Trials@uspto.gov
`571-272-7822
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` Paper 7
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` Entered: February 5, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA
`CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01653
`Patent RE43,106 E
`____________
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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`
`
`
`
` Paper 7
`
`
`
` Entered: February 5, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA
`CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01653
`Patent RE43,106 E
`____________
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-01653
`Patent RE43,106 E
`
`
`I.
`INTRODUCTION
`LG Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively,
`“Petitioner”) filed a Petition requesting an inter partes review of claims 7–
`19 of U.S. Patent No. RE43,106 E (Ex. 1001, “the ’106 patent”). Paper 1
`(“Pet.”). Toshiba Samsung Storage Technology Korea Corporation (“Patent
`Owner”) did not file a Preliminary Response.
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” After considering the Petition and
`associated evidence, we conclude that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing unpatentability of all
`the challenged claims. Thus, we authorize institution of an inter partes
`review of claims 7–19 of the ’106 patent.
`A. Related Proceedings
`Petitioner indicates that the ’106 patent is involved in the following
`
`district court cases: (1) LG Electronics, Inc. v Toshiba Samsung Storage
`Tech. Korea Corp., Case No. 1:12-cv-01063 (LPS) (D. Del.) and (2)
`Toshiba Samsung Storage Tech. Korea Corp. v. LG Electronics, Inc., Case
`No. 1:15-cv-0691 (LPS) (D. Del.). Pet. 2; Paper 6, 1.
`B. The ʼ106 Patent (Ex. 1001)
`The ’106 patent describes an optical pickup apparatus that can
`
`compatibly record information on and read information from a digital video
`disk (DVD) and a recordable compact disk (CD-R) using a holographic lens.
`Ex. 1001, 1:28–34. The optical pickup apparatus is set forth in Figure 3 of
`the ’106 patent as follows:
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`IPR2015-01653
`Patent RE43,106 E
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`Figure 3 shows an optical system of an optical pickup according to
`
`one embodiment. Id. at 4:33–34. The optical pickup apparatus includes
`laser light sources 31 and 39 for emitting light beams having different
`wavelengths. Id. at 4:34–47. Laser light source 31 emits a wavelength of
`650nm, suitable for a DVD. Id. at 4:55–59. Laser light source 39 emits a
`light beam having a 780 nm wavelength suitable for a CD-R. Id. at 4:62–67.
`Holographic beam splitters 32 and 40 alter the optical path of the light
`beams reflected information recording surfaces, beam splitter 33 completely
`transmits or reflects the incident light beam according to wavelength, and
`collimating lens 34 collimates the incident light beam to be in a parallel
`form. Id. at 4:34–47. Holographic lens 35 diffracts the incident light beam
`according to its wavelength and objective lens 36 focuses the light beams on
`the respective information recording surfaces of optical disks 37 and 41. Id.
`Holographic lens 35 selectively diffracts the incident light beam in
`order to prevent the generation of spherical aberration with regard to the
`light beam’s focus on the information recording surfaces of optical disks 37
`and 41. Id. at 5:6–10. The relationship between holographic lens 35,
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`IPR2015-01653
`Patent RE43,106 E
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`objective lens 36, and optical disks 37 and 41 is illustrated in Figure 4A of
`the ’106 patent as follows:
`
`
`Figure 4A describes that objective lens 36 is partitioned in to regions
`A and B. Id. at 5:13–14. Region A is closer to the optical axis of objective
`lens 36 and has little effect on spherical aberration, whereas region B is
`farther from the optical axis of objective lens 36 and has a large effect on
`spherical aberration. Id. at 5:14–18. Objective lens 36 is most appropriate
`for an optical disk having a thickness such as a DVD. Id. at 5:18–20. The
`light beam incident to region A passes through objective lens 36 without any
`diffraction by holographic ring lens 35 and is focused directly on the disk.
`Id. at 5:33–36. The light beam incident to region F is wavelength-
`selectively diffracted by holographic ring lens 35 and then proceeds to
`objective lens 36. Id. at 5:36–39.
