Date filed: July 15, 2016
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`Filed on behalf of: LG Electronics, Inc. and Paper ____
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` LG Electronics U.S.A., Inc.
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`By: Brian A. Tollefson, Lead Counsel
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`Soumya P. Panda, Back-up Counsel
`Michael V. Battaglia, Back-up Counsel
`Michael H. Jones, Back-up Counsel (Pro Hac Vice)
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: btollefson@rothwellfigg.com
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` spanda@rothwellfigg.com
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` mbattaglia@rothwellfigg.com
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` mjones@rothwellfigg.com
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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
`_______________
`
`
`
`PETITIONER REPLY TO PATENT OWNER RESPONSE
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`

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`TABLE OF CONTENTS
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`Case IPR2015-01653
`Patent RE43,106
`
`TABLE OF AUTHORITIES ................................................................................... iv 
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`INDEPENDENT CLAIM 7 ............................................................................. 3 
`
`A. 
`
`TSST-K’s Claim Construction is Improper .......................................... 3 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Petitioner’s construction properly includes all diffraction ......... 6 
`
`Dr. Lebby’s testimony fails to support TSST-K’s
`construction ................................................................................. 9 
`
`Dr. Mansuripur did not agree to TSST-K’s construction ......... 11 
`
`Dr. Lebby’s interpretation of claim 7 should be afforded no
`weight ........................................................................................ 12 
`
`B. 
`
`The APA and Katayama Disclose the Features of Claim 7 As
`Construed by TSST-K ......................................................................... 13 
`
`1. 
`
`Katayama discloses diffracting first and second beams as
`construed by Petitioner ............................................................. 13 
`
`2.  Modifying Katayama to partially diffract the 635 nm
`wavelength into the first order would have been an obvious
`design choice ............................................................................. 15 
`
`3. 
`
`4. 
`
`The skilled person would understand that the diffractive
`grating of Katayama would at least partially diffract the 635
`nm wavelength .......................................................................... 17 
`
`Katayama also discloses diffracting in accordance with
`TSST-K’s definition. ................................................................. 19 
`
`C. 
`
`The Office’s Prior Consideration of the APA and Katayama is not
`Pertinent to the Present Proceeding ..................................................... 20 
`
`III.  CLAIMS 8-19 ................................................................................................ 20 
`
`A.  Dependent Claim 13 ............................................................................ 20 
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`ii
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`

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`Case IPR2015-01653
`Patent RE43,106
`Dependent Claims 8-12 and 14-19 ...................................................... 22 
`
`B. 
`
`IV.  CONCLUSION .............................................................................................. 22 
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`
`iii
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`

`
`TABLE OF AUTHORITIES
`
`Case IPR2015-01653
`Patent RE43,106
`
`Cases 
`
`In re Cuozzo Speed Technologies v. Lee,
`2016 U.S. Lexis 3927 (U.S. June, 20, 2016) .....................................................1, 4
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005).............................................................................. 4
`Research in Motion Corp. v. Multimedia Ideas LLC,
`IPR2013-00036, Institution Decision, Paper 15 (PTAB 2013) ........................... 20
`
`iv
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`

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`Case IPR2015-01653
`Patent RE43,106
`
`I.
`
`INTRODUCTION
`
`The only theory for patentability advanced by Patent Owner, TSST-K in its
`
`Patent Owner’s Response (POR) relies on an improper claim construction –
`
`applying Phillips and not the broadest reasonable interpretation (BRI) – that
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`unduly narrows the claim scope beyond BRI and reads out the preferred
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`embodiment. TSST-K contends that the feature of “a diffractive region … to
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`selectively diffract the first and second light beams as a function of wavelength,”
`
`recited in claim 7, requires diffraction of both the first and second beams such that
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`both beams have less than 100% light transmitted in a zeroth order beam. (POR at
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`3). TSST-K’s construction reads the word “hardly” from the specification into the
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`claims and is only supported by cherry-picked data which excludes the preferred
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`embodiment. TSST-K’s claim construction must be rejected because it is not
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`based on the BRI standard but rather on one expressly disavowed by the U.S.
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`Supreme Court. See In re Cuozzo Speed Technologies v. Lee, 2016 U.S. Lexis
`
`3927 (U.S. June, 20, 2016). TSST-K’s arguments rely upon its faulty construction
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`and should also be rejected for this reason, and for the additional reasons set forth
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`below.
