`
`STATES PATENT AND TRADEMARK OFFICE
`
`Trial No.:
`
`IPR 2015-01653
`
`In re:
`
`U.S. Patent No. RE43,106
`
`Patent Owner:
`
`Toshiba Samsung Storage Technology Korea Corporation
`
`Petitioners:
`
`LG Electronics, Inc., and LG Electronics U.S.A., Inc.
`
`Inventors:
`
`Jang—Hoon Yoo and Chu1—Woo Lee
`
`For: OPTICAL PICKUP COMPATIBLE WITH A DIGITAL VERSATILE DISK
`AND A RECORDABLE COMPACT DISK USING A HOLOGRAPHIC
`RING LENS
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R.
`
`
`
`42.120
`
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 20l5—Ol653
`
`TABLE OF CONTENTS
`
`Bags
`
`1.
`
`CLAIM CONSTRUCTIONS ........................................................................ .. 1
`
`A.
`
`“selectively diffract the first and second light beams as a
`function of wavelength” (claim 7) ...................................................... .. 3
`
`B.
`
`“diffract” (claim 7) ............................................................................. .. 6
`
`II.
`
`LAW REGARDING ANTICIPATION AND OBVIOUSNESS ................. .. 8
`
`HI.
`
`APA AND KATAYAMA DO NOT RENDER OBVIOUS CLAIM 7 ................ .. 9
`
`A.
`
`B.
`
`The APA and Katayama were considered by the Examiner
`during original prosecutions of the ‘I06 patent............... ..; .............. .. 10
`
`The objective lens in the alleged combination of APA and
`Katayama does NOT diffract both beams as required by claim 7 .... .. 10
`
`IV.
`
`APA AND KATAYAMA DO NOT RENDER OBVIOUS CLAIM 13 ............ .. l7
`
`V.
`
`CONCLUSION ........................................................................................... .. 19
`
`PATENT OWNER’S EXHIBIT LIST
`
`CERTIFICATE OF SERVICE
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 2015-01653
`
`Toshiba Samsung Storage Technology Korea Corporation (“patent owner”
`
`or “PO”) submits this response to the petition regarding U.S. Patent No. RE43,lO6
`
`(the ‘ 106 patent). The ‘ 106 patent is EX. 1001. Petitioner has the burden of
`
`proving unpatentability by a preponderance of the evidence. 35 U.S.C. § 3 l6(e).
`
`Petitioner has not met its burden for the reasons explained below. See also EX.
`
`2002 (Lebby Decl.) at m 14.31.
`
`I. CLAIM CONSTRUCTIONS
`
`PO respectfully submits that the broadest reasonable construction standard
`
`should not apply in IPRS. Instead, the PTAB should construe claim terms in lPRs
`
`using the same Phz'Zlz'ps standard used by district courts in litigations. See Phillips
`
`v. AWH Corp, 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`The IPR. procedure was designed to be a surrogate for litigation, where the
`
`broadest reasonable construction (BRC or BRI) standard does not apply. See, e.g.,
`
`H.R. Rep. No. 112-98, at 46-47. IPRS are in effect adjudications that test patent
`
`validity using the fixed meaning of legally operative property rights; they are not
`
`examinations in which the scope of patent claims is fluid and changeable.
`
`In IPRs,
`
`just like district court litigation, the applicant—and-examiner back—and-forth is
`
`absent. There is no robust right to amend, and there is no guaranteed ability to
`
`resolve claim scope ambiguity.
`
`lndeed, patentees do not have a right to amend
`
`their claims in an IPR; instead, they must seek permission from the Board -
`
`permission that in practice rarely has been granted. Even when permission is
`
`granted, the ability to amend is severely limited and subject to strict rules. As the
`2614490
`
`
`
`Patent Owner’s Response (U.S. Pat. No. RE43,106)
`
`IPR 2015-0\1653
`
`dissent in In re Cuozzo Speed Techs, infira, noted, all hallmarks justifying use of
`
`the broadest reasonable interpretation standard are absent from IPR proceedings.
