UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS, INC., and
`LG ELECTRONICS U.S.A., INC.
`Petitioners
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA CORPORATION
`Patent Owner
`_______________
`
`Patent No. RE43,106
`_______________
`
`
`
`PETITION
`to Institute an Inter Partes Review of U.S. Patent No. RE43,106
`under 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
`
`

`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... V
`
`EXHIBIT LIST ...................................................................................................... VII
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`
`II. GROUNDS FOR STANDING ........................................................................ 1
`
`III. MANDATORY NOTICES ............................................................................. 2
`
`IV.
`
`IDENTIFICATION OF CHALLENGES ........................................................ 3
`
`V.
`
`SUMMARY OF THE ’106 PATENT ............................................................. 3
`
`A. Overview .......................................................................................................... 3
`
`B. The ’106 Patent ................................................................................................ 4
`
`1. Conventional Optical Pickups Were Compatible With Both CDs and DVDs 4
`
`2. The Purported Invention of the ’106 Patent is the Use of a Diffractive
`Element Rather than the Thin Film Element of Conventional Optical
`Pickups ............................................................................................................. 8
`
`C. Challenged Claims of the ’106 Patent ........................................................... 11
`
`D. Claim Construction ........................................................................................ 12
`
`E. Prosecution History ....................................................................................... 13
`
`1. Prosecution of the ’611 Application .............................................................. 14
`
`2. Prosecution of the Reissue Application ......................................................... 15
`
`VI. PERSON OF ORDINARY SKILL IN THE ART ........................................ 16
`
`VII. CLAIMS 7-19 OF THE ’106 PATENT ARE UNPATENTABLE .............. 17
`
`A. The ’106 Patent Presents an Obvious Variation of Conventional Optical
`Pickups ................................................................................................................. 19
`
`
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`B. Ground 1 – Claims 7-19 of the ’106 Patent Are Obvious Over Admitted
`Prior Art and Katayama ....................................................................................... 22
`
`1. One of Ordinary Skill in the Art Would Have Combined Katayama and the
`Admitted Prior Art to Arrive at the Lens of Claim 7 .................................... 22
`
`2. Claim 7 ........................................................................................................... 25
`
`3. Claim 8 ........................................................................................................... 40
`
`4. Claims 9-11 .................................................................................................... 42
`
`5. Claim 12 ......................................................................................................... 45
`
`6. Claims 13-17 .................................................................................................. 47
`
`7. Claim 18 ......................................................................................................... 51
`
`8. Claim 19 .......................................................................................................534
`
`9. Secondary Considerations ............................................................................. 55
`
`VIII. CONCLUSION .............................................................................................. 59
`
`
`
`
`
`
`
`iv
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
`
`
`TABLE OF AUTHORITIES
`
`Cases 
`
`Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008) ..................... 24
`
`Concrete Appliances Co. v. Gomery, 269 U.S. 177 (1925) ..................................... 56
`
`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988) ......... 17
`
`Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361 (Fed. Cir. 2000) ..... 59
`
`Geo M. Martin Co. v. Alliance Mach. Sys. Int'l LLC, 618 F.3d 1294
`(Fed. Cir. 2010) .................................................................................................... 56
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) ........................ 12
`
`In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 U.S. App. LEXIS
`11714 (Fed. Cir. July 8, 2015) ............................................................................. 12
`