`C. Illustrative Claim
`Petitioner challenges claims 7–19 of the ’106 patent. Pet. 4–60.
`Claim 7 is an independent claim, and claims 8–19 directly or indirectly
`depend from independent claim 7. Claim 7 is illustrative of the claims at
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`IPR2015-01653
`Patent RE43,106 E
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`issue and is reproduced below:
`7.
`An objective lens to form beam spots of different sizes
`using corresponding first and second light beams of
`respectively different wavelengths, the objective lens
`comprising:
`an inner region including an optical center of the
`objective lens which has an optical property optimized to focus
`the first light beam onto a first optical recording medium of a
`first thicknesses and to focus the second light beam onto a
`second optical recording medium of a second thickness other
`than the first thickness; and
`a diffractive region surrounding said inner region and
`comprising an optical property optimized so as to selectively
`diffract the first and second light beams as a function of
`wavelength so as to change a numerical aperture of the
`objective lens.
`Ex. 1001, 8:18–8:31.
`D. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth proposed grounds
`of unpatentability of claims 7–19 of the ’106 patent under 35 U.S.C.
`§ 103(a) as follows (see Pet. 3, 22–59):1
`References
`APA2 and Katayama3
`
`Claims Challenged
`7–19
`
`
`1 Petitioner supports its challenge with the Declaration of Masud
`Mansuripur, Ph.D. Ex. 1012.
`2 The ʼ106 patent includes Admitted Prior Art (“APA”) describing a
`conventional optical pickup apparatus and a thin-film type variable
`aperature. See Ex. 1001, 1:58–3:29, Figs. 1, 2.
`3 U.S. Patent No. 5,696,750, issued on December 9, 1997 (Ex. 1002)
`(“Katayama”).
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`IPR2015-01653
`Patent RE43,106 E
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`II. ANALYSIS
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo
`Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-
`446). Under the broadest reasonable construction standard, claim terms are
`given their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We determine
`that no express construction of any terms is required at this time.
`B. Claims 7–19 – Obviousness over APA and Katayama
`Petitioner contends that claims 7–19 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over APA and Katayama. Pet. 22–59.
`1. APA (Ex. 1001)
`The ʼ106 patent discloses a conventional optical pickup apparatus that
`was available in the prior art. Ex. 1001, Fig. 1, 1:58–61. The conventional
`optical pickup apparatus is illustrated in Figure 1 of the ’106 patent as
`follows:
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`IPR2015-01653
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`Figure 1 discloses an optical pickup apparatus that includes laser light
`sources 11 and 21, collimating lenses 22 and 12, objective lens 17, and
`optical media 18 and 25. Id. at 1:62–2:55. Laser light source 11 emits light,
`having a 635nm wavelength, to collimating lens 12. Id. at 2:1–2. The
`collimated incident light beam is reflected by beam splitter 13 to interference
`filter prism 14. Id. at 2:3–7. Laser light source 21 emits light, having a
`780nm wavelength, to collimating lens 22. Id. at 2:8–13. The collimated
`incident light beam then goes to beam splitter 23, converging lens 24, and
`then to interference filter prism 14. Id. Interference filter prism 14 transmits
`completely both the light beam of 635nm and 785nm wavelengths. Id. at
`2:15–18. As a result, the light beam from laser light source 11 is incident to
`quarter-wave plate 15 as a parallel beam by the collimating lens 12, whereas
`the light beam from laser light source 21 is incident to the quarter-wave plate
`15 in the form of a divergent beam by converging lens 24 and interference
`filter prism 14. Id. at 2:18–24. The light transmitted through the quarter-
`wave plate 15 passes through a variable aperture 16 having a thin film
`structure and then is incident to objective lens 17. Id. at 2:24–28.
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`IPR2015-01653
`Patent RE43,106 E
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`Thin-film type variable aperture 16 is illustrated in Figure 2 of the
`’106 patent as follows:
`
`
`Figure 2 illustrates variable aperture 16 that is partitioned into two
`regions. Id. at 2:56–66. First region 1 transmits both light beams of 635nm
`and 780nm. Id. Second region 2 transmits completely the light beam of
`635nm, and reflects completely the light beam of 780nm. Id.
