UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
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`RAYMARINE, INC.
`
`Petitioner
`
`
`
`v.
`
`
`
`NAVICO HOLDING AS
`
`Patent Owner
`
`____________
`
`
`
`Case IPR2013-00497
`
`Patent 8,305,840
`
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, Administrative Patent Judge.
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`LEGAL02/34505962v1
`
`
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`RAYMARINE, INC.
`
`Petitioner
`
`
`
`v.
`
`
`
`NAVICO HOLDING AS
`
`Patent Owner
`
`____________
`
`
`
`Case IPR2013-00497
`
`Patent 8,305,840
`
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, Administrative Patent Judge.
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`LEGAL02/34505962v1
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`II.
`
`INTRODUCTION......................................................................................... 1
`
`RESPONSE TO PETITIONER’S SUMMARY OF REASONS FOR
`
`REQUESTED RELIEF .............................................................................................. 1
`
`(A) Unsupported Allegations ............................................................................... 2
`
`(B) The Teachings of DeRoos ............................................................................. 3
`
`(C) Consideration of Prior Art by the Examiner ................................................. 7
`
`III.
`
`RESPONSE TO PETITIONER’S OVERVIEW OF THE ‘840 PATENT
`
`AND THE PROSECUTION HISTORY ................................................................... 8
`
`IV.
`
`CLAIM CONSTRUCTION ........................................................................10
`
`(A) “A Single Linear Downscan Transducer Element” ....................................11
`
`i.
`
`ii.
`
`“Single Linear Downscan Transducer Element” ..................................12
`
`“Single Linear Downscan Transducer Element” ...................................13
`
`iii.
`
`“Single Linear Downscan Transducer Element” ...................................14
`
`(B) “A Fan-Shaped Sonar Beam” .....................................................................16
`
`(C) “Sequentially Insonify Different Fan-Shaped Regions of the Underwater
`
`Environment” ..............................................................................................17
`
`(D) “Composite Of Images Of The Fan-Shaped Regions” ...............................18
`
`(E) “Simultaneously Provide Different Images Representing Different
`
`Information From The Processed Sonar Return Signals” ...........................19
`
`LEGAL02/34505962v1
`
`i
`
`
`
`(F) “Perform Additional Processing To Correlate Sonar Data To A GPS
`
`Position” ......................................................................................................20
`
`V.
`
`ARGUMENT ..............................................................................................22
`
`(A) U.S. Patent No. 5,791,552 to Boucher et al. Is Not Prior Art .....................23
`
`(B) Petitioner’s Challenge #2 and #3 Redundant Over Challenge #1 ..............25
`
`(C) Petitioner’s Challenge #5 and #6 are Redundant Over Challenge #4 ........27
`
`(D) Petitioner’s Challenges to Claims 28 and 63 Do Not Have a Reasonable
`
`Likelihood of Success .................................................................................30
`
`i. Challenge #4 to Claim 28 Does Not Have a Reasonable Likelihood of
`
`Success ...................................................................................................33
`
`a) Hydrography and Adams Are Not Cited As Teaching That At Least
`
`One Display Of The Plurality Of Displays Is Enabled To
`
`Simultaneously Provide Different Images Representing Different
`
`Information From The Processed Sonar Return Signals .....................34
`
`b) Betts Fails To Teach That At Least One Display Of The Plurality Of
`
`Displays Is Enabled To Simultaneously Provide Different Images
`
`Representing Different Information From The Processed Sonar Return
`
`Signals .................................................................................................34
`
`ii. Challenge #4 to Claim 63 Does Not Have a Reasonable Likelihood of
`
`Success ...................................................................................................36
`
`a) Hydrography and Adams Are Not Cited As Teaching That The Sonar
`
`Signal Processor Is Further Configured To Perform Additional
`
`Processing To Correlate Sonar Data To A GPS Position ...................37
`
`LEGAL02/34505962v1
`
`ii
`
`
`
`b) Betts Fails To Teach That The Sonar Signal Processor Is Further
`
`Configured To Perform Additional Processing To Correlate Sonar
`
`Data To A GPS Position ......................................................................37
`
`iii. Challenge #5 to Claim 28 Does Not Have a Reasonable Likelihood of
`
`Success ...................................................................................................38
`
`a) Hydrography, Boucher ‘552, and Adams Are Not Cited As Teaching
`
`That At Least One Display Of The Plurality Of Displays Is Enabled
`
`To Simultaneously Provide Different Images Representing Different
`
`Information From The Processed Sonar Return Signals .....................39
`
`b) Betts Fails To Teach That At Least One Display Of The Plurality Of
`
`Displays Is Enabled To Simultaneously Provide Different Images
`
`Representing Different Information From The Processed Sonar Return
`
`Signals .................................................................................................40
`
`iv. Challenge #5 to Claim 63 Does Not Have a Reasonable Likelihood of
`
`Success ...................................................................................................42
`
`a) Hydrography, Boucher ‘552, and Adams Are Not Cited As Teaching
`
`That The Sonar Signal Processor Is Further Configured To Perform
`
`Additional Processing To Correlate Sonar Data To A GPS Position .42
`
