UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
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`v.
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`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00177
`Patent 8,537,279 B2
`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`QB\43422558.1
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`I.
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`II.
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`2.
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`C.
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`TABLE OF CONTENTS
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`Page
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`THE BOARD SHOULD NOT INSTITUTE INTER PARTES
`REVIEW ......................................................................................................... 1
`THE BOARD SHOULD DECLINE TO CONSIDER
`ST IMAGING’S GROUNDS AND REFERENCES BECAUSE
`THEY ARE CUMULATIVE AND REDUNDANT ..................................... 2
`A.
`The Cited Art Is Cumulative Of Prior Office Proceedings .................. 2
`B.
`The Proposed Grounds Of Rejection Are Horizontally
`Redundant ............................................................................................. 5
`III. ST IMAGING BEARS THE BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD THAT THE CLAIMS WOULD
`HAVE BEEN OBVIOUS ............................................................................... 7
`IV. CLAIM CONSTRUCTION ........................................................................... 8
`V. GROUND 1: ST IMAGING IS NOT REASONABLY LIKELY TO
`PROVE THAT CLAIMS 44 AND 49 WOULD HAVE BEEN
`OBVIOUS OVER FUJINAWA IN VIEW OF KOKUBO ............................ 9
`A.
`ST Imaging’s Rationale For Modifying Fujinawa Is Deficient ......... 11
`1.
`Stating that a modification is a simple substitution is
`insufficient ............................................................................... 12
`The potential benefits of belts in generic applications do
`not show why one would have modified Fujinawa ................. 14
`B. One Of Skill In The Art Would Have Been Discouraged From
`Modifying Fujinawa In The Manner Proposed By ST Imaging ........ 16
`The Combination Of Fujinawa and Kokubo Would Not Result
`In The Claimed Invention .................................................................. 20
`VI. GROUND 2: ST IMAGING IS NOT REASONABLY LIKELY TO
`PROVE THAT CLAIMS 44 AND 49 WOULD HAVE BEEN
`OBVIOUS OVER FUJINAWA IN VIEW OF WATANABE. ................... 21
`A.
`ST Imaging’s Rationale For Modifying Fujinawa Is Deficient ......... 22
`B.
`It Would Not Have Been Obvious To Modify Fujinawa With
`Watanabe To Arrive At The Claimed Invention ................................ 24
`C. Neither Fujinawa Nor Watanabe Discloses A Belt ............................ 26
`VII. CONCLUSION ............................................................................................. 27
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`Number
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`2001
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`LIST OF EXHIBITS
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`Brief Description
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`6/6/2013 Information Disclosure Statement submitted
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`by applicant, Application Serial No. 13/560,283
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`6/17/2013 List of References cited by applicant and
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`2002
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`considered by examiner, Application Serial No.
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`13/560,283
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`2003
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`6/25/2013 Notice of Allowance and Fee(s) Due,
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`Application Serial No. 13/560,283
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`11/4/2016 Claim Construction Order, Dkt. No. 38,
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`2004
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`e-ImageData Corp. v. Digital Check Corp., Civil
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`Action No. 16-cv-576, E. D. Wis.
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`I.
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`THE BOARD SHOULD NOT INSTITUTE INTER PARTES REVIEW.
`The Board should deny ST Imaging’s Petition for inter partes review of U.S.
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`Patent No. 8,537,279 for both procedural and substantive defects.
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`
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`First, the Office has already found the ’279 Patent patentable over the same
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`or substantially the same references that ST Imaging relies upon. The Examiner
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`considered Fujinawa, the primary reference for both grounds of the Petition. The
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`Examiner also considered Watanabe and teachings substantially similar to those of
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`Kokubo.
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`Second, ST Imaging advances multiple alternative grounds for the
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`challenged claims but provides no meaningful distinction between them.
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`Presenting redundant grounds is contrary to the Board’s precedent and
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`ST Imaging’s obligation to present its best case in a petition for inter partes
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`review.
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`Third, ST Imaging improperly used the ’279 Patent as a roadmap for putting
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`together the various elements of the claimed invention. ST Imaging demonstrates
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`its impermissible hindsight reconstruction by failing to articulate any reason why
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`one of skill in the art would have made the proposed modifications.
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`Fourth, as the Office already determined, the teachings of the prior art
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`references do not render the claims obvious. Specifically, ST Imaging’s proposed
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`modifications to Fujinawa’s device would render it unsuitable for its intended
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`purpose while violating longstanding principles of mechanical design and adding
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`needless complexity to an otherwise simple design.