`2. Katayama (Ex. 1002)
`Katayama discloses an optical head apparatus for different types of
`disks that have different thicknesses and/or densities. Ex. 1002, 1:7–9. The
`optical head apparatus is illustrated in Figure 28 of Katayama as follows:
`
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`IPR2015-01653
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` Figure 28 discloses an optical head apparatus that includes laser
`diodes 11 and 12, interference filter 13, collimator lens 4, aperture limiting
`element 2801,4 objective lens 6, and disks Aʹ and B. Ex. 1002, 15:62–16:21.
`A 635nm wavelength light beam is emitted from laser diode 11, and
`completely passes through interference filter 13 and is incident to collimator
`lens 4. Id. at 16:1–4. The collimated light beam passes through the entire
`aperture limiting element 2801 to reach objective lens 6, and is focused on
`disk Aʹ. Id. at 16:6–8. A 785nm wavelength light beam is emitted from
`laser diode 12, and is reflected completely by interference filter 13 and is
`incident to collimator lens 4. Id. at 16:18–21. The collimated light beam
`
`
`4 Aperture limiting element 2801 replaces the holographic optical element 5ʹ
`of Figure 5. Ex. 1002, 15:63–65. Figure 32 combines the holographic
`optical element 5’ of Figure 8 and aperture limiting element 2801 of Figure
`28 into aperture limiting holographic optical element 3201. Id. at 18:48–54.
`9
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`IPR2015-01653
`Patent RE43,106 E
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`passes only through a central portion of aperture limiting element 2801 to
`reach objective lens 6 to be focused on disk B. Id. at 16:22–25.
`3. Analysis
`The evidence set forth by Petitioner indicates there is a reasonable
`likelihood that Petitioner will prevail in showing that claims 7–19 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over APA and Katayama.
`Pet. 25–59. Petitioner provides a detailed analysis, supported by evidence,
`demonstrating that there is a reasonable likelihood that claims 7–19 would
`have been obvious over APA and Katayama. Id.
`For example, the preamble of claim 7 recites “an objective lens to
`form beam spots of different sizes using corresponding first and second light
`beams of respectively different wavelengths.” Ex. 1001, 8:18–20.
`Petitioner contends that both APA and Katayama disclose this limitation.
`Petitioner specifically argues that APA discloses a conventional optical
`pickup apparatus that includes a single objective lens and two different
`wavelength light sources in order to form beam spots of different sizes for
`each recording medium (DVD and CD-R). Pet. 25–26 (citing Ex. 1001,
`1:64–67, 2:28–31, 2:50–53, 2:56–3:12, Fig. 1; Ex. 1012 ¶¶ 70–77, 87).
`Petitioner additionally argues that Katayama discloses the use of an
`objective lens and two different light sources on DVDs or CDs, which
`require beam spots of different sizes due to disk density. Id. at 26–28 (citing
`Ex. 1002, 1:7–9, 1:45–59, 3:22–30, 18:43–44, Figs. 5, 8, 28, 32; Ex. 1012 ¶
`88–91).
`Claim 7 further recites,
`[A]n inner region including an optical center of the objective
`lens which has an optical property optimized to focus the first
`light beam onto a first optical recording medium of a first
`
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`IPR2015-01653
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`thicknesses and to focus the second light beam onto a second
`optical recording medium of a second thickness other than the
`first thickness.
`
`
`Ex. 1001, 8:21–26. Petitioner contends that both APA and Katayama
`disclose this limitation. Petitioner specifically argues that APA discloses
`that objective lens 17 is optimized to focus (1) a first light beam on a first
`optical recording medium of a first thickness, and (2) a second light beam on
`a second optical recording medium of a second thickness. Pet. 28 (citing Ex.