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`Patent Owner’s Response, and the testimony of its expert, Dr. Lebby, fail to
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`rebut Petitioners’ arguments and evidence supporting the invalidity of claims 7-19
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`over the Admitted Prior Art (APA) and Katayama (U.S. Pat. No. 5,696,750)(Ex.
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`
`1
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`

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`Case IPR2015-01653
`Patent RE43,106
`1002). First, as explained by Petitioner’s expert, Dr. Mansuripur, diffractive
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`gratings are designed to diffract a particular % of a wavelength’s light into an
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`order. (See e.g., Mansuripur Dec. at ¶¶ 53 and 56)(Ex. 1012). Thus, a wavelength
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`incident on a diffractive grating that has 0% of its light in the zeroth order beam
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`diffracted by the grating is still diffracted (i.e., 100% of the first order light is
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`diffracted), and all light passing through a diffraction grating is diffracted on some
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`level. (Id.) TSST-K never contested that all light passing through a diffractive
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`grating is diffracted into an order (i.e., zeroth order, first order, second order, etc.),
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`and instead applied a construction that excludes the preferred embodiment. See
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`also the Deposition Transcript of Dr. Michael Stephen Lebby (“Lebby Dep.” at
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`164:5-13)(agreeing the challenged claims do not require the diffraction of any
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`particular order of light)(Exhibit 1021).
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`Second, even if the Board were to adopt TSST-K’s narrow claim
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`construction, the combination of the APA and Katayama would still disclose
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`diffraction of both the first and second light beams. Particularly, during his
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`deposition, Dr. Lebby made a critical admission when asked about Katayama being
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`combined with the APA; he agreed that the diffraction grating of Katayama would
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`diffract both first and second light beams when 650 nm and 780 nm wavelengths
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`(the preferred wavelengths) are used as the first and second light beams
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`respectively. (Lebby Dep. at 184:9-185:8). Indeed, the challenged claims do not
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`2
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`Patent RE43,106
`require that the first and second light beams be of any particular wavelength, only
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`that they must be different wavelengths. (RE43,106 (“’106 patent”)(Ex. 1001) at
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`col. 8, lines 18-20). Dr. Lebby further acknowledged that designing a diffraction
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`grating to diffract both the first and second light beams was well within the skill of
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`one of ordinary skill in the art at the time of the invention. That is, designing a
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`diffractive grating to diffract both 650 nm and 780 nm wavelengths was an obvious
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`design choice.
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`Third, Dr. Lebby acknowledged that in reality, a device constructed
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`according to Katayama would most likely diffract both the first and second light
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`beams in the zeroth order even if it were designed to diffract only one of the
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`beams. Dr. Lebby testified that diffractive gratings suffer from imperfections and
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`tolerance problems during the fabrication process which cause the diffractive
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`grating not to perform perfectly as designed. Therefore, even though Katayama
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`describes a 635 nm wavelength completely passing through its grating as a
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`theoretical goal, the diffractive grating of Katayama would at least partially (e.g.,
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`“hardly”) diffract 635 nm wavelength. Thus, the skilled person would see little
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`difference between the teachings of Katayama and that of the ’106 patent.
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`II.
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`INDEPENDENT CLAIM 7
`A. TSST-K’s Claim Construction is Improper
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`3
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`Patent RE43,106
`TSST-K opens its Response by contending that the Phillips claim
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`construction standard instead of the broadest reasonable interpretation (BRI)
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`standard should apply in IPRs. (POR at 1)(citing Phillips v. AWH Corp., 415 F.3d
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`1303, 1313 (Fed. Cir. 2005)). After submission of TSST-K’s POR, the U.S.
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`Supreme Court in In re Cuozzo expressly disavowed this argument upholding BRI
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`as the appropriate standard. 2016 U.S. Lexis 3927, at *30 (noting that “construing
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`a patent claim according to its broadest reasonable construction helps to protect the
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`public.”). TSST-K also contends that its construction is supported by BRI. (POR
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`at 3). But a careful look at its proposed construction reveals that it is improperly
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`attempting to read limitations from the specification into the claims.
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`While ostensibly claiming to adopt Petitioner’s construction in its Patent
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`Owner’s Response, TSST-K’s arguments apply a much narrower construction.