`
`An IPR cannot be a surrogate for litigation when it uses a different claim
`
`constiuction standard that leads to different results. Further, it is respectfully
`
`submitted that 37 C.F.R. 42.100(b), which directs the PTAB to give claim terms
`
`the broadest reasonable construction rather than the Phillips standard, is not a valid
`
`exercise of the USPTO’s rulemaking authority. PO respectfully submits that the
`
`Phillips standard of claim interpretation should apply in IPRS.
`
`The PTAB has taken the position that in IPRS, claim terms in an unexpired
`
`patent are to be given their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. See In re Cuozzo Speed Techs.,
`
`LLC, 793 F.3d 1268, 1277-79 (Fed. Cir. 2015), cert grcmtedsub nom. Cuozzo
`
`Speed Techs, LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446).
`
`But even under this 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 Trcmslogic Tech, Inc, 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). The “broadest reasonable interpretation” does not mean the “broadest
`
`possible interpretation.”
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RF/13,106)
`
`IPR 2015-01653
`
`A. “selectively diftract the first and second light beams as a function of
`wavelength ” (claim 7 2
`
`Claim 7 of the ‘106 patent requires a diffractive region to “Selectively
`
`diffract the first and second light beams as a function of wavelength.” Under
`
`either the “broadest reasonable construction” or Phillips claim construction
`
`standard, this phrase should be construed to mean “dzfjfrczct the first and second
`
`light beams according to their respective wavelengths.” Ex. 2002 at fifll 17-19.
`
`Significantly, this claim requires that _I_)_(_)_t_h beams are diffracted by the diffractive
`
`region. The parties _a_gr_§_e_ on this construction, as petitioner proposed this exact
`
`same construction on page 13 of the Petition.
`
`The specification of the ‘ 106 patent describes multiple embodiments. In
`
`some embodiments, one of the light beams is diffracted. In other embodiments,
`
`both light beams are diffracted. Claim 1 for example covers at least the former
`
`approach, whereas claim 7 is directed to the latter approach. This agreed—upon
`
`construction is thus consistent with the specification of the ‘ 106 patent.
`
`For example, Fig. 6 of the ‘106 patent shows a 650 nm beam identified by
`
`cross members and a 780 nm beam identified by circles. Ex. 1001 at Fig. 6 and
`
`6:53-63. The Vertical axis ofFig. 6 is transmissive efficiency and the horizontal
`
`axis of Fig. 6 is groove depth of the diffraction grating. Ex. 1001 at Fig. 6 and
`
`4:18~20; and Ex. 2003 at pgs. 21-23. In Fig. 6, both beams a.re diffracted a
`
`majority of the time (z'.e., at most diffraction grating groove depths, both beams are
`
`diffracted). Ex. 2002 at 1111 18-19.
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 2015-01653
`
`In particular, the experts from both sides agree that both beams are being
`
`diffracted in Fig. 6 at any groove depth when they are both below 1.0 on the
`
`vertical axis. Ex. 2003 at pgs. 23, 25-26; and Ex. 2002 at 11 19. This occurs at
`
`most locations in Fig. 6. Id. For instance, at groove depths from 3.2 to 3.6 pm
`
`both beams in Fig. 6 are being diffracted. Id. Fig. 6 ofthe ‘ 106 patent also
`
`illustrates that the different wavelengths are diffracted to different extents. Id. For
`
`example, as explained by Petitioner’s expert:
`
`Q Is there any diffraction being indicated in Figure 6?
`
`MR. JONES: Objection, form.
`
`A Figure 6 shows the diffraction efficiency for the zeroth order. And
`
`whenever the zeroth order efficiency drops below 100 percent, that is an
`
`indication that some diffraction is taking place, into other orders.
`
`Ex. 2003 at 23.
`
`2614490
`
`
`
`Patent Owner’s Response (U.S. Pat. No. RE-43, l06)
`
`IPR 20l5—0l653
`
`Q
`
`I understand you to be saying that both the 650 and 780-nanometer
`
`wavelengths would be diffracted at that point around a groove depth of
`
`3.4; is that right?
`
`MR. JONES: Objection, form.
`
`A According to the plot in Figure 6 the zero order diffraction
`
`efficiency of the grating of the holographic ring 353 would be about the
`
`same at 3.4 micron. The zero percent efficiencies would be the same.
`
`Q And both would be diffracted?
