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