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`TSST-K contends that the recited feature of a “diffractive region … to selectively
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`diffract the first and second light beam as a function of wavelength,” should be
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`interpreted to require that neither the first and second light beams are fully
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`transmitted through the diffractive grating as zeroth order light. (POR at 3)(citing
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`Lebby Dec. at ¶¶ 17-19). Said another way, TSST-K’s construction requires both
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`the first and second beams to be entirely diffracted outside of the zeroth order
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`beam (e.g., both beams have less than 100% transmission through the zeroth order
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`4
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`

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`Case IPR2015-01653
`Patent RE43,106
`beam), whereas in contrast, Petitioner’s construction covers any diffraction of light
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`according to wavelength.
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`To support this narrow construction, TSST-K relies on FIG. 6 of the ’106
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`patent and cherry-picked groove depths of 3.2-3.6 m, where diffraction of both
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`beams is clear. (POR at 4).
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`
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`But the preferred groove depth of the patent is 3.8 m: “[Referring to FIG.
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`6, w]hen the surface groove depth d is 3.8 m, the 650 nm wavelength light is
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`transmitted via the holographic ring 353 by 100% as shown in a solid line
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`overlapped with the symbol “++”, and the 780 nm wavelength light is transmitted
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`via the holographic ring 353 by 0% as shown by the solid line overlapped with a
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`circle. At this time, the holographic ring 353 diffracts the 780 nm wavelength light
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`as the first-order light, in which diffraction efficiency is therefore 40%.” (’106
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`5
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`patent at 6:55-63 (underlining added)). Dr. Lebby agreed that at 3.8 m, the
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`transmissive efficiency of the 650 nm light beam is at or near 100%. (Lebby Dep.
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`164:21-165:4).
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`Moreover, the ’106 patent teaches why the diffractive grating should be
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`designed to transmit 650 nm wavelength light (DVD light) as close to 100%
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`efficiency as possible. The objective lens is designed for DVD and the diffractive
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`grating is only required for CD-R, which uses the 780 nm light. (’106 patent
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`at5:18-22). Thus, there would be no reason to use the range proposed by TSST-K,
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`where transmissive efficiency of the 650 nm light is not close to 100%, and TSST-
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`K’s narrow construction, and the arguments based thereon, should be rejected.
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`1.
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`Petitioner’s construction properly includes all diffraction
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`Petitioner’s construction appropriately uses the terms “selectively” and “as a
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`function of wavelength” to mean that diffraction is wavelength-dependent.
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`(Petition at 11)(citing Mansuripur Dec. at ¶¶ 53-56); (see also, ’106 patent at 5:6-8,
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`noting that the “holographic ring lens 35 selectively diffracts the incident light
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`beam according to the wavelength thereof.”). Particularly, as explained by Dr.
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`Mansuripur, “[t]he diffractive elements described in the ’106 patent are wavelength
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`selective,” in which “the fractional amount of diffraction (ranging anywhere from
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`0% to 100%) of an incident light beam into one or more of the various diffracted
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`orders depends on the wavelength of the incident light beam.” (Mansuripur Dec. at
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`6
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`Case IPR2015-01653
`Patent RE43,106
`¶ 53). In this regard, “[w]hen a beam passes through a diffractive optical element,
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`it emerges as multiple beams propagating in different … directions,” where “[t]he
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`beam that continues to travel in the same direction as the incident beam is called
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`the zeroth-order diffracted beam,” and the “beams that are nearest to … and on
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`opposite sides of the zeroth-order beam are the plus and minus first orders of
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`diffraction.” (Id. at ¶ 53 n.2). TSST-K did not present any arguments or evidence
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`rebutting this testimony.
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`Thus, in Petitioner’s construction, the terms “selectively diffract the first and
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`second light beams as a function of wavelength” means that the amount of
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`diffraction of an incident light beam into an order is a function of the beam’s
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`wavelength. That is, 0% to 100% of a beam’s optical energy is diffracted into one
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`of the orders (i.e., zeroth order, first order, etc.).
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`This construction is fully supported by the ’106 patent specification. Fig. 6
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`of the ’106 patent (reproduced below) illustrates zero-order transmissive efficiency
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`(i.e., the amount of light diffracted into the zeroth order beam) for a 650 nm beam
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`identified by cross members and a 780 nm beam identified by circles. The vertical
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`axis of Fig. 6 is transmissive efficiency and the horizontal axis of Fig. 6 is groove
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`depth of the diffraction grating (e.g., holographic ring 353 of lens 35). The beams
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`in Fig. 6 are being diffracted into an order higher than the zeroth order beam when
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`they are below 1.0 on the vertical axis. (’106 patent at 6:53-63).
