosono. (Id. at 1:15-27, FIG. 14.) Tsutsui
`
`discloses that the mechanical resonance suppressing filter 4 is a low-pass filter.
`
`(Id. at 2:48-63; see also id. at 3:43-46; Ex. 1002 at ¶52.)
`
`VIII. CLAIM CONSTRUCTION
`
`In an inter partes review, claim terms are given their broadest reasonable
`
`interpretation (BRI) consistent with the specification. 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016). The Board
`
`need only construe the claims when necessary to resolve the underlying
`
`controversy. Toyota Motor Corp. v. Cellport Systems, Inc., IPR2015-00633, Paper
`
`11 at 16 (August 14, 2015). For purposes of this proceeding, the terms of the
`
`challenged claims should be, and have been, given their plain and ordinary
`
`21
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`meaning under the BRI standard.4 (Ex. 1002 at ¶42.)
`
`IX. DETAILED EXPLANATION OF GROUNDS
`
`A. Ground 1: Hara in view of Hagimori and Hosono Renders Claims
`1, 11, and 14 Obvious
`
`1.
`
`Claim 1
`
`a)
`
`“A method comprising:”
`
`To the extent the preamble is limiting, Hara discloses “[a] method.” (Ex.
`
`1002 at ¶¶54-59.) For example, Hara discloses a method for driving a movable
`
`member 24 by way of an impact-type piezoelectric actuator 11 with a member
`
`sensor 27 for detecting a present position of the movable member 24 in a camera.
`
`(Ex. 1005 at Abstract, 1:10-17, 3:37-46, FIGs. 1-2; Ex. 1002 at ¶55.) A drivable
`
`object 30 to be driven is mounted on mounting portions 241 of the movable
`
`member 24. (Ex. 1005 at 4:39-57, FIGs. 1-2.) Hara discloses that “the drivable
`
`object 30 is a focusing lens, a zoom lens and a camera shake correction lens in the
`
`case that the apparatus is a camera.” (Id. at 4:58-65; see also id. at FIG. 1.)
`
`
`
` Petitioner reserves all rights to raise other claim constructions and positions in
`
` 4
`
`other proceedings, including challenges under 35 U.S.C. § 112.
`
`22
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`(Id. at FIG. 1.)
`
`
`
`(Id. at FIG. 2; Ex. 1002 at ¶56.)
`
`23
`
`
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`Hara’s method for driving the movable member 24 includes at least the
`
`following: (i) calculating a control target position of the movable member 24, (ii)
`
`generating a drive voltage to drive the actuator 11 in a specified resonant state, (iii)
`
`controlling an operative state of the movable member 24 by adjusting one or more
`
`quantities specifying the drive voltage as a maneuverable quantity in accordance
`
`with a difference between the present position and the control target position so
`
`that the movable member 24 pursues the control target position, and (iv) executing
`
`a position servo control while the movable member 24 is being driven in a
`
`specified resonant state. (Ex. 1005 at Abstract; Ex. 1002 at ¶57.)
`
`Hara discloses that in conventional driving devices, the actuator “can be
`
`constantly driven at a mechanical resonance frequency and is not intended to
`
`control the position of a vibrating body which corresponds to the movable
`
`member.” (Ex. 1005 at 1:46-54.) Hara further discloses that “[a]s can be seen
`
`from FIG. 5, if an attempt is made to drive the driving device 10 of this
`
`embodiment at the resonance frequency set as the basic driving frequency, the
`
`moving speed of the movable member 24 largely changes in relation to a small
`
`variation of the driving frequency.” (Id. at 10:22-26; see also id. at 8:14-25.)
`
`Therefore, in Hara, “the basic driving frequency is so set as to drive the driving
`
`device 10 at a frequency deviated from a complete resonance frequency in this
`
`embodiment of the present invention.” (Id. at 10:34-37; Ex. 1002 at ¶58.)
`
`24
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`(See also citations and analysis below in Sections IX.A.1(b)-(e) for the
`
`remaining elements of this claim; Ex. 1002 at ¶59.)
`
`b)
`
`“receiving information indicative of a target position
`of a portion of a stage system included in a miniature
`camera, the target position being different than a
`current position of the portion of the stage system and
`included in a range extending from a minimum
`position to a maximum position, and”
`
`Hara in combination with Hagimori discloses or suggests this limitation.
`
`(Ex. 1002 at ¶¶60-72.) For example, Hara discloses receiving an external signal
`
`(“information”) indicative of a target position (“target position”) of the movable
`
`member 24 (“a portion of a stage system”) included in the camera, the target
`
`position being different from a present position (“current position”) of the portion
`
`of the movable member 24 (“portion of the stage system”) and included in a
`
`movable range of the movable member 24 (“a range extending from a minimum
`
`position to a maximum position”). (Id. at ¶60.)
`
`In particular, Hara discloses that “[t]he control circuit 26 judges the present
`
`position of the movable member 24 from a signal inputted from the member
`
`sensor 27 when a target speed and a target position are given from an external
`
`signal.” (Ex. 1005 at 13:25-28 (emphasis added), FIGs. 1-2.) Hara further
`
`discloses that “the control circuit 26 compares the present position and the target
`
`position to thereby judge whether or not the movable member 24 is to be moved in
`
`the forward direction or in the reverse direction.” (Id. at 13:28-36 (further
`
`25
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`describing determining, based on the comparison, that the movable member is to
`
`be moved in the forward or reverse direction, and thus disclosing that the target
`
`position is different from the present position of the movable member 24).)
`
`(Id. at FIG. 1.)
`
`
`
`26
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,697,829
`
`
`
`(Id. at FIG. 2; Ex. 1002 at ¶61.)
`
`Hara further discloses that “the member sensor 27 is arranged within a
`
`movable range of the movable member 24 . . . . The base end sensor 28 and the
`
`leading-end sensor 29 are formed by sensors such as photointerrupters, and
`
`arranged at such positions as to prevent the movable member 24 from moving
`
`beyond the movable range.” (Ex. 1005 at 6:9-19 (emphasis added), FIG. 1.) A
`
`person of ordinary skill in the art would have readily understood based on this
`
`disclosure that the e