`b) Betts Fails To Teach That The Sonar Signal Processor Is Further
`
`Configured To Perform Additional Processing To Correlate Sonar
`
`Data To A GPS Position ......................................................................43
`
`v. Challenge #6 to Claim 28 Does Not Have a Reasonable Likelihood of
`
`Success ...................................................................................................44
`
`a) Hydrography, Boucher ‘798, DeRoos, and Adams Are Not Cited As
`
`Teaching That At Least One Display Of The Plurality Of Displays Is
`
`LEGAL02/34505962v1
`
`iii
`
`
`
`Enabled To Simultaneously Provide Different Images Representing
`
`Different Information From The Processed Sonar Return Signals .....45
`
`b) Betts Fails To Teach That At Least One Display Of The Plurality Of
`
`Displays Is Enabled To Simultaneously Provide Different Images
`
`Representing Different Information From The Processed Sonar Return
`
`Signals .................................................................................................45
`
`vi. Challenge #6 to Claim 63 Does Not Have a Reasonable Likelihood of
`
`Success ...................................................................................................47
`
`a) Hydrography, Boucher ‘798, DeRoos, and Adams Are Not Cited As
`
`Teaching That The Sonar Signal Processor Is Further Configured To
`
`Perform Additional Processing To Correlate Sonar Data To A GPS
`
`Position ................................................................................................48
`
`b) Betts Fails To Teach That The Sonar Signal Processor Is Further
`
`Configured To Perform Additional Processing To Correlate Sonar
`
`Data To A GPS Position ......................................................................48
`
`VI.
`
`PATENT OWNER LEAVES PETITIONER TO ITS BURDEN ..............49
`
`VII.
`
`CONCLUSION ...........................................................................................50
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`
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`LEGAL02/34505962v1
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`iv
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`
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`Cases
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`TABLE OF AUTHORITIES
`
`Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345 (1961) ........ 8
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) 10, 16,
`
`17, 18
`
`Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 521 (1972) ....................... 9
`
`Ex parte Clapp, 227 U.S.P.Q. 972, 973 (BPAI 1985) .............................................32
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Inc. Co., CBM2012-00003 (Paper
`
`No. 7), at 3 (PTAB, Oct. 25, 2012) ................................................................ 26, 28
`
`Sony Corporation v. Yissum Research Development Company of the Hebrew
`
`University of Jerusalem, IPR2013-00326 (Paper No. 14), at 6-8 (PTAB, Sep. 24,
`
`2013) ......................................................................................................................31
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) .......................... 9
`
`W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) ........... 9
`
`Statutes
`
`35 U.S.C. §102(e) ....................................................................................................24
`
`35 U.S.C. §103 ................................................................ 9, 34, 38, 40, 43, 46, 49, 51
`
`Other Authorities
`
`Federal Register Vol. 77, No. 157, pg. 48764 (August 14, 2012) ...........................25
`
`Leahy-Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284,329 (2011) ......10
`
`LEGAL02/34505962v1
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`v
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`
`
`MPEP §2141.02 ......................................................................................................... 9
`
`MPEP §715.07 .........................................................................................................26
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) ..10
`
`Rules
`
`37 C.F.R. §1.131 ......................................................................................................24
`
`37 C.F.R. §1.56 .......................................................................................................... 7
`
`37 C.F.R. §42.100(b) ...............................................................................................10
`
`37 C.F.R. §42.107 ................................................................................................1, 25
`
`37 C.F.R. §42.108(c) ......................................................................... 1, 23, 32, 51, 52
`
`
`
`
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`LEGAL02/34505962v1
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`vi
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`
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`LIST OF EXHIBITS
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`NAV – 2001
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`DECLARATION BY ALAN PROCTOR TO ESTABLISH
`
`CONCEPTION AND REDUCTION TO PRACTICE PRIOR
`
`TO AUGUST 28, 2008
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`
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`LEGAL02/34505962v1
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`vii
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`
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`Petitioner Raymarine, Inc. filed a third Petition for Inter Partes Review (“the
`
`Petition”) of U.S. Patent No. 8,305,840 (“the ‘840 patent”) on August 6, 2013 for
`
`Claims 4, 6, 8-9, 12-15, 22, 27-28, 34-37, 43, 54-55, 63, and 65-68. Pursuant to 37
`
`C.F.R. §42.107(a), Patent Owner, Navico Holding AS, submits the following
`
`Preliminary Response, setting forth reasons why an inter partes review should not
`
`be instituted.