`In re Nomiya, 509 F.2d 566 (CCPA 1975) .............................................................. 17
`
`Intri-Plex Technologies Inc. v. Saint-Gobain Perf. Plastics Rencol Ltd., Case
`No. IPR 2014-00309, 2014 WL 2623456 (P.T.A.B. June 10, 2014). ................. 17
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................................... 23
`
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008) ...... 23
`
`The Int'l Glass Co. v. United States, 408 F.2d 395 (Ct. Cl. 1969) .......................... 59
`
`Tokyo Keiso Co., LTD v. SMC Corp., 307 Fed. Appx. 446 (Fed. Cir. 2009) .......... 17
`
`Statutes 
`
`35 U.S.C. § 102(a) ................................................................................................... 19
`
`35 U.S.C. § 102(e) ................................................................................................... 19
`
`35 U.S.C. § 103(a) .................................................................................................1, 3
`
`35 U.S.C. § 311-319................................................................................................... 1
`
`
`
`v
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`
`Rules 
`
`37 C.F.R. § 42.100 ..................................................................................................... 1
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`
`37 C.F.R. § 42.101 ..................................................................................................... 1
`
`37 C.F.R. § 42.101(a)-(c) .......................................................................................1, 2
`
`37 C.F.R. § 42.8(b)(1)-(4) ......................................................................................2, 3
`
`
`
`
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`vi
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`
`EXHIBIT LIST
`
`Reference
`
`U.S. Patent No. RE43,106 to Yoo et al. (filed Sept. 4, 2007) (issued
`on Jan. 7, 2012) (the “’106 patent”)
`
`U.S. Patent No. 5,696,750 to Katayama (filed Jun. 5, 1996) (issued
`Dec. 9, 1997) (“Katayama”)
`
`“Optical Pick-Up for DVD,” by Shinoda et al., IEEE Transactions on
`Consumer Electronics, Vol. 42, No. 3 (August 1996) (“Shinoda”)
`
`“Impact of Diffractive Optics on the Design of Optical Pick Up,” by
`Lehureau, Proc. SPIE 2783, Micro-Optical Technologies for
`Measurement, Sensors, and Microsystems, 22-29 (August 26, 1996)
`(“Lehureau”)
`
`“Dual Focus Optical Head for 0.6mm and 1.2mm Disks,” by Komma
`et al., SPIE Vol. 2338 Optical Data Storage, 282-288 (1994)
`(“Komma Article”)
`
`U.S. Patent No. 5,446,565 to Komma et al. (filed Feb. 1, 1994)
`(issued Aug. 29, 1995) (“Komma Patent”)
`
`U.S. Patent No. 5,526,338 to Hasman et al. (filed Mar. 10, 1995)
`(issued Jun. 11, 1996) (“Hasman”)
`
`“Effect of Aberrations and Apodization on the Performance of
`Coherent Optical Systems,” by J.P. Mills and B. J. Thompson, J. Opt.
`Soc. Am. A/Vol. 3, No. 5 (May 1986) (“Mills Article”)
`
`Fundamentals of Optics, by F. Jenkins & H. White, Fourth Edition
`(1976) (“Jenkins & White”)
`
`Handbook of Optics – Devices, Measurements, & Properties Volume
`II, by Michael Bass, Second Edition (1995) (“Bass”)
`
`U.S. Patent No. 5,349,471 to Morris et al. (filed Feb. 16, 1993)
`(issued Sep. 20, 1994) (“Morris”)
`
`Ex.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`vii
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`

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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`
`1012
`
`Declaration of Masud Mansuripur, Ph.D.
`
`1013
`
`Application No. 09/930,964 Preliminary Amendment, June 16, 2003
`
`1014
`
`Application No. 09/930,964 Non-Final Office Action, June 4, 2004
`
`1015
`
`Application No. 09/930,964 Amendment, September 1, 2004
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`Application No. 09/930,964 Notice of Allowability, November 18,
`2004
`
`Application No. 11/849,609 Preliminary Amendment, November 7,
`2008
`
`Application No. 11/849,609 Non-Final Office Action, February 17,
`2011
`
`Application No. 11/849,609 Notice of Allowance and Fees Due,
`August 30, 2011
`
`U.S. Patent No. 6,556,990 to Kajiyama et al. (PCT filed Sept. 1997)
`(Issued April 22, 2003) (“Kajiyama”)
`
`viii
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`

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`LG’s Petition for IPR of U.S. Patent No. RE43,106
`
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
`Petitioners, LG Electronics, Inc. and LG Electronics U.S.A., Inc.
`
`
`
`(collectively “LG” or “Petitioners”), respectfully request that the United States
`
`Patent and Trademark Office (“USPTO”) institute inter partes review (“IPR”)
`
`under 35 U.S.C. § 311–319 and 37 C.F.R. § 42.100 et seq., and cancel claims 7-19
`
`of U.S. Patent No. RE43,106 (“the ’106 patent”) (Ex. 1001), assigned to Toshiba
`
`Samsung Storage Technology Korea Corporation (“TSST-K” or “Patent Owner”),
`
`as being invalid under 35 U.S.C. § 103(a) (Pre-AIA) in light of the grounds
`
`presented herein.