`
`A Then there would be diffraction in two different orders for the two
`
`different wavelengths.
`
`Q Both would be diffracted there, correct? Both wavelengths?
`
`MR. JONES: Objection, form.
`
`A If the diffraction efficiency of zero order is less than 100 percent, or
`
`less than 1 in this plot, and if light is not being absorbed anywhere, then
`
`there will be some diffraction for both wavelengths.
`
`Ex., 2003 at 25-26. Thus, for groove depths in Fig. 6 where both plots are less
`
`than 1 on the vertical axis, there is diffraction of both beams. But for groove
`
`depths where a beam plot is at l on the vertical axis, there is no diffraction for that
`
`beam plot. It can thus be seen that for most grating groove depths shown in Fig. 6
`
`there is diffraction of both beams. Ex. 2003 at pgs. 23, 25-26; and Ex. 2002 at filfil
`
`18-19.
`
`The specification of the ‘ 106 patent at other locations further describes both
`
`beams being diffracted, with the amount that each beam is diffracted being a
`
`function of its wavelength. See, e. g., Ex. 1001 at 6:20-37. Thus, the specification
`
`and claim 7 both describe that both light beams are diffracted in certain
`
`5
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 2015-01653
`
`embodiments. Ex. 2002 at fifll 17-19. The construction agreed to by the parties is
`
`consistent with these embodiments in the specification of the ‘106 patent, as well
`
`as the express language of claim 7.
`
`This construction, relevant to claim 7, is important because the lens in the
`
`alleged combination does not diffract both beams as required by claim 7.
`
`Accordingly, even the alleged combination fails to meet claim 7.
`
`B.
`
`“a’i2_‘Zract”(cZaim 72
`
`Under either the “broadest reasonable construction” or Phillips claim
`
`construction standard, “diffract” should be construed to mean “modulate waves in
`
`response to an obstacle, as an object, slit, or grating, in the path ofpropagation,
`
`giving rise in light waves to a banded pattern or to a spectrum.” Ex. 2001. The
`
`experts from both sides appear to agree on this construction, as does Webster’s
`
`Dictionary. Ex. 2001; Ex. 2002 at fifll 20-22; and EX. 2003 at 9-1 1. This definition
`
`is taken from Webster’s dictionary (EX. 2001), and is consistent with the
`
`specification of the ‘106 patent and the ordinary meaning of diffract/diffraction at
`
`the time of the invention ofthe ‘106 patent. Ex. 2002 at {Hi 20-22; and Ex. 2003 at
`
`9-11. Figs. SA-SB and 7 of the ‘106 patent illustrate diffractive gratings including
`
`grooves that cause modulation of both wavelengths giving rise to waves in a
`
`banded pattern or spectrum according to Fig. 6. See eg, Ex. 1001 at Figs. 5A-SB,
`
`6, 7 and from 5:51 to 7:27; and Ex. 2002 at {M 21-22.
`
`2614490
`
`
`
`Patent Owner’s Response (U.S. Pat. No. RE43,106)
`
`IPR 2015-01653
`
`Intrinsic evidence confirms this construction. As a first example, Katayama
`
`expressly contrasts “diffraction” with light that “completely passes.” Ex. 1002 at
`
`col. 17: 19-23. Note that Katayama, relied upon by petitioner, is intrinsic evidence
`
`because it was considered by the Examiner during prosecution of the ‘ l 06 patent.
`
`As another example, the specification of the ‘ 106 patent expressly contrasts
`
`“diffracting” with totally transmitting and totally reflecting. Ex. 1001 at col. 4:40-
`
`45, and col. 5:l—9.
`
`Diffraction is the deviation from standard wavefront ray optics. One of
`
`ordinary skill in the disc player art as of 1997-1998 would have understood
`
`diffraction/diffract to mean what is stated in the Webster’s Universal College
`
`Dictionary (Ex. 2001), where diffraction is defined as: “a modulation ofwaves in
`
`response to an obstacle, as an object, slit, or grating, in the path ofpropagation,
`
`giving rise in light waves to a banded pattern or spectrum.” Diffraction arises
`
`when a wavefront is obstructed in some way as in the case where the media
`
`interface is small enough to be close to the wavelength of the wavefront. Ex. 2002
`
`at fil 22.