`
`
`
`I.
`
`INTRODUCTION
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`As presented in greater detail herein, Petitioner has failed to meet its burden
`
`under 37 C.F.R. §42.108(c) of establishing a reasonable likelihood of success that
`
`any of Claims 4, 6, 8-9, 12-15, 22, 27-28, 34-37, 43, 54-55, 63, and 65-68 would
`
`be unpatentable based on its challenges. Accordingly, Patent Owner requests that
`
`the Board deny institution of an inter partes review.
`
`
`
`II.
`
`RESPONSE TO PETITIONER’S SUMMARY OF REASONS FOR
`
`REQUESTED RELIEF
`
`The Summary of Reasons section of the Petition is merely remarks that are
`
`unsupported by any evidence or reasoning, and mischaracterizes the references in
`
`the Petition.
`
`
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`
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`LEGAL02/34505962v1
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`1
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`
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`(A) Unsupported Allegations
`
`Petitioner mischaracterizes the disclosure of the ‘840 patent and alleges that
`
`“[a]ll of these features were known in the art prior to 2009, when the application
`
`that issued as the ‘840 patent was filed,” and that “[s]ingle transducer elements in
`
`all shapes and sizes and mounted to watercraft in a wide variety of orientations (of
`
`course including the default ‘vertically down’ orientation) were known to persons
`
`of ordinary skill in the art before 2009.” See Page 3 of the Petition. These
`
`allegations should be given no weight because Petitioner has failed to cite any prior
`
`art teachings in support. Contrary to Petitioner’s allegations, embodiments of the
`
`claimed invention, including but not limited to a sonar system with a linear
`
`transducer element mounted to a watercraft to project sonar pulses in a direction
`
`substantially perpendicular to surface of the water, were not known to persons of
`
`ordinary skill in the art before the invention date of the ‘840 patent, as confirmed
`
`by the prior art evaluated by the Examiner. The insinuation by Petitioner that it was
`
`known to orient all known types of transducers in any and all possible directions is
`
`merely wishful thinking. Not only is it unsupported, it is untrue, and should be
`
`given no weight, as confirmed by the teachings of DeRoos.
`
`
`
`
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`
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`LEGAL02/34505962v1
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`2
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`
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`(B) The Teachings of DeRoos
`
`Petitioner relies heavily on DeRoos. DeRoos is a survey of many different
`
`and disparate types of underwater sensors, noting that each has a different structure
`
`and configuration, and operates in different ways, to collect different types of data
`
`and achieve different results. None of its teachings, however, discloses the
`
`invention claimed in the ‘840 patent. Indeed, DeRoos suggests choosing the
`
`proper sensor and system based on its unique characteristics, not to combine
`
`together all the features and characteristics of each. DeRoos distinguishes between
`
`active and passive sonar systems, different materials for transducers, different
`
`transducer shapes, different sonar beam patterns, different echo patterns, and
`
`different sonar pulse frequencies. The unique characteristics of each system are
`
`tailored for different sonar objectives, such as side scan, obstacle avoidance,
`
`bathymetric surveys, location and characterization of objects such as the sea
`
`bottom, and damage assessment of a boat hull. Different techniques are used to
`
`create different acoustic images, such as broad beam acoustic sources, filled array
`
`sources, and synthetic aperture sources, and they may be energized with
`
`simultaneous or sequentially scanned pulses, with some sensors dedicated to
`
`emitting a pulse and others dedicated to receiving an echo, and still others tasked
`
`with doing both. Different methods are used for acoustic imaging, including
`
`electronic beam forming, focused acoustic imaging, and holographic acoustic
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`LEGAL02/34505962v1
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`3
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`
`
`imaging. Different transducer shapes and sizes are used to tailor acoustic beam
`
`shapes, and can include point sources, line sources, rectangular sources, square
`
`sources, parallelogram-shaped sources, circular sources, and multiple combinations
`
`thereof arrayed in different configurations. Different sonar beam angles collect
`
`data from different areas, and, depending upon the angle of incidence of the beam,
`
`different types of data, including the absence of data. Different locations for the
`
`transducer are used to influence the data collected, and the transducer (or an array
`
`of transducers) may be mounted to a tow fish, a stanchion fixed to the sea floor, a
`
`rotatable post, an autonomously movable underwater robot, the forward portion of
`
`a boat hull, the side of a boat hull, the stern of a boat hull, or booms extending
`
`from one or more parts of the watercraft, either above or below the water surface.