`
`II. GROUNDS FOR STANDING
`
`Petitioners hereby certify that the ’106 patent for which review is sought is
`
`available for IPR. Specifically: (1) none of the Petitioners is an owner of the ’106
`
`patent, see § 42.101; (2) before the date on which this Petition for review was filed,
`
`none of the Petitioners or Petitioners’ real parties-in-interest filed a civil action
`
`challenging the validity of a claim of the ’106 patent, see § 42.101(a); (3)
`
`Petitioners requesting this proceeding have not filed this Petition more than one
`
`year after the date on which at least one of the Petitioners, Petitioners’ real party-
`
`in-interest, or a privy of Petitioners was served with a complaint alleging
`
`infringement of the ’106 patent, see § 42.101(b); and (4) Petitioners, Petitioners’
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`1
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`

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`real parties-in-interest, or a privy of Petitioners are not estopped from challenging
`
`LG’s Petition for IPR of U.S. Patent No. RE43,106
`
`
`the claims on the grounds identified in this Petition, see § 42.101(c).
`
`III. MANDATORY NOTICES
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioners and non-petitioner LG
`
`International (America), Inc. (“LGIA”) are the real parties-in-interest for this
`
`Petition. Pursuant to 37 C.F.R. § 42.8(b)(2), the other judicial or administrative
`
`matters that would likely affect, or be affected by, a decision in this proceeding
`
`are: LG Electronics, Inc. et al. v. Toshiba Samsung Storage Technology Korea
`
`Corporation, Case No. 1:12-cv-01063 (D. Del.) (counterclaim of infringement of
`
`the ’106 patent severed and dismissed without prejudice to TSST-K’s right to
`
`refile).
`
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioners provide the following
`
`designation of counsel:
`
`
`
`
`
`Email:
`
`Postal:
`
`Lead Counsel
`
`Back-Up Counsel
`
`Jason Shapiro (Reg. # 35,354) Michael Battaglia (Reg. # 64,932)
`
`jshapiro@rothwellfigg.com
`
`mbattaglia@rothwellfigg.com
`
`ROTHWELL, FIGG, ERNST &
`
`ROTHWELL, FIGG, ERNST &
`
`MANBECK, P.C.
`
`MANBECK, P.C.
`
`607 14th Street, N.W., Suite 800
`
`607 14th Street, N.W., Suite 800
`
`Washington, DC 20005
`
`Washington, DC 20005
`
`2
`
`

`
`LG’s Petition for IPR of U.S. Patent No. RE43,106
`
`
`Same as Postal
`
`Same as Postal
`
`202-783-6040
`
`202-783-6031
`
`202-783-6040
`
`202-783-6031
`
`Hand
`Delivery:
`
`Telephone:
`
`Facsimile:
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on either Jason Shapiro or Michael Battaglia as identified above, and as
`
`appropriate to the foregoing mailing/email addresses.
`
`IV.
`
`
`IDENTIFICATION OF CHALLENGES
`Petitioners are requesting inter partes review and cancellation of claims 7-19
`
`of the ’106 patent (the “challenged claims”) as obvious under 35 U.S.C. §103(a)
`
`(Pre-AIA). The grounds of invalidity of claims 7-19 are summarized below:
`
`Ground No. Claim No(s). Proposed Statutory Rejections for the Claims of
`the ’106 Patent
`
`1
`
`7-19
`
`Obviousness under § 103(a) in view of the
`Admitted Prior Art and Katayama
`
`
`V. SUMMARY OF THE ’106 PATENT
`A. Overview
`The ’106 patent is a Reissue of U.S. Patent No. 7,046,611 (the “’611
`
`patent”), titled “Optical Pickup Compatible with a Digital Versatile Disk and a
`
`Recordable Compact Disk Using a Holographic Ring Lens.” The ’106 patent
`
`reissued on January 7, 2012, and identifies Jang-Hoon Yoo and Chul-Woo Lee as
`
`3
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`

`
`inventors. The challenged claims were issued in the ’611 patent, and are not
`
`LG’s Petition for IPR of U.S. Patent No. RE43,106
`
`
`among the new claims added during reissue.
`
`B. The ’106 Patent
`The ’106 patent relates to optical data storage and retrieval systems and
`
`elements that are compatible with optical disks of different thicknesses, such as
`
`digital video disks (DVDs) and recordable compact disks (CD-Rs). Ex. 1001,
`
`3:33-38. In the disclosed systems, two light beams having different wavelengths
`
`are used with a diffractive element (either an individual component or integral with
`
`an objective lens) for reading information from and/or recording information onto
`
`the disks. See, e.g., Ex. 1001, 3:43-62; Ex. 1012, ¶¶ 51-56 (summarizing the ’106
`
`patent). See also Ex. 1012, ¶¶ 36-50 (summarizing the background of the relevant
`
`technology).