`
`In this situation, the wavefront needs to circumvent the obstacle and forms
`
`fringe patterns. Id. The fringe patterns are essential regions of uniform
`
`geometrical shadow that occur around the obstacle. Id. A wavelet originates as
`
`two or more wavefronts overlap, as in the ripples of waves on a pond when a stone
`
`is thrown in. Id. A simple technique to analyze diffraction is based on the
`
`Huygens-Fresnel principle where every point on a wavefront serves as a source of
`
`2614490
`
`
`
`Patent Owner’s Response (U.S. Pat. No. RE43,lO6)
`
`IPR 2015-01653
`
`spherical secondary wavelets of the same frequency as the primary wave.
`
`la’. The
`
`optical field at any point beyond an obstruction is the superposition of all such
`
`wavelets reaching that point. Id. Basic scientific theory thus confirms this
`
`construction of diffract/diffraction.
`
`Additional claim constructions may be reflected in the arguments below.
`
`II. LAW REGARDING ANTICIPATION AND OBVIOUSNESS
`
`“A claim is anticipated only if each and every element as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
`
`reference.” Verdegaal Bros. 12. Union Oil Co. of California, 814 F.2d 628, 631
`
`(Fed. Cir. l987). A feature is “inherent” in a reference only if that feature is
`
`“necessarily present” in the reference, “not merely probably or possibly present.”
`
`Trinrec Indus, Inc. v. T0p—U.S.A. Corp, 295 F.3d 1292, 1295 (Fed. Cir. 2002).
`
`Furthermore, in order to anticipate, a prior art reference must not only disclose all
`
`elements of the claim, but must also disclose those elements “arranged as in the
`
`claim.” Net M0neyIN, Inc. v. Verz'Sz'gn, Inc, 545 F.3d l359, 1369 (Fed. Cir. 2008).
`
`Moreover, a patent claim is unpatentable under 35 U.S.C. § l03(a) if the
`
`differences between the claimed subject matter and the prior art are such that the
`
`subject matter would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which the subject matter pertains. KSR
`
`Int "1 Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
`
`resolved on the basis of underlying factual determinations, including (1) the scope
`
`26 l 4490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 2015-01653
`
`and content of the prior art; (2) differences between the claimed subject matter and
`
`the prior art; (3) the level of skill in the pertinent art; and (4) secondary
`
`considerations such as commercial success, long felt need, copying by others, etc.
`
`Graham v. John Deere C0. 0fKansas City, 383 U.S. 1, 17-18 (1966). A court can
`
`take account of the inferences and creative steps that a person of ordinary skill in
`
`the art would employ. KSR, 550 U.S. at 418. “A prior art reference may be
`
`considered to teach away [from the claimed invention] when ‘a person of ordinary
`
`skill, upon reading the reference, .
`
`.
`
`. would be led in a direction divergent from the
`
`path that was taken by the applicant’.” Monarch Knitting Mach. 1/. S?/M287‘ Marat,
`
`139 F.3d 877, 885 (Fed. Cir. 1998) (citation omitted). The “general rule” is that
`
`references that teach away “cannot serve to create a prima facie case of
`
`obviousness.” McGinZey v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir.
`
`2001).
`
`III. APA AND KATAYAMA DO NOT RENDER OBVIOUS CLAIM 7.
`
`Claims 7-19 are patentable over Katayama (Ex. 1002) and the alleged
`
`Admitted Prior Art (APA) for at least the following reasons. The APA is made up
`
`of only Figs. 1»-2 of the ‘106 patent and the specification of the ‘l06 patent from
`
`col. 1:36 to col. 3:25.
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 2015-01653
`
`A. The APA and Karayama were considered by the Examiner daring
`original Qrosecutions ofthe ‘I 06 Qatent.
`
`The APA and Katayama were considered by the Examiner during original
`
`prosecutions of the ‘ 1 O6 patent. The Examiner twice allowed the challenged
`
`claims over this art (twice allowed over Katayarna and APA given that this is a
`
`reissue). This should weigh in favor of patentability, as the USPTO already
`
`repeatedly allowed the challenged claims over the art at issue in this proceeding.