`
`Recognizing the nearly unlimited options available for sonar systems, DeRoos
`
`focuses on only five sonar systems that are very different both structurally and
`
`functionally: side scan sonar, forward-look sonar, bathymetric sonar, profiling
`
`sonar and 3-D mapping sonar. Importantly, DeRoos fails to disclose a linear
`
`transducer element mounted to a watercraft to project sonar pulses perpendicular to
`
`the surface of the water.
`
`The first part of the DeRoos quote provided by Petitioner concerns Section
`
`3.3.1.3.2, entitled “Forward-Look Sonar,” which uses scanning or multi-beam
`
`sonar “to image the area in front of the vehicle.” See page 129 of DeRoos. DeRoos
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`LEGAL02/34505962v1
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`4
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`
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`describes possible types of forward look sonars as either “single beam” that are
`
`“mechanically scanned” to cover the field of vision (FOV), or “multi-beam sonars,
`
`called scan within a pulse (SWAP) sonars.” See Page 124 of DeRoos. Examples of
`
`Forward-Look Sonar are listed in Table 3-15. Notably, all of the sonar systems in
`
`Table 3-15 either require more than one beam (see Column 5 “Number of Beams”)
`
`or are mechanically scanned (MS) (see Column 2 “Type”), distinguishing them
`
`from the single linear downscan transducer element which produces a fan shaped
`
`beam as claimed in the ‘840 patent.
`
`The second part of the DeRoos quote provided by Petitioner is from a
`
`completely different section entitled “Bathymeric Sonar, Section 3.3.1.3.3.” This
`
`section describes a multi-element “swath” sonar system having “a fan of
`
`contiguous beams within the transmitted beam.” See page 129 of DeRoos. The
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`following is the full excerpt of DeRoos relating to bathymetric sonar (the italicized
`
`section was omitted in Petitioner’s quote):
`
`Bathymeric, or down-looking sonars, are used for bottom contour
`
`mapping, depth sensing, fish finding, altitude sensing, and other
`
`similar tasks. The bathymetric sonars are very similar to forward-look
`
`sonars except that they are aimed downward. The transmitted beam is
`
`narrow along the travel path of the sonar and wide in the plane normal
`
`to the direction of travel. A fan of contiguous beams within the
`
`LEGAL02/34505962v1
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`5
`
`
`
`transmitted beam are used to receive detailed bottom mapping
`
`information over a wide swath centered beneath the sonar. [Emphasis
`
`added].
`
`From the above full quote from DeRoos, it is clear that the bathymetric sonar, like
`
`the down-looking sonar, is also a multi-element sonar, distinguishing it from the
`
`claimed single linear downscan transducer element which produces a fan-shaped
`
`beam. See e.g., the Amendment After Final filed by the Applicant on February 21,
`
`2012 (RAY-1002).
`
`In quoting and relying upon DeRoos, Petitioner took inappropriate liberties
`
`to the point that its purported quotation chops out crucial statements, and
`
`conspicuously omits entire sentences, paragraphs and section headings in an
`
`attempt to rewrite the DeRoos reference. Petitioner’s contrivance converts DeRoos
`
`from a disciplined, chapter by chapter description of the multiple differences
`
`among diverse sonar systems into a wishing well of interchangeable options. This
`
`approach ignores the structural, operational and technical incompatibility that such
`
`a haphazard amalgamation would cause. DeRoos does not connect these disparate
`
`technologies, or suggest or teach combining them; instead, it separates them in
`
`structure and function, with the separate sections teaching away from the Patent
`
`Owner’s invention. Petitioner proposes merely picking and choosing blindly to
`
`combine these different sonar teachings, but that is something one of skill in the art
`
`LEGAL02/34505962v1
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`6
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`
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`would never do. Indeed, unable to find what it was looking for, and ignoring the
`
`inconvenient teachings requiring the use of scanning or multi-element transducers,
`
`Petitioner’s sleight-of-hand confirms that the DeRoos reference fails to disclose the
`
`claimed invention of the ‘840 patent.