`
`1. Conventional Optical Pickups Were Compatible With Both
`CDs and DVDs
`
`As set forth in the ’106 patent’s “Description of the Related Art” and
`
`associated figures (referred to herein as “the Admitted Prior Art” or “APA”),
`
`optical pickups that were compatible with both DVD and CD-R disks were already
`
`known in the art at the time of filing. Ex. 1001, 1:58-1:67; see also Ex.1002, 1:11-
`
`16 (“A first prior art optical head apparatus has been known for two types of
`
`disks”); Ex. 1012, ¶ 70. An example of a “conventional” optical pickup for use
`
`4
`
`

`
`with both DVD and CD-R disks is provided in FIG. 1 (“PRIOR ART”) and
`
`LG’s Petition for IPR of U.S. Patent No. RE43,106
`
`
`reproduced below:
`
`
`
`(annotated to identify “objective lens 17” and “variable aperture 16”); see Ex.
`
`1001, 4:3-4 (“conventional optical pickup”); Ex. 1012, ¶ 71. In the prior art optical
`
`pickup shown in FIG. 1, “[t]he light beam of the 635 nm wavelength emitted from
`
`the first laser light source 11 is focused by the objective lens 17 on an information
`
`recording surface in the DVD 18 having a thickness of 0.6 mm.” Ex. 1001, 2:28-
`
`36. Similarly, “[l]ight having the 780 nm wavelength emitted from the second
`
`laser light source 21” is used for reading and writing to CD-R 25 and “passes
`
`through a variable aperture 16 having a thin film structure and then is incident on
`
`an objective lens 17.” Ex. 1001, 2:8-55 (“By using the variable aperture 16 … the
`
`5
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`

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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`light beam of the 780 nm wavelength forms an optimized beam spot on the
`
`information recording surface of the CD-R 25.”). See also Ex. 1012, ¶¶ 72-77
`
`(describing operation of the system in FIG. 1).
`
`
`
`The structure of the “thin-film type variable aperture 16 of FIG. 1” is shown
`
`in FIG. 2, which is also labeled “PRIOR ART”:
`
`
`
`See Ex. 1001, 2:56, 4:5-6. The effective numerical aperture of this conventional
`
`thin-film variable aperture 16 changes as a function of wavelength:
`
`[T]he variable aperture 16 is partitioned into two regions based on the
`numerical aperture (NA) of 0.45 with respect to an optical axis.
`Among the two regions, a first region 1 transmits both light beams of
`635 nm wavelength and 780 nm wavelength. A second region 2
`totally transmits the light beam of the 635 nm wavelength and totally
`reflects the light beam of the 780 nm wavelength.
`
`
`Ex. 1001, 2:60-66 (emphasis added). That is, variable aperture 16 selectively
`
`transmits and reflects the first and second light beams as a function of wavelength
`
`6
`
`

`
`so as to change a numerical aperture of the objective lens 17. See Ex. 1012, ¶¶ 73-
`
`LG’s Petition for IPR of U.S. Patent No. RE43,106
`
`
`75.
`
`
`
`By using the wavelength-selective variable aperture 16, the prior art system
`
`of FIG. 1 is compatible with both CD and DVD, with optimized beam spots and
`
`reduced spherical aberration. See Ex. 1001, 2:27-3:12; Ex 1012, ¶¶ 75-77
`
`(explaining that the reduction in numerical aperture reduces spherical aberration by
`
`eliminating certain rays at the periphery of the objective lens).
`
`
`
`Although the prior art “conventional” optical system using a “thin-film type
`
`variable aperture” was compatible with disks of different thicknesses (i.e., CD and
`
`DVD), the ’106 patent states that this system is difficult to mass produce due to the
`
`nature of thin-film processing:
`
`However, the optical pickup shown in FIG. 1 and as described above
`should form a “finite optical system” with respect to the 780 nm
`wavelength light in order to remove any spherical aberration
`generated when changing a DVD compatibly with a CD-R. Also, due
`to the optical thin film, that is, the dielectric thin film, which is formed
`in the region 2 of the variable aperture 16 having the NA of 0.45 or
`above, an optical path difference between the light transmitted
`through the region 1 having the NA of 0.45 or below and that
`transmitted through the region 2 having the NA of 0.45 or above, is
`generated. To eradicate this difference, it is necessary to form an
`optical thin film in the region 1. Due to this reason, a quartz coating
`(SiO2) is formed in the region 1 and a multi-layer thin film is formed
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`7
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`in the region 2. However, such a fabricating process does not only
`become complicated but also adjustment of the thickness of the thin
`film should be performed precisely in units of “μm”. Thus, it has been
`difficult to mass-produce the optical pickup.