`
`B. The ob 'ectz've lens in the alle ed combination 0 APA and Kara ama does
`NOT diffract both beams as reguired by claim 7.
`
`
`
`Claim 7 of the ‘I06 patent requires a diffractive region to “selectively
`
`diffract the first and second light beams as a function of wavelength.” As
`
`explained above, this phrase should be construed to mean “a’zffract thefirst and
`
`second light beams according to their respective wavelengths.” The claim thus
`
`requires that _l_)_g_t_l_1 beams are diffracted by the diffractive region. The parties agree
`
`on this construction, as petitioner proposed this exact same construction on page 13
`
`of the Petition. This construction is consistent with the specification of the ‘ l 06
`
`patent, for at least the reasons explained above in the claim construction section.
`
`Ex. 2002 at {M 17-19.
`
`Petitioner admits that the APA fails to disclose this claimed subject matter.
`
`See Petition at 30; and Ex. 1012 at filfil 96-97. The Institution Decision also
`
`assumes that the APA fails to disclose this claimed subject matter. Paper 8 at 12.
`
`Recognizing this deficiency with the APA, petitioner relies on Figs. 29-31 of
`
`Katayama and contends that it would have been obvious to have used Katayama’s
`10
`
`2614490
`
`
`
`Patent Owner’s Response (U.S. Pat. No. RE43,l06)
`
`IPR 2015-01653
`
`aperture limiting element 2801 on an objective lens in the APA. See Petition at 31;
`
`and Ex. 1012 at {H1 97-98. Petitioner relies on Katayama’s statement at col. 18:43-
`
`44, which states that “it is possible to form the aperture limiting element 2801
`
`‘directly on the object lens 6.” Id.
`
`However, if Katayama’s element 2801 were provided on an objective lens in
`
`the APA, claim 7 still would NOT be met. Ex. 2002 at {[11 23-30. In particular, if
`
`Katayama’s element 2801 were provided on an obj ective lens in the APA, this
`
`would NOT diffract both beams as called for in claim 7. Id. Petitioner’s expert
`
`and patent owner’s expert both agree that Katayama does NOT diffract both
`
`beams, and thus even the alleged combination fails to meet claim 7. Ex. 2002 at
`
`1M 24-30; and Ex. 2003 at 11-13.
`
`Katayama initially explains that “only one” beam is adjusted. Ex. 1002 at
`
`1:54-59. Referring to.Figs. 28-30, Katayama explains that the grating 3002 of
`
`element 2801 “completely passes the 635 nm wavelength light therethrough, while
`
`the grating 3002 almost completely diffracts the 785 nm wavelength light
`
`thereby.” Ex. 1002 at 17:12-27. See also Ex. 1002 at 16:54-60. Thus, the 635 nm
`
`beam is NOT diffracted in Katayama, because it “completely passes” through the
`
`grating. Ex. 1002 at 17:12-27; Ex. 2002 at 1H1 27-29; and Ex. 2003 at 11-13.
`
`Element 2801 in Kayama diffracts one beam, but completely passes the other. Id.
`
`Thus, even if Katayama’e element 2801 were provided on an objective lens from
`
`11
`
`2614490
`
`
`
`Patent Owncr’s Response (US. Pat. No. RE43,l06)
`
`IPR 2015-01653
`
`the APA, only one of the two beams would be diffracted — claim 7 would not be
`
`met. Ex. 2002 at {[11 25-29; and Ex. 2003 at 11-13.
`
`Given Katayama’s clear teaching, it is not surprising that petitioner’s expert
`
`and patent owner’s expert both agree that only one of the two beams is diffracted
`
`in Katayama (and thus in the alleged combination). Both experts agree that the
`
`635 nm beam is never diffracted in the cited art. Ex. 2002 at {M 25-29; and Ex.
`
`2003 at 11-13.