`
`
`
`(C) Consideration of Prior Art by the Examiner
`
`There is no relevance or merit to Petitioner’s complaint that the Examiner
`
`was “buried in a flood” of references during prosecution of the ‘840 patent. Every
`
`reference cited by Patent Owner during prosecution was cited to fully comply with
`
`the applicant’s duty of candor under 37 C.F.R. § 1.56, which includes no
`
`requirement of “citations or indications of relevance.” Applicant fully compiled
`
`with its duty and took extra steps to ensure that the Examiner had ample time to
`
`fully consider the cited references. To begin, Applicant’s representatives held an
`
`interview with the Examiner to discuss the prior art submitted. See Applicant-
`
`Initiated Interview Summary of November 16, 2011 (RAY 1002, p. 401)
`
`(“Applicant’s representatives discussed additional prior art from recently filed
`
`IDS.”). The Petitioner references the Examiner’s statement in the Final Office
`
`Action dated December 20, 2011, that “due to the excessive number of references,
`
`they have only been given a cursory review.” Following that statement, Applicant
`
`requested that the “references be given full review and consideration.” See
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`LEGAL02/34505962v1
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`7
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`
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`Response After Final of February 21, 2012 (RAY 1002, p. 295). Still further, the
`
`follow-on Request for Continued Examination filed March 5, 2012 (RAY-1002,
`
`pgs. 268-269) gave the Examiner ample time to fully reconsider each cited
`
`reference. The file history is clear: the Examiner duly considered each reference
`
`during prosecution, with all information disclosure statements being signed by the
`
`Examiner confirming that each reference was properly considered.
`
`
`
`III. RESPONSE TO PETITIONER’S OVERVIEW OF THE ‘840 PATENT
`
`AND THE PROSECUTION HISTORY
`
`Petitioner mischaracterizes remarks made in Applicant’s Amendment of
`
`Nov. 30, 2011, to create the illusion that the “only alleged point of novelty was
`
`pointing a rectangular transducer downward from a watercraft.” See Pages 7-8 of
`
`the Petition. Petitioner is improperly suggesting that this is the “gist or heart” of the
`
`claimed invention, ignoring both the claim language and the fact that the Supreme
`
`Court and the Court of Appeals for the Federal Circuit long ago established that
`
`“there is no legally recognizable or protected essential element, gist or heart of the
`
`invention in a combination patent.” See Aro Mfg. Co. v. Convertible Top
`
`Replacement Co., 365 U.S. 336, 345 (1961) ; see also MPEP §2141.02(II) (stating
`
`that “[d]istilling an invention down to the ‘gist’ or ‘thrust’ of an invention
`
`disregards the requirement of analyzing the subject matter ‘as a whole’”) (quoting
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`LEGAL02/34505962v1
`
`8
`
`
`
`W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)).
`
`Patents are granted not to individual points of novelty, but to claimed inventions,
`
`which are combinations of features interrelated in a particular way. It is well
`
`established that the claims, taken in their entirety, define the invention. See, e.g.,
`
`MPEP §2141.02(I) (stating that “[i]n determining the differences between the prior
`
`art and the claims, the question under 35 U.S.C. 103 is not whether the differences
`
`themselves would have been obvious, but whether the claimed invention as a
`
`whole would have been obvious”) (citing, among others, Stratoflex, Inc. v.
`
`Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); see also Deepsouth Packing Co.
`
`v. Laitram Corp., 406 U.S. 518, 521 (1972) (stating that “[t]he patents were
`
`warranted not by the novelty of their elements but by the novelty of the
`
`combination they represented”). Thus, each and every element of each claim of the
`
`‘840 patent must be given its own patentable weight.