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`7
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`Case IPR2015-01653
`Patent RE43,106
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`
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`(’106 Patent at Fig. 6).
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`As illustrated in Fig. 6, depending on the groove depth of the diffraction
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`grating, either (i) 100% of the 650 nm wavelength is diffracted into the zeroth
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`order beam and less than 100% of the 780 nm wavelength is diffracted (e.g.,
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`groove depth approximately 3.8m); (ii) less than 100% of both the 650 nm and
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`780 nm wavelengths are diffracted into the zeroth order beam (e.g., groove depth
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`approximately 3.4m); or (iii) 100% of the 780 nm wavelength is diffracted into
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`the zeroth order beam and less than 100% of the 650 nm wavelength is diffracted
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`into the zeroth order beam (e.g., groove depth approximately 3.0m).
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`Claim 7 is not limited to diffraction into any particular order. (Lebby dep.
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`164:10-13; compare with dependent claim 9 (adding the limitation “wherein the
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`8
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`Case IPR2015-01653
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`diffractive region selectively diffracts the first light beam as first order light”)).
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`Thus, Fig. 6 of the ’106 patent illustrates “selectively” diffracting first and second
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`beams “as a function of wavelength” along a range of groove depths. And 100%
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`transmission of one of the light beams in the zeroth order beam does not mean that
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`light beam is not diffracted according to this claim.
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`2.
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`Dr. Lebby’s testimony fails to support TSST-K’s
`construction
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`Dr. Lebby’s basis for his construction is a narrow disclosure in the ’106
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`patent that states that “the holographic ring 353 is designed to hardly diffract the
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`650 wavelength light, but to diffract the 780 nm wavelength light as a first-order
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`diffracted light.” (’106 patent at 6:24-30). Based on this disclosure, Dr. Lebby
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`concludes that both the recited first and second beams must be diffracted in which
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`a beam is not diffracted if precisely 100% of the beam passes through the
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`diffractive grating (emphasis added):
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`Q One is hardly diffracted and the other one is
`substantially diffracted?
`A Well, the actual words are, "By which the 780
`nanometer wavelength light is all diffracted as first-order light,"
`so you've got a situation here where diffraction occurs for both
`light beams.
`Q But one is hardly diffracted.
`A. That still diffracts.
`Q What's hardly diffracted mean?
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`9
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`Case IPR2015-01653
`Patent RE43,106
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`A It means more than zero.
`Q So if it's more than zero, it's diffracted?
`A Yes.
`(Lebby Dep. at 162:5-17).
`Here, Lebby acknowledges that any small amount of light (e.g., more than
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`zero) diffracted into an order higher than the zeroth order constitutes diffraction as
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`construed by TSST-K. That is, if transmissive efficiency of a wavelength in the
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`zeroth order is less than 100%, the wavelength is at least hardly diffracted (e.g.,
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`partially diffracted), as acknowledged by Dr. Lebby:
`
`Q … Say the transmittance is 99.9995 percent. Would
`you consider the light to be hardly diffracted?
`MR. RHOA: Objection form.
`A What we can say is the majority of light passes
`through, but what it said in this patent is that the light
`completely passes through. That’s a hundred percent.
`That’s not 99.99. That’s -- that's completely passed.
`(Lebby Dep. at 194:22 –195:14).
`Thus, according to Dr. Lebby with respect to TSST-K’s claim construction,
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`the recited feature of diffracting a beam according to a function of wavelength is
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`met if 99.9995% of a wavelength is transmitted into the zeroth order, but not met if
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`100% of the wavelength is transmitted into the zeroth order beam. Fig. 6 shows
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`eight instances, including the preferred embodiment (e.g., groove depth at 3.8 μm),
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`in which 100% of either the 650 nm wavelength or 780 nm wavelength is
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`10
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`

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`Case IPR2015-01653
`Patent RE43,106
`transmitted the zeroth order beam. Under TSST-K’s construction, each of these
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`instances would not be covered by claim 7. However, if one of ordinary skill in
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`the art were to reduce the transmission of light in the zeroth order by only .0005%,
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`then claim 7 would be met.