`
`As explained by patent owner’s expert, Katayama specifies that in the fifth
`
`embodiment beginning with Figure 29 and continuing to Figure 31 (column 16:37
`
`to 18:42), there are two beams oflight for the optical head. Ex. 2002 at $1 28. The
`
`first beam has a wavelength of 635 nm and the second beam has a Wavelength of
`
`785 nm. Id. Essentially the same wavelength beams are described in the APA
`
`(635 nm and 780 nm). With particular attention to Figure 29B (which is a cross-
`
`section of Figure 29A along axis B-B), there are three layers that compose
`
`diameter D1, and only one layer that composes D2. Id. Katayama clearly states at
`
`col. 16:40 that layer 2901 is a glass substrate. Katayama also states that the glass
`
`substrate forms a mechanical platform where interference layer 2902 and phase
`
`compensation layer 2903 are deposited. In the region D2 of Figure 29B of
`
`Katayama, any light passing through the opening in 2904 will only “see” and travel
`
`through a glass substrate. Ex. 2002 at {I 28. This fact is supported at col. 16:58-61
`
`of Katayama, which states that inside the aperture 2904, z'.e., the area D2, “both the
`
`12
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 2015-01653
`
`635 nm wavelength light and the 785 nm wavelength light completely pass through
`
`the aperture limiting element 2801.” Therefore, light be it 635nm or 785nm will
`
`only see a glass layer which acts as a mechanical platform. The 635 rim beam is
`
`never diffracted. Ex. 2002 at {M 27-29. The light will not see or meet any
`
`modulated obstacles and therefore will not suffer any diffraction properties as it
`
`completely passes through this layer. Id.
`
`A simple refraction of light in this example is similar to light entering a
`
`swimming pool where the refractive index of water is also greater than 1. In this
`
`case the light will not diffract, but will refract as it enters the water and may be
`
`directed in a path different from its origination (via Sne1l’s law). Id. Using this as
`
`an example for Katayama, the light entering the region D2 inside the aperture 2904
`
`at wavelengths 635 nm and 785 nm may be refracted (but not diffracted) by the
`
`glass. The definition of “completely pass” as specified by Katayama at col. 16:55-
`
`56, 16:60-61, and 17:20-21 in the context of optics is that the light is not perturbed
`
`in any way, and maintains its structure through the simple glass layer, much the
`
`same as light passes through a window at home. Ex. 2002 at {l 28.
`
`In this case the
`
`light is not diffracted. Id. Thus, only one of the two beams is diffracted by
`
`element 2801 in Katayama (and in the alleged APA/Katayama combination). Ex.
`
`1002 at 17:12-27; and Ex. 2002 at {M 27-29. The 635 nm beam is never diffracted
`
`by an objective lens in either Katayama or in the alleged APA/Katayama
`
`combination. Ex. 2002 at {[11 25-29; and EX. 2003 at 11-13.
`
`13
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,106)
`
`IPR 2015-01653
`
`Petitioner’s expert admits that both beams are not diffracted by the element
`
`2801 in Katayama.
`
`In particular, petitioner’s expert admits that the 635 nm beam
`
`is NOT diffracted. Petitioner’s expert testified as follows during his deposition:
`
`Q
`
`In Katayama can you please refer to Column 17, around Line
`
`13?
`
`>>/CDD>
`
`Q
`
`Yes.
`
`You see that paragraph that begins with ”Figure 30A”?
`
`Yes.
`
`Can you please review that entire paragraph which goes from
`
`Column 17, Line 12 or 13 up to Line 30?
`
`Sure.
`
`Tell me when you’re done.
`
`Okay, I have read that paragraph.
`>l<
`>l<
`
`What does the grating do to the 785 —nanometer wavelength?
`
`MR. JONES: Objection, form.
`
`Here in Column 17 of Katayama, Lines 22 to 25, it says the
`
`A Q A >
`
`?<
`
`Q
`
`A
`
`grating 3002 almost completely diffracts the 785—r1anometer wavelength
`
`light nearby. And further down starting on Line 24 it says, “And the
`
`785—nanometer wavelength light is almost completely reflected by the
`
`aperture limiting element 2801.”
`
`So the 785-nanometer wavelength is diffracted; is that right?
`
`That’s what it says in this paragraph. It says, “grating 3002
`
`Q A
`
`almost completely diffracts the 785-nanometer wavelength.”
`
`Q And what does the grating do with respect to the 63 5-
`
`nanometer wavelength‘?