`
`Finally, it is unclear precisely what point Petitioner is trying to make when it
`
`states that Claim 73 “does not expressly recite the ‘single’ and ‘downscan’
`
`limitations, which is inconsistent with the prosecution history and the admitted
`
`prior art.” See Page 9 of the Petition. Claim 73 was duly considered and allowed
`
`over all prior art of record. Moreover, Claim 73 forms no part of any of the
`
`challenges presented in the Petition and is therefore irrelevant in this proceeding.
`
`
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`LEGAL02/34505962v1
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`9
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`
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`IV. CLAIM CONSTRUCTION
`
`Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act, Pub. L. 112-29, 125 Stat. 284,329 (2011) (“AIA”), when
`
`considering whether to institute an inter partes review; the Board has indicated that
`
`it will construe claims by applying the broadest reasonable interpretation in light of
`
`the specification. 37 C.F.R. §42.100(b); see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). There is a “heavy
`
`presumption” that a claim term carries its ordinary and customary meaning. CCS
`
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However,
`
`a “claim term will not receive its ordinary meaning if the patentee acted as his own
`
`lexicographer and clearly set forth a definition of the disputed claim term in either
`
`the specification or prosecution history.” Id.
`
`In the Petition, Petitioner attempts to construe the following four claim
`
`terms:
`
`(A) “a single linear downscan transducer”;
`
`(B) “fan-shaped sonar beam”;
`
`(C) “sequentially insonify different fan-shaped regions of the
`
`underwater environment”; and
`
`(D) “composite images of the fan-shaped regions.”
`
`LEGAL02/34505962v1
`
`10
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`
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`Patent Owner presents the following remarks regarding the construction of claim
`
`terms (A), (B), (C), and (D) above. Additionally, Patent Owner also presents a
`
`claim construction for the following claim terms not otherwise construed by
`
`Petitioner:
`
`(E) “simultaneously provide different images representing different
`
`information from the processed sonar return signals” (Claim 28); and
`
`(F) “perform additional processing to correlate sonar data to a GPS
`
`position” (Claim 63).
`
`
`
`(A)
`
`“A Single Linear Downscan Transducer Element”
`
`
`
`In presenting its proposed interpretation of the claim term “a single linear
`
`downscan transducer,” Petitioner fails to accept, or even assess, the plain and
`
`ordinary meaning of the phrase. Instead, it picks and chooses, pointing to some
`
`portions of the specification and prosecution history of the ‘840 patent but ignoring
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`others. In particular, Petitioner points to the Amendment After Final filed by the
`
`Applicant on February 21, 2012 and requests that the claim term be construed as:
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`“a downwardly directed transducer comprising either a single monolithic
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`rectangular shaped transducer element or a plurality of transducer elements
`
`arranged end-to-end and electrically connected to act as a single rectangular
`
`element.”
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`Patent Owner agrees that the specification and prosecution history are
`
`important for construing a claim term, and here the intrinsic evidence confirms that
`
`the plain and ordinary meaning is clear to one skilled in the art. Petitioner’s
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`interpretation, however, is not accurate. The claim term “a single linear downscan
`
`transducer element” contains several well understood parts, and each is addressed
`
`below (e.g., the italicized term in each of the following sections).
`
`
`
`i.
`
`“Single Linear Downscan Transducer Element”
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`The specification provides an example of a “linear transducer element” as
`
`being “substantially rectangular in shape.” The “rectangular arrangement provides
`
`for an approximation of a linear array having beamwidth characteristics that are a
`
`function of the length and width of the rectangular face of the transducer elements
`
`and the frequency of operation.” See Col. 9, line 36 – Col. 10, line 10 of the ‘840
`
`patent. The term “linear transducer element” is further described as part of the
`
`express language of independent Claims 1 and 23. Claim 1 recites that the “linear
`
`downscan transducer element” must have a “substantially rectangular shape
`
`configured to produce a fan-shaped beam having a relatively narrow beamwidth in
`
`a direction parallel to a longitudinal length of the linear downscan transducer
`
`element and a relatively wide beamwidth in a direction perpendicular to the
`
`longitudinal length of the transducer element.” This accords with description of a
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`linear transducer element throughout the specification, such as one example
`
`embodiment described in Col. 9, line 51 – Col. 10, line 10 of the ‘840 patent.
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`Further evidence of a linear transducer element that is substantially rectangular in
`
`shape and configured to produce a fan-shaped beam can be seen in FIGs. 6, 7A,
`
`and 7B of the ‘840 patent (for example, see element 60 and the illustrated beam).