`1001, 2:28–31, 3:6–9, Fig. 1; Ex. 1012 ¶ 93). Petitioner argues that APA
`discloses that variable aperture 16, alone or combined with objective lens 17,
`has an inner region that includes an optical center to focus (1) the first light
`beam on to a first optical recording medium of a first thickness, and (2) a
`second light beam on to a second optical recording medium of a second
`thickness. Id. at 29 (citing Ex. 1012 ¶ 94).
`Petitioner also argues that Katayama discloses an inner region that is
`configured to focus (1) a first beam on to a first medium, and (2) a second
`beam to focus on to a second medium. Id. at 29–30 (citing Ex. 1002, 17:13–
`30, 18:37–44, Figs. 28, 30A, 30B; Ex. 1012 ¶ 95). Petitioner argues that
`Katayama discloses an inner region that focuses two different light beams of
`different wavelengths, regardless of whether diffractive element 2801 is
`combined with objective lens 6 because inner region of diffractive-type
`variable aperture 3003 passes both wavelengths for focusing on their
`respective disks. Id. (citing Ex. 1002, 17:13–30; Ex. 1012 ¶ 95).
`Claim 7 also recites “a diffractive region surrounding said inner
`region and comprising an optical property optimized so as to selectively
`diffract the first and second light beams as a function of wavelength so as to
`
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`IPR2015-01653
`Patent RE43,106 E
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`change a numerical aperture of the objective lens.” Ex. 1001, 8:27–31.
`Petitioner contends that, although APA fails to disclose this limitation
`because it uses a thin film element, Katayama discloses a diffractive-type
`aperture limiting element that is wavelength selective, and also discloses that
`the diffractive element can be formed directly on the surface of the objective
`lens. Pet. 30–31 (citing Ex. 1002, 18:31–44). Petitioner asserts that
`Katayama presents the diffractive-type variable aperture as interchangeable
`with a thin-film type aperture. Id. at 31–32 (citing Ex. 1002, 15:62–18:44;
`Ex. 1012 ¶¶ 80, 98).
`Petitioner further articulates reasoning with rational underpinnings as
`to why a person of ordinary skill in the art at the time of the invention would
`have combined APA and Katayama. Id. at 22–25 (citing Ex. 1012 ¶¶ 79–
`82). Petitioner asserts that the elements of the claims were well-known and
`a person with ordinary skill in the art could have combined them without
`change to their respective functions. Id. at 22–23. Accordingly, Petitioner
`argues that the combination of APA and Katayama is nothing more than the
`combination of known elements with each performing the same function it
`had been known to perform, and yields nothing more than predictable
`results. Id. Petitioner further argues that Katayama expressly teaches that a
`thin film variable aperture and a diffractive-type variable aperture can be
`interchanged in an optical system to achieve the same results. Id. at 23–24
`(citing Ex. 1002, 16:37–17:30; Ex. 1012 ¶¶ 80, 98). Petitioner concludes
`that it would have been obvious to insert the elements of Katayama in to
`APA’s conventional optical pickup apparatus, and such a combination
`would have yielded nothing more than predictable results. Id.
`
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`IPR2015-01653
`Patent RE43,106 E
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`Petitioner similarly has provided a detailed analysis, supported by
`evidence, for claims 8–19. See Pet. 40–59. Consequently, we are persuaded
`that Petitioner has demonstrated a reasonable likelihood that it would prevail
`in showing unpatentability of all the challenged claims.
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4, an
`inter partes review hereby is instituted as to the proposed ground of
`obviousness of claims 7–19 over APA and Katayama;
`and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this Decision.
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`IPR2015-01653
`Patent RE43,106 E
`
`For PETITIONER:
`Jason Shapiro
`Michael Battaglia
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`jshapiro@rfem.com
`mbattaglia@rfem.com
`
`
`
`For PATENT OWNER:
`
`Alan A. Limbach
`Brent K. Yamashita
`DLA PIPER LLP (US)
`alan.limbach@dlapiper.com
`brent.yamashita@dlapiper.com
`
`
`
`14
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