`
`14
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,106)
`
`IPR 2015-01653
`
`A Same paragraph says, Line 19, starting on Line 19, “The
`
`grating 3002 completely passes the 63 5-nanometer wavelength light.”
`
`Q What does completely passes mean to you?
`
`MR. JONES: Objection, form.
`
`A I think in this context it means that the light goes through
`
`Without being diffracted.
`
`Ex. 2003 at 11-13 (emphasis added).
`
`Accordingly, both experts agree that the element 2801 in Kayama diffracts
`
`only one beam, and completely passes the other. Ex. 2002 at flfll 25-29; and Ex.
`
`2003 at 11-13. This is unambiguously stated by Katayarna. Ex. 1002 at 17:19—30.
`
`Thus, even if the element 2801 of Katayama were provided on an objective lens in
`
`the APA (which patent owner does not agree would have been obvious in any
`
`event), claim 7 still would NOT be met because only one of the two beams would
`
`be diffracted. Ex. 2002 at $11] 24-29. There is no disclosure or suggestion in either
`
`the APA or Katayama of “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” as required by claim 7. Id. The 635 nm beam is not
`
`diffracted. Id. And there is no logical reason to have modified the APA or
`
`Katayama to have met claim 7 in these respects (and petitioner provides no such
`
`allegation, much less any supporting reasoning as required by Graham v. John
`
`Deere C0. 0fKcmsas City, 383 U.S. 1, 17-18 (1966)). Ex. 2002 at 11 30.
`
`15
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 2015-01653
`
`Moreover, the petition NEVER states that Katayama (or the alleged
`
`iAPAfl(maymnacmnbhmfion)dfifiadsboflzbmnns SeePefiuonat3039.The
`
`Institution Decision also never states that the alleged combination diffracts both
`
`beams. Paper 7 at 11-12. This flaw in the alleged combination evidences the
`
`patentable nature of claim 7.
`
`VVhflepefifionerdoesngtaflegethatn\Nouklhavebemiobvknmtohave
`
`modified Katayama (or APA/Katayama) to diffract both beams as required by
`
`dam74mmmowmnnmwflmtmmewmmdhmwbwnnobgaflmmmnmhmm
`
`done so. There is simply no logical reason to have modified the APA, Katayama,
`
`or the alleged APA/Katayama combination to diffiact both beams in order to
`
`change a numerical aperture of an objective lens. Ex. 2002 at {W 24-30. No such
`
`modification is even alleged by petitioner in this respect, and the Graham factors
`
`cmmmpmmmymnmtTomewmmwJQmwmmwmmmmmdwamwfimnmfi
`
`because Katayama teaches that the 635 nm beam is completely passed and thus is
`
`not to be diffracted. Indeed, Katayama already has desired aperture characteristics.
`
`Ex. 1002 at col. 18:31-42. Given that Katayama already has desire aperture
`
`characteristics, there would have been no logical reason to have modified
`
`Katayama or APA/Katayama to further change an aperture characteristic. Ex Pa/are
`
`Rmkevic/1 et 01]., Appeal No. 20071317 (BPA1 May 29, 2007) (explaining that there
`
`is no logical reason to modify prior art to solve a problem that was already solved).
`
`16
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,lO6)
`
`IPR 2015-01653
`
`Moreover, contrary to claim 7, the cited art teaches that only one of the two
`
`beams is to be diffracted (see discussion above). This teaches directly away from
`
`claim 7. Katayama teaches that the 635 nm beam is to be “completely passed” -
`
`not diffracted. This emphasizes that diffraction of both beams is not “inherent” in
`
`Katayama or in the alleged combination of APA/Katayama (petitioner makes no
`
`such allegation). The general rule is that a reference which teaches away “cannot
`
`serve to create a prima facie case of obviousness.” McGiz/zley 12. Franklin Sports,
`
`Inc, 262 F.3d 1339, 1354 (Fed. Cir. 2001). The prior art’s teaching away from
`
`claim 7 further evidences the patentable nature of the claim, and rebuts any
`
`allegation of obviousness as a matter of law.
`
`Thus, even the alleged combination fails to meet claim 7.
`
`It is apparent why
`
`the Examiner allowed the claims over the APA and Katayama during original
`
`prosecution of the ‘l06 patent. The patentability of claim 7 should be confirmed.