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`
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`TSST-K’s interpretation of claim 7 is unreasonable, excludes the preferred
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`embodiment, and clearly contradicts the broadest reasonable interpretation of the
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`claims.
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`3.
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`Dr. Mansuripur did not agree to TSST-K’s construction
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`TSST-K relies on the following testimony of Dr. Mansuripur:
`
`A Same paragraph says, Line 19, starting on Line 19,
`“The grating 3002 completely passes the 635-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.
`(Mansuripur Dep. at 13:10-17)(Ex. 2003). Based on this testimony, TSST-K
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`contends that Petitioner’s expert agrees that completely passing through a
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`wavelength through a diffractive grating means that the wavelength passes through
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`the grating without being diffracted. (POR at 15). However, TSST-K is taking Dr.
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`Mansuripur’s testimony out of context with respect to Dr. Mansuripur’s declaration
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`and additional deposition testimony provided by Dr. Mansuripur.
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`11
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`Case IPR2015-01653
`Patent RE43,106
`As discussed above, Dr. Mansuripur’s declaration clearly establishes that all
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`
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`beams passing through a diffractive optical element are diffracted into an order
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`(e.g., zeroth order, first order, etc.). (See e.g., Mansuripur Dec. at ¶¶’s 53 and 56).
`
`This declaration testimony is consistent with Dr. Mansuripur’s deposition
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`testimony in which the term “diffraction” is with respect to an order:
`
`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.
`(Mansuripur Dep. at 23:5-9, emphasis added)(Ex. 2003).
`
`4.
`
`Dr. Lebby’s interpretation of claim 7 should be afforded
`no weight
`
`Dr. Lebby acknowledged that the claim construction included in his opinion
`
`was provided by TSST-K’s counsel:
`
`Q Okay. How did you arrive at your opinion on the
`construction of the term "Selectively diffract the first and
`second light beams as a function of wavelength"?
`A I am under the impression that both sides of this
`case agreed upon this construction. Please tell me if I'm
`incorrect.
`Q I think -- I'm going to be paraphrasing, but it sounds
`like your answer to my question is that you were told this was
`an agreed-upon construction. Is that right?
`
`
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`12
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`Case IPR2015-01653
`Patent RE43,106
`A I was certainly informed of this by counsel, but I
`also saw a document that had agreed upon this construction
`from your side, and I don't remember what that document was.
`(Lebby Dep. at 150:14 – 151:6)(emphasis added).
`
`Thus, it appears that Dr. Lebby was under the impression Petitioners
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`construed claim 7 to exclude 100% transmission into the zeroth order beam, and
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`Dr. Lebby subsequently provided such a construction in his declaration based on
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`this instruction. As such, Dr. Lebby’s opinion should be afforded little weight.
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`B.
`
`The APA and Katayama Disclose the Features of Claim 7 As
`Construed by TSST-K
`
`Even if the Board adopts TSST-K’s construction, the combination of the
`
`APA and Katayama still discloses all the features of claim 7.
`
`1. Katayama discloses diffracting first and second beams as
`construed by Petitioner
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`Katayama at col. 17, ll. 35-43 (Ex. 1002) discloses the following equations
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`and parameters for determining the transmittance of a wavelength passing through
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`the grating 3002 of Katayama:
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`13
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`Case IPR2015-01653
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`Dr. Lebby found this equation to be reasonable, and TSST-K did not present any
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`arguments or evidence challenging the accuracy of these equations. (Lebby Dep.
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`at 183:17-23).
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`
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`As illustrated in these equations, when h=4.14 μm, n=1.46, and λ=635 nm,
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`then Φ=6π, which produces a transmittance level of 100% (i.e., cos2(3π) = 1). In
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`other words, according to these equations in Katayama, when diffractive grating is
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`designed such that Φ is a multiple of π, the transmittance level of the wavelength
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`in the zeroth order beam is 100%. Thus, in the described case, a wavelength of
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`635 nm in theory would have theoretically 100% transmittance in the zeroth order
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`beam, and a wavelength of 785nm, a transmittance level of 5.4% in the zeroth
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`order beam (i.e., the diffractive grating 3002 is designed to diffract the majority of
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`the 785nm wavelength into orders higher than the zeroth order). (See e.g.,
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`Katayama at 17:13-43). But when the wavelength is varied such that Φ is not a
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`multiple of π, the transmittance level of the beam in the zeroth order drops below
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`100% (i.e., the beam is at least partially diffracted into an order higher than the
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`zeroth order).