`
`
`Ex. 1001, 3:13-29 (emphasis added).
`
`2. The Purported Invention of the ’106 Patent is the Use of a
`Diffractive Element Rather than the Thin Film Element of
`Conventional Optical Pickups
`
`In order to address the above-identified issues, the ’106 patent proposes the
`
`use of a diffractive element in place of the thin-film type variable apertures of the
`
`prior art systems. See 3:33-62 (“using a holographic lens to remove a spherical
`
`aberration generated due to a difference in thickness between optical disks”).1,2
`
`That is, rather than using a thin-film layer to vary the effective numerical aperture
`
`
`1 Diffractive optical elements operate on the principle of optical diffraction (as
`
`opposed to reflection or refraction), typically from periodic or quasi-periodic
`
`grooved structures. Ex. 1012, n.1.
`
`2 As explained by Dr. Mansuripur, aside from the “type” of variable aperture used,
`
`the differences between the system of FIG. 1 (“PRIOR ART”) and FIG. 3
`
`(“embodiment of the present invention”) are minimal, largely due to how elements
`
`were arranged in the figures, and/or outside the scope of the challenged claims 7-
`
`19. See Ex. 1012, ¶ 62.
`
`8
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`according to wavelength, the embodiments of the ’106 patent use a diffractive
`
`element that is wavelength dependent to vary effective numerical aperture. See Ex.
`
`1001, 5:6-10, 5:66-6:3 (“the holographic ring lens 35 used in the present invention
`
`can selectively adjust the numerical aperture (NA) of the objective lens according
`
`to the wavelengths of the light beam, and requires no separate variable aperture”);
`
`Ex. 1012, ¶ 61; compare FIG. 2 (“structure of a conventional variable aperture”)
`
`with FIG. 4B (“plane surface of the holographic ring lens”):
`
`
`
`
`
`
`
`The ’106 patent notes that the diffractive element can be either an
`
`independent component, or formed as an integral part of the objective lens. See
`
`Ex. 1001, 4:43-47 and 7:21-28 (“The holographic ring lens 35 having the above
`
`functions may be manufactured integrally with an objective lens … The integrally
`
`incorporated holographic ring lens has the same function as the holographic ring
`
`lens 35.”). Since techniques for integrating diffractive elements onto a lens were
`
`well known, the ’106 patent does not provide any details regarding the specific
`
`9
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`manufacture of an integral component other than that it can be etched or molded
`
`onto the lens. See discussion, infra at Section VII(B)(1); Ex. 1012, ¶¶ 83-85
`
`(“Diffractive elements were typically formed on one or more surfaces of a lens
`
`using a lithographic process, or molding, or stamping. These techniques were well
`
`known at the time of the filing of the ’106 patent.”).
`
`
`
`However, as described in detail below, the substitution of a thin-film
`
`aperture with a diffractive element in the conventional system of the Admitted
`
`Prior Art would have been obvious to one of ordinary skill in the art as of the
`
`earliest filing date of the ’106 patent because they perform the same function; i.e.,
`
`wavelength-selective aperture variation. See Ex. 1012, ¶ 79. In fact, it was known
`
`that a thin film variable aperture and a diffractive-type variable aperture were
`
`interchangeable in an optical system to achieve the same result. See, e.g., Ex.
`
`1012, ¶ 80 (citing Ex. 1002, 16:37-17:30). Moreover, the use of diffractive
`
`elements was a well-known solution to the well-known problems associated with
`
`optical systems compatible with both CDs and DVDs, and would have yielded
`
`predictable results. See discussion, infra at Section VII(B)(1); Ex. 1012, ¶¶ 66-69,
`
`80. Claims 7-19 recite nothing more than the combination of familiar elements in
`
`a conventional arrangement. Id.