`
`Petitioner cannot meet its burden of establishing obviousness of claim 7.
`
`IV. APA AND KATAYAMA DO NOT RENDER OBVIOUS CLAIM 13.
`
`Claim 13 of the ‘106 patent requires that “the diffractive region is optimized
`
`to selectively diffract the first and second light beams such that the numerical
`
`aperture of the objective lens is greater for the second optical recording medium
`
`than for the first optical recording medium” (emphasis added). The cited art fails
`
`to disclose or suggest this underlined claimed subject matter, either alone or in the
`
`alleged combination. EX. 2002 at 1} 31.
`
`17
`
`2614490
`
`
`
`Patent Owner"s Response (US. Pat. No. RE43,106)
`
`1PR 2015-01653
`
`Again, claim 13 requires that the diffractive region diffracts b_<_)_t_h the first
`
`and second light beams. Katayama fails to disclose this claimed subject matter, for
`
`the reasons explained above in connection with claim 7, which are incorporated
`
`herein by reference. And petitioner does not allege that it would have been
`
`obvious to have modified the cited art to have done this. Thus, the alleged
`
`combination fails to meet claim 13 in this respect.
`
`Further particular to claim 13, petitioner’s expert alleges that in Katayama
`
`the numerical aperture for second optical recording medium is already greater than
`
`for the first optical recording medium. Ex. 1012 at $1122. No modifications are
`
`alleged by petitioner in this respect. Thus, if the numerical aperture for second
`
`optical recording medium is already greater than for the first optical recording
`
`medium as alleged by petitioner, there would have been no logical reason to have
`
`modified Katayama or APA/Katayama because this was already done. Ex Parte
`
`Rirzkevich er al., Appeal No. 20071317 (BPAI May 29, 2007) (explaining that there
`
`is no logical reason to modify prior art to solve a problem that was already solved).
`
`Accordingly, petitioner does r_1_gt allege that it would have been obvious to have
`
`modified APA/Katayama to have diffracted both beams, and there would have
`
`been no logical reason to have done so because petitioner admits that the issue had
`
`already been solved. There simply would have been no logical reason to have
`
`modified Katayama, or APA/Katayama, to have diffracted both beams.
`
`18
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 2015-0l653
`
`V. CONCLUSION
`
`For the foregoing reasons, the Board should confirm patentability of the
`
`challenged claims.
`
`Patent owner reserves the right to make additional arguments, and submit
`
`additional evidence, responsive to any inappropriate new arguments that petitioner
`
`may make.
`
`Respectfully submitted,
`
`NIXON & VANDERHYE P.C.
`
`By:
`
`/Joseph A. ‘Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`Jonathan A. Roberts
`
`Reg. No. 68,565
`Counsel for Patent Owner
`
`Toshiba Samsung Storage Technology
`Korea Corporation
`
`JAR:caj
`Nixon & Vanderhye, PC
`90]. North Glebe Road, llth Floor
`Arlington, VA 22203-1808
`Telephone: (703) 816-4000
`Facsimile: (703) 816-4100
`
`19
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,l06)
`
`IPR 20l5—0l653
`
`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No.
`
`Brief Description
`
`2001
`
`2002
`
`2003
`
`wlixcerpt from Webster’s Universal College Dictionary (1997)
`
`Declaration of Michael Lebby
`
`Deposition Transcript of Masud Mansuripur
`
`2614490
`
`
`
`Patent Owner’s Response (US. Pat. No. RE43,lO6)
`
`IPR 2015-01653
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing Patent
`
`Owner’s Response, and new exhibits, was served on Petitioners LG Electronics,
`
`Inc. and LG Electronics, U.S.A., Inc. on May 6, 2016 by emailing a copy to
`
`counsel at the email addresses listed below:
`
`Brian A. Tollefson
`
`Michael V. Battaglia
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`
`Washington, DC 20005
`btollefson@rothwellfigg.com
`mbattag1ia@rothwellfiggcom
`1ge—rfem—1 1 0team@rothwe1lfigg.com
`
`By:
`
`/Joseph A. Rhoa/
`
`Joseph A. Rhoa
`Reg. No. 37,515
`
`2614490