`
`
`
`ii.
`
`“Single Linear Downscan Transducer Element”
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`The specification provides an example of a “downscan” element as being
`
`“positioned to scan substantially below the vessel.” See Col. 11, lines 1 – 2 of the
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`‘840 patent. The term “downscan” is further described as part of the express
`
`language of independent Claims 1 and 23. Claim 1 recites that the “linear
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`downscan transducer element is positioned within the housing to project fan-
`
`shaped sonar beams in a direction substantially perpendicular to a plane
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`corresponding to the surface of the body of water.” This accords with the
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`descriptions and illustrations of a linear downscan transducer element throughout
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`the specification, such as the example embodiment described in Col. 11, lines 25 –
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`48 of the ‘840 patent. Further evidence of a linear downscan transducer element
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`can be seen in FIGs. 6, 7A, 7B, 8B, 17A, and 17B of the ‘840 patent.
`
`
`
`
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`iii.
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`“Single Linear Downscan Transducer Element”
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`The prosecution history of the ‘840 patent provides guidance to the meaning
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`of the term “single” in reference to a linear transducer element. In the Amendment
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`After Final filed by the Applicant on February 21, 2012 (RAY-1002), the
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`Applicant stated that the claims had been amended to “recite that there is a single
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`such linear downscan transducer element (to distinguish over an array-type
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`transducer having multiple elements arranged in some type of array for use in
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`phased-array beam steering).” (Emphasis added.) The Applicant continued, stating:
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`It will be understood, of course, that the recitation of a “single linear
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`downscan transducer element” does not require the single element to
`
`be a monolithic structure formed of a single crystal of material. It is
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`well known in the transducer field that a plurality of such crystals can
`
`be arranged (e.g., end-to-end) and can be electrically connected to
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`circuitry such that the plurality of crystals act together as if they were
`
`a single crystal or element. Claims 57 and 76 encompass any “single
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`downscan transducer element” (whether monolithic or not) as distinct
`
`from a multi-element phased array-type transducer.
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`(RAY-1002, p. 297.) (Claims 57 and 76 of the patent application correspond with
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`Claims 1 and 23 of the ‘840 patent.) Based on the above, the meaning of a “single
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`linear downscan transducer element” includes “a monolithic structure formed of a
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`single crystal of material” or “a plurality of such crystals . . . arranged (e.g., end-to-
`
`end) and . . . electrically connected to circuitry such that the plurality of crystals act
`
`together as if they were a single crystal or element.” (Emphasis added.) This term
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`does not cover “multi-element phased array-type transducer[s].” (RAY-1002,
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`p. 297.) Indeed, in the Amendment After Final, the Applicant used the term “single
`
`linear downscan transducer element” to distinguish the claimed invention from the
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`“multi-element array” disclosed in U.S. Patent No. 5,805,528 to Hamada, which
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`had been cited by the Examiner. (RAY-1002, p. 299.) The specification describes a
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`“single linear transducer” at Col. 11, lines 30-31, and Col. 17, lines 5, further
`
`referring to FIGs. 8B and 17A-17C. This use of the term “single” in the
`
`specification is consistent with the prosecution history.
`
`Thus, using the broadest reasonable interpretation in light of the claims,
`
`specification, and prosecution history, the claim term “single linear downscan
`
`transducer element” means: a substantially rectangular element, or a plurality of
`
`connected substantially rectangular elements operating as a single substantially
`
`rectangular element, pointed downwardly. This interpretation excludes a multi-
`
`element array.
`
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`(B) “A Fan-Shaped Sonar Beam”
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`
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`Petitioner attempts to interpret the claim term “a fan-shaped sonar beam” to
`
`be “a sonar beam with a narrow beamwidth in one direction and a wide beamwidth
`
`in the other perpendicular direction.” The claim term “a fan-shaped sonar beam”
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`carries an ordinary and customary meaning and, thus, does not need additional
`
`interpretation. See, e.g., CCS Fitness, Inc., 288 F.3d at 1366. Petitioner
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`conveniently ignores the express language of the claims that de)scribe the claim
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`term “fan-shaped beam.” Inexplicably, Petitioner’s interpretation conspicuously
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`lacks the modifier “relatively” from the description of the narrow beamwidth and
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`wide beamwidth. The claim term “a fan-shaped sonar beam” is clearly described in
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`independent Claim 1 as having “a rel
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