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`The challenged claims do not require that the first and second light beams
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`must be any particular wavelength. The APA discloses that a high-density optical
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`disk system uses a short wavelength light source 635 nm or 650 nm. (’106 patent
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`at 1:46-50). Dr. Lebby testified that it was known to use 635nm – 655nm in
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`14
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`Case IPR2015-01653
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`commercial applications and that 650nm is what is shown in Fig. 6 of the patent.
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`Dr. Lebby testified that prior to the filing of the patent, he was designing similar
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`systems using 650nm light. (Lebby Dep. at 122:14-18). When a diffraction
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`grating according to the example of Katayama is used with a 650 nm wavelength,
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`Φ is no longer a multiple of π, and the transmittance level of the 650 nm
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`wavelength in the zeroth order beam is less than 100%. Dr. Lebby acknowledged
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`this result:
`
`Q Okay, so if we changed lambda in this equation from
`635 nanometers to 650 nanometers, then psi would no longer be
`six pi. It would be some different number, and the transmittance
`would no longer be 100 percent, correct?
`A It would certainly change.
`(Lebby Dep. at P. 182, ll. 2-7)(emphasis added).
`
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`Thus, the combination of the APA and Katayama results in “a diffractive
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`region … to selectively diffract the first and second light beams as a function of
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`wavelength so as to change a numerical aperture of the objective lens,” as
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`construed by TSST-K, when the first light beam is a 650 nm wavelength and the
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`second light beam is a 785 nm wavelength.
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`2. Modifying Katayama to partially diffract the 635 nm
`wavelength into the first order would have been an
`obvious design choice
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`Furthermore, modifying the design of the diffraction grating 3002 of
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`Katayama such that the 635 nm wavelength is at least partially diffracted into
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`orders higher than the zeroth order beam would have been an obvious design
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`choice well within the skill of one of ordinary skill in the art. (See e.g.,
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`Mansuripur Dec. at ¶¶ 53-56; Lebby Dep. at 177:22 –180:14).
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`As stated by Dr. Mansuripur, the % of a wavelength diffracted into any
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`particular order is merely a matter of how one of ordinary skill in the art designs
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`the wavelength. (Mansuripur Dec. at ¶ 56). Even Dr. Lebby acknowledged that
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`designing a diffractive grating to diffract wavelengths is well within skill of one of
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`ordinary skill in the art:
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`Q So if I had asked you to design for me a diffraction
`grating that would allow a 635 nanometer wavelength laser
`light to entirely pass through it while nearly preventing or
`almost entirely diffracting a 780 nanometer wavelength light,
`would you be able to do that?
`MR. RHOA: Objection form.
`A What you're asking is a hypothetical. What we have
`available today is Figure 6 of the '106 patent. Figure 6 of the
`’106 patent shows diffraction grating with two different
`wavelengths of light, and depending on the design of the
`groove depths, you can diffract different amounts of the
`light from each wavelength.
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`***
`Q How about when you were at Motorola, in the time
`frame that you were working at Motorola, were the engineers
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`at Motorola qualified under your definition of those skilled
`in the art?
`A Yes.
`Q Would they have been able to at that time design a
`diffractive grating that could allow one wavelength of light to
`entirely pass through it while nearly entirely diffracting another
`wavelength of light?
`A Yes.
`(Lebby Dep. at 178:13 –180:14)(emphasis added).
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`Thus, according to Dr. Lebby, the amount of light that is diffracted is merely
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`a matter of design that was well within skill of one of ordinary skill in the art. As
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`such, modifying the grating 3002 of Katayama such that less than 100% of the 635
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`nm wavelength is transmitted into the zeroth order would have been an obvious
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`design choice.
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`3.
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`The skilled person would understand that the diffractive
`grating of Katayama would at least partially diffract the
`635 nm wavelength
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`A diffraction grating manufactured to the specifications of Katayama to
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`diffract 100% of 635 nm wavelength light into the zeroth order beam would still
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`slightly diffract 635 nm wavelength light due to inherent fabricating imperfections.
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`Dr. Lebby acknowledged that these imperfections change the performance of a
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`grating:
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`Q If you were asked to design a grating that adjusted
`laser light, how much diffraction would be required to adjust
`laser light?