`
`10
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
`
`
`C. Challenged Claims of the ’106 Patent
`Claim 7 is the only independent claim of the ’106 patent that is currently
`
`
`
`challenged, and reads:
`
`7. An objective lens to form beam spots of different sizes using
`corresponding first and second light beams of respectively different
`wavelengths, the objective lens comprising:
`
`an inner region including an optical center of the objective lens which
`has an optical property optimized to focus the first light beam onto a
`first optical recording medium of a first thicknesses and to focus the
`second light beam onto a second optical recording medium of a
`second thickness other than the first thickness; and
`
`a diffractive region surrounding said inner region and comprising an
`optical property optimized so as to selectively diffract the first and
`second light beams as a function of wavelength so as to change a
`numerical aperture of the objective lens.
`
`Ex 1001, 8:18-31 (emphasis added). Thus, claim 7 is directed to an objective lens
`
`having: (1) an inner region for focusing two light beams of different wavelengths
`
`onto two recording mediums of different thicknesses; and (2) a diffractive region,
`
`surrounding the inner region, that selectively diffracts the first and second light
`
`beams as a function of wavelength. As a result of the wavelength-dependent
`
`diffraction, the effective numerical aperture of the lens changes as a function of
`
`wavelength. See Ex. 1012, ¶¶ 53-56.
`
`11
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`

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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`
`
`Claims 8-19 depend directly, or indirectly, from claim 7. The dependent
`
`claims are largely directed to well-known principles of operation of the lens of
`
`claim 7 and obvious design choices (see, e.g., claims 10, 11, and 16). Aside from
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`claims 10, 11, and 16, the challenged dependent claims do not add any additional
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`structure to the objective lens of independent claim 7. Rather, they recite the
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`function of the lens.
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`D. Claim Construction
`For purposes of inter partes review, each challenged claim must be given
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`
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`“its broadest reasonable construction in light of the specification.” 37 C.F.R. §
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`42.100(b); see also In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 U.S.
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`App. LEXIS 11714, *24 (Fed. Cir. July 8, 2015). The broadest reasonable
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`interpretation (BRI) must be consistent with the construction that one of ordinary
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`skill in the art would reach and must take into account any special definition given
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`to a claim term in the specification. In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d
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`1359, 1364 (Fed. Cir. 2004). Below is the proposed construction for the phrase
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`“selectively diffract the first and second light beams as a function of wavelength.” 3
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`3 Because the claim construction standard in an IPR is different than that used in
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`litigation, Petitioners expressly reserve the right to present different constructions
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`of terms in the related litigation. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at
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`1369.
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`All other terms, not discussed below, should be given their plain and ordinary
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`meaning. Petitioners reserve the right to address any claim construction issue
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`raised by Patent Owner.
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`The broadest reasonable interpretation of the phrase “selectively diffract the
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`first and second light beams as a function of wavelength” is “diffract the first
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`and second light beams according to their respective wavelengths.” This is
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`consistent with the phrase’s use in the claim, its ordinary and customary meaning,
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`and with the specification of the ’106 patent, which does not provide an express
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`definition for “selectively diffract … as a function of wavelength.” See, e.g., Ex.
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`1001, 4:43-45, 5:6-8, 5:66-6:3; Ex. 1012, ¶¶ 63-64.
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`E. Prosecution History
`The ’106 patent issued on January 17, 2012 from U.S. Patent Appl. No.
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`
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`11/849,609 (the “reissue application”), which was filed on September 4, 2007.
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`The ’106 patent is a reissue of the’611 patent, originally issued on May 16, 2006
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`from U.S. Patent Appl. No. 09/930,964 (the “’611 application”), which was filed
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`on August 17, 2001. The ’611 application was filed as a continuation of U.S.
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`Patent Appl. Nos. 09/419,792 and 09/049,988 filed Oct. 18, 1999 and March 30,
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`1998, respectively, which in turn claim priority to Korean Patent Application No.
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`97-11297, filed March 28, 1997.
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`1. Prosecution of the ’611 Application
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`
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`The ’611 application was filed with 6 original claims. The applicant
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`submitted a preliminary amendment June 16, 2003, making amendments to claim 1
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`and adding new claims 7-37. Ex. 1013. Each of the challenged claims was added
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`at this time. See id. Claims 1-27 and 36 were directed to objective lenses, claims
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`28-35 were directed to optical systems, and claim 37 was directed to an optical
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`pickup.