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`For at least the foregoing reasons, ST Imaging’s Petition should be denied in
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`its entirety.
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`II. THE BOARD SHOULD DECLINE TO CONSIDER ST IMAGING’S
`GROUNDS AND REFERENCES BECAUSE THEY ARE
`CUMULATIVE AND REDUNDANT.
`A. The Cited Art Is Cumulative Of Prior Office Proceedings.
`The Board should exercise its discretion not to institute inter partes review
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`because the references cited in the Petition are the same or substantially the same
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`prior art considered by the Examiner during prosecution of the ’279 Patent.
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`Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a); 37
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`C.F.R. § 42.108. The Board may decline to institute an inter partes review when
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`“the same or substantially the same prior art or arguments previously were
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`presented to the Office.” 35 U.S.C. § 325(d). When an Examiner had already
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`considered the prior art at issue, it is not an efficient use of the Board’s or parties’
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`resources to adjudicate a dispute on an already-considered issue. Nu Mark LLC v.
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`Fontem Holdings 1, B.V., IPR2016-01309, Paper No. 11 at *12–13 (P.T.A.B. Dec.
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`15, 2016). This is true even where the Examiner did not specifically address a
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`prior art reference in an Office Action. See id.
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` For example, in Nu Mark, the Board denied institution of inter partes
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`review because the Examiner considered substantially similar prior art during
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`prosecution. Id. The petitioner in Nu Mark asserted a ground of unpatentability
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`based on the combination of Brooks and Whittemore. Id. at 6. During
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`prosecution, an information disclosure statement identified Whittemore and a
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`reference “largely identical” to Brooks. Id. at 6–7. The Examiner indicated that
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`the references were considered by appending the following to the bottom of the
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`information disclosure statement: “ALL REFERENCES CONSIDERED EXCEPT
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`WHERE LINED THROUGH. /D.W.M./.” Id. at 7. The examiner allowed the
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`claims at issue and indicated that the prior art did not teach all of the limitations of
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`the claims. Id. at 7–8. Although the examiner did not mention the reference
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`largely identical to Brooks in an Office Action, the Board nevertheless found that
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`the examiner considered the reference. Id. at 11–12. The Board denied institution
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`because, by relying on previously considered prior art, the petitioner was “asking
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`the Board, essentially, to second-guess the Office’s previous decision on
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`substantially the same issues.” Id. at 12–13.
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`Here, the Examiner considered both Fujinawa (Ex. 1004) and Watanabe (Ex.
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`1006) during prosecution and found that the claims of the ’279 Patent were
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`patentable over the references. The applicant submitted an information disclosure
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`statement that listed Fujinawa and Watanabe. (Ex. 2001 at 3–4.) The Examiner
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`indicated that the references were considered by appending the following to the
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`bottom of the information disclosure statement: “ALL REFERENCES
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`CONSIDERED EXCEPT WHERE LINED THROUGH. /K.D./.” (Ex. 2002; see
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`also MPEP § 609.04(a) (An Examiner’s initials on an IDS form “provide[ ] . . . a
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`clear record in the application to indicate which documents have been considered
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`by the examiner”).) On the same day the Examiner mailed the initialed IDS, the
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`Examiner mailed a notice of allowance that indicating that the cited prior art does
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`not disclose or teach the invention as claimed. (Ex. 2003 at 7.)
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`Because the Examiner considered both Fujinawa and Watanabe before
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`allowing the claims of the ’279 Patent, Petitioner’s Ground 2 is cumulative of prior
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`Office proceedings and should not be instituted. Accordingly, as in Nu Mark, the
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`Board should deny institution of Ground 2 and not second-guess the Office’s
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`previous decision on the same issue.
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`The Board should also deny institution of Ground 1 because it relies on
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`Fujinawa and disclosures substantially similar to those of Watanabe. As Nu Mark
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`demonstrates, the Office need not have considered a specific reference for the
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`disclosure of that reference to be cumulative of prior Office proceedings. The
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`relevant inquiry is whether the Office previously considered the substance of the
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`disclosures relied upon. Nu Mark, IPR2016-01309, Paper No. 11 at *9. If the
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`substance of the disclosures relied upon in the petition was previously presented to
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`and previously considered by the Office, that reference is cumulative under 35
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`U.S.C. § 325(d) even if that reference had not been previously considered. Id.