`A Depends on the design of the grating. Let's say you
`design a grating for argument's sake hypothetically, and you
`may have slits at a certain thickness apart, slits and spaces,
`but when you fabricate it, they don't come out exactly the
`same, the performance of that grating could change. So
`there are variances in both design and the formation of
`gratings that will change the performance, but as it's stated in
`this patent, '750 patent, column 17, 635 light seems to be
`designed to completely pass that light through the aperture
`in element 2801.
`(Lebby Dep. at 193:7-21)
`
`
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`As illustrated above, Dr. Lebby acknowledges that a diffractive grating may
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`be designed to have slits at a certain thickness apart. However, when this grating is
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`fabricated, the designed slits don’t come out exactly the same or as specified in the
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`design. According to Dr. Lebby, these imperfections in the fabrication process will
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`change the performance of the diffractive grating 3002. Thus, although Katayama
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`states that the 635 nm wavelength is completely passed through, Dr. Lebby’s
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`acknowledges that the skilled person would understand that there is still some
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`diffraction (“I will agree that absolute terms is not something I’ve used in
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`engineering…” Lebby Dep.at196:5-7), and a diffractive grating designed to pass
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`through the 635 nm wavelength through would have a changed performance. That
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`is, due to the fabrication imperfections, at least a portion of the 635 nm wavelength
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`would be diffracted by the grating 3002 of Katayama. As acknowledged by Dr.
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`Lebby, even if the grating 3002 of Katayama only diffracted .0005% of an incident
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`beam into an order higher than the zeroth order, the limitations of claim 7 as
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`construed by TSST-K would still be met. (See Lebby Dep. at 194:22 –195:14).
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`4. Katayama also discloses diffracting in accordance with
`TSST-K’s definition.
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`TSST-K also contends that the term “diffract” should be construed to mean
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`“modulate waves in response to an obstacle, as an object, slit, or grating, in the
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`path of propagation giving rise in light waves to a banded pattern or to a
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`spectrum.” (POR at 6-7)(citing Ex. 2001, , Lebby Dec. at ¶ 22). Based on this
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`construction, TSST-K contends that the 635 nm wavelength passing through the
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`diffractive grating 3002 of Katayama is not modulated because the 635 nm will
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`only see and travel through a glass substrate. (POR at 12-13)(citing Lebby Dec. at
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`¶¶ 27-29).
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`However, these arguments simply do not take into account the fundamentals
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`of light passing through a diffractive grating. As explained in Dr. Mansuripur’s
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`declaration, all light passing through a diffractive grating is diffracted into an
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`order. (See e.g., Mansuripur Dec. at ¶¶ 53 and 56). Thus, light diffracted by a
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`diffractive element into the zeroth order would be light that is modulated “in
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`response to an obstacle, as an object, slit, or grating,” and thus, would meet TSST-
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`K’s definition of diffraction.
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`
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`Thus, for at least these reasons, Claim 7 should be found invalid.
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`C. The Office’s Prior Consideration of the APA and Katayama is not
`Pertinent to the Present Proceeding
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`TSST-K contends that the Office’s prior consideration of the APA and
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`Katayama during the prosecution of the ’106 patent should weigh in favor of
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`patentability of the ’106 patent. (POR at 10). However, the Office’s prior
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`consideration of the ’106 patent is not pertinent to the present proceeding as the
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`Board is not required to come to the same determination as the examiner. See
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`Research in Motion Corp. v. Multimedia Ideas LLC, IPR2013-00036, Institution
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`Decision, Paper 15, at 6 (PTAB 2013)(noting that “[a] petition for inter partes
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`review is not a renewed request for patent reexamination,” where in a prior
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`examination of the patent, “the patent owner should not expect that the Board
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`necessarily would come to the same conclusion.”).
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`III. CLAIMS 8-19
`A. Dependent Claim 13
`Claim 13, which depends from claim 7, recites that “the diffractive region is
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`optimized to selectively diffract the first and second light beams such that the
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`numerical aperture of the objective lens is greater for the second optical recording
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`medium than for the first optical recording medium.” TSST-K contends that claim
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`13 requires the diffractive region to diffract both the first and second light beams,
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`and thus, Katayama fails to disclose or suggest the features of claim 13 for at least
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`the same reasons provided in the POR for claim 7. (POR at 18). However, for at
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`least the reasons discussed above,