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`
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`The Examiner made only one rejection prior to allowance. In a non-final
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`rejection, dated June 4, 2004, the Examiner rejected only claim 36 and indicated
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`that claims 1-35 and 37 were allowable. Ex. 1014. The Examiner provided a
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`cursory explanation of his reasons for indicating that claims 1-35 and 37 were
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`allowable, stating:
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`The prior art of record alone or in combination does not teach or
`suggest the objective lens having the specific recited structure,
`including the specific structure of the inner region, holographic region
`and diffractive region, along with functioning properties with light
`beams of different wavelengths, as set forth in claims 1-35 and 37.
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`Id. at p. 3. The examiner rejected claim 36, however, indicating that claim 36 in its
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`original form was anticipated by U.S. Patent No. 5,446,565 issued to Komma et al.
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`(Ex. 1006). Id. at p. 2 (“Komma et al. discloses the invention as claimed. Fig.
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`19A-20 show the objective lens (46) for an optical pickup comprising the
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`holographic region (26, 32 or 42), wherein the region comprises a plurality of
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`grating on the objective lens, as set forth in claims 36.”) (internal citation omitted).
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`
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`In response, the applicant submitted remarks and an amendment modifying
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`only claim 36. Ex. 1015. While the applicant acknowledged that the Komma
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`Patent discloses forming multiple light spots S1, S2, it asserted that the Komma
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`Patent “does not disclose or suggest that the light spots S1, S2 correspond to
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`different light beams, or that the gratings 26, 32, or 42 selectively diffract light
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`beams.” Id. at p. 11 (emphasis added). In other words, the applicant distinguished
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`the prior art on the basis of two different wavelength light sources, and wavelength
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`selective diffraction.
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`
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`The Examiner subsequently allowed all claims in an Office Action dated
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`November 18, 2004. Ex. 1016. The ’611 patent issued on May 16, 2006.
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`2. Prosecution of the Reissue Application
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`The reissue application was filed September 4, 2007, restating issued claims
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`1-37 and adding new claims 38-49. The applicant submitted a preliminary
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`amendment November 7, 2008, amending claims 38, 40, 42, 43, 45 and 46 and
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`adding claims 50-67. Ex. 1017.
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`
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`The Examiner made only one rejection prior to allowance. The single non-
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`final rejection, dated February 17, 2011, rejected all claims as being based upon a
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`defective reissue declaration. Ex. 1018. Claims 38, 39, 42, 45-47, 50, 51, 56, 57,
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`62, 65 and 66 were further rejected as being anticipated by U.S. Patent No.
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`5,665,957 to Lee et al. (“Lee”). The remaining claims were indicated allowable
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`over the prior art. Specifically, claims 1-37 were indicated allowable for “the same
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`reasons as provided in the history of prosecution of [the ’661 application].” Id. at p.
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`5.
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`
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`Following the submission of a supplemental declaration, and amendments to
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`the new claims, the Examiner issued a Notice of Allowance indicating all claims
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`allowable, and the ’106 patent issued on January 17, 2012. Ex. 1019.
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`VI.
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`PERSON OF ORDINARY SKILL IN THE ART
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`The relevant field of the challenged claims of the ’106 patent is optical data
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`storage and retrieval, including optical pickup systems and components. Ex. 1012,
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`¶ 33. A person of ordinary skill in the relevant field as of March 28, 1997, would
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`have had familiarity with optical data storage and retrieval devices, including
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`optical pickup systems and components for use with CDs and DVDs, and at least a
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`Bachelor of Science degree in electrical engineering and/or physics and 3-5 years
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`of experience working in the field of optical data storage and retrieval, or a
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`comparable amount of combined education and equivalent work experience with
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`respect to optical pickup systems and devices. Ex. 1012, ¶ 34.
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`LG’s Petition for IPR of U.S. Patent No. RE43,106
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`VII. CLAIMS 7-19 OF THE ’106 PATENT ARE UNPATENTABLE
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` The subject matter of the challenged claims of the ’106 patent is an obvious
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`variation of the “conventional,” “PRIOR ART” optical system described in the
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`Background of the ’106 patent. 4
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`
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`For example, if one were to replace the word “diffractive” with the word
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`“reflecting” in claim 7, it would merely be a description of the conventional, thin-
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`film variable aperture 16 integrated with objective lens 17 of the “PRIOR ART”
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`system in FIGS. 1 and 2:
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`7. An objective lens to form beam spots of different sizes using
`corresponding first and second light beams of respectively different
`wavelengths, the objective lens comprising:
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`