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`The Office previously considered the substance of Kokubo (Ex. 1005). The
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`substance at issue in Ground 1 is a belt-based drive mechanism having slidingly
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`coupled carriage. The Office previously considered the substance of this
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`disclosure when it evaluated the Watanabe reference, which ST Imaging relies
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`upon the same claim elements. In Ground 1, ST Imaging alleges that Fujinawa
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`discloses all of the claim limitations except for a belt-based drive mechanism
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`where the carriage is slidingly coupled. (Petition at 29.) ST Imaging relies on
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`Kokubo as allegedly disclosing a belt-based drive mechanism where the carriage is
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`slidingly coupled. (Petition at 30.) In Ground 2, ST Imaging relies on Watanabe,
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`which the Office previously considered, as allegedly disclosing this same feature.
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`(Petition at 39.) Because the Office previously considered Fujinawa and
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`Watanabe, and ST Imaging relies on Kokubo for substantially the same teachings
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`as Watanabe, the Kokubo reference is cumulative of prior art already considered.
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`Accordingly, the Board should deny institution on Ground 1 as well as Ground 2.
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`B.
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`The Proposed Grounds Of Rejection Are Horizontally
`Redundant.
`The Board should deny institution on the redundant ground in ST Imaging’s
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`Petition. ST Imaging’s Petition offers horizontally redundant grounds by
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`proposing two grounds of obviousness rejections for each of the challenged claims.
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`The Board has made clear “that multiple grounds, which are presented in a
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`redundant manner by a petitioner who makes no meaningful distinction between
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`them, are contrary to the regulatory and statutory mandates, and therefore are not
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`all entitled to consideration.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins.
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`Co., No. CBM2012-00003, Paper No. 7 at *2 (P.T.A.B. Oct. 25, 2012) (expanded
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`panel). A petitioner presents redundant grounds when it applies a plurality of prior
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`art references as distinct and separate alternatives. Id. at 3. To avoid a
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`determination that a requested ground is redundant, a petitioner must articulate a
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`meaningful distinction of relative strengths and weaknesses of the prior art
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`reference disclosures to one or more claim limitations. LG Elecs., Inc. v. ATI
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`Techs. ULC, No. IPR2015-00330, Paper 17 at 4 (P.T.A.B. Sept. 2, 2015) (internal
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`quotations and citations omitted). But “[s]imply proposing different grounds of
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`unpatentability directed to the same subset of claims does not distinguish
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`meaningfully the applied prior art references.” Aker Biomarine AS v. Neptune
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`Techs., No. IPR2014-00003, Paper 106 at *6 (P.T.A.B. July 9, 2015).
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`Here, in Ground 1, ST Imaging asserts that claims 44 and 49 would have
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`been obvious over Fujinawa in view of Kokubo. In Ground 2, ST Imaging
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`challenges claims 44 and 49 as obvious over Fujinawa in view of Watanabe.
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`Despite asserting multiple grounds for these challenged claims, ST Imaging does
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`not even attempt to set forth any discussion of the grounds’ relative strengths or the
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`relative strengths of the rationales used in the two sets of obviousness challenges.
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`Accordingly, the Board should not institute the redundant ground.
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`III. ST IMAGING BEARS THE BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD THAT THE CLAIMS WOULD HAVE
`BEEN OBVIOUS.
`The Board may institute an inter partes review of a granted patent only if
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`“the information presented in the petition . . . and any [preliminary] response . . .
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`shows that there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`In an inter partes review, the petitioner bears the ultimate burden of proving
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`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
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`In the Petition, ST Imaging’s grounds of unpatentability all allege
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`obviousness. A claim is not unpatentable for obviousness unless the differences
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`between the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art to which the subject matter
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`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Rejections
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`on obviousness grounds cannot be sustained by “mere conclusory statements.”
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`KSR, 550 U.S. at 418; see also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
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`1324, 1330 (Fed. Cir. 2009). The Federal Circuit recently explained that a
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`conclusion of obviousness in an inter partes review must (1) “articulate a reason
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`why a PHOSITA would combine the prior art references”; (2) have an adequate
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`evidentiary basis for that finding; and (3) provide a “satisfactory explanation” for
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`the motivation finding that includes an express and “rational” connection with the
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`evidence presented. In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016).
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`The requirement of an articulated reasoned basis to explain for the
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`obviousness conclusion “remains the primary guarantor against a non-statutory
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`hindsight analysis.” Ortho-McNeil, 520 F.3d at 1364–65. “[A] patent composed
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`of several elements is not proved obvious merely by demonstrating that each of its
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`elements was, independently, known in the prior art.” Id. at 418. “This is so
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`because inventions in most, if not all, instances rely upon building blocks long
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`since uncovered, and claimed discoveries almost of necessity will be combinations
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`of what, in some sense, is already known.” Id. at 418–19. Accordingly, to show a
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`reasonable likelihood of success on its obviousness grounds, ST Imaging must
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`identify a reason that would have prompted one of skill in the art to combine the
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`elements in the way the claimed invention does. KSR, 550 U.S. at 406.
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`ST Imaging has failed to carry its burden.
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`IV. CLAIM CONSTRUCTION
`Since ST Imaging filed the Petition, the district court in the parallel litigation
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`issued its claim construction order. The court adopted the parties’ stipulated
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`construction of “first carriage” and construed the term to mean “first movable
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`support structure.” (Ex. 2004 at 4.) The court also concluded that the preamble
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`phrase “digital microform imaging apparatus” limits the claims. (Ex. 2004 at 19.)
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`Consistent with the Petition, e-Image has interpreted these constructions to be the
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`broadest reasonable interpretations and has applied them herein. (See Petition at
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`18–19.) Regardless of the constructions of these terms, the claims would not have
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`been obvious.
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`V. GROUND 1: ST IMAGING IS NOT REASONABLY LIKELY TO
`PROVE THAT CLAIMS 44 AND 49 WOULD HAVE BEEN
`OBVIOUS OVER FUJINAWA IN VIEW OF KOKUBO.
`ST Imaging has failed to establish that claims 44 and 49 would have been
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`obvious over Fujinawa in view of Kokubo. ST Imaging concedes that Fujinawa
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`does not disclose all of the limitations of claims 44 and 49. (Petition at 29.)
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`Claims 44 and 49 both require a “carriage slidingly coupled to the first lead
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`member.” Claim 44 additionally requires “a first motor coupled to the first
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`carriage via a first belt for moving the first carriage within a range of motion along
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`at least a portion of the first lead member.” Fujinawa does not disclose a carriage
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`slidingly coupled to a lead member or a “motor coupled to the first carriage via a
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`first belt for moving the first carriage within a range of motion along at least a
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`portion of the first lead member.” (Petition at 29.) Instead, Fujinawa discloses a
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`motor 26 having a shaft coupled to a worm that is threadingly coupled to the line
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`sensor 28. (Ex. 1004 Fig. 4.) The line sensor moves with rotation of the motor
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`shaft. Fujinawa also discloses a separate motor 27 having a shaft coupled to a
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`worm that supports a lens 29.
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`Ex. 1004 Fig. 4 (cropped)
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`ST Imaging attempts to remedy the deficiencies of Fujinawa by relying on
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`Kokubo. Kokubo discloses a movable reading unit 6 that contains a fixed mirror
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`37, a movable mirror 38, a lens tube 40 having a series of lenses, a mirror 39 fixed
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`to the lens tube, a mirror 41 fixed to the frame, and a line sensor 42 fixed to the
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`frame. (Ex. 1005 at 11:63–12:8, Fig. 17.) Kokubo discloses that the reading unit 6
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`and its components move as a whole using a motor 7 having a drive gear 7a on a
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`rotation shaft, a drive pulley 8, a driven pulley 9, and a timing belt 10. (Ex. 1005
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`at 9:10–20, Fig. 1 (reproduced below).) ST Imaging erroneously asserts that one
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`of skill in the art would have known to recreate Fujinawa’s device using Kokubo’s
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`belt-based drive mechanism, contending that the modification would have been a
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`“simple substitution.” (Petition at 32.) This proposed combination fails for
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`multiple reasons.
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`Ex. 1005 Fig. 1
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`A.
`ST Imaging’s Rationale For Modifying Fujinawa Is Deficient.
`ST Imaging’s obviousness allegation is deficient on its face because it fails
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`to provide an “articulated reasoning with [] rational underpinning to support the
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`legal conclusions of obviousness.” KSR, 550 U.S. at 418. Obviousness of a claim
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`cannot be proved by merely demonstrating that each of the claim elements was
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`independently known in the prior art. Id. The key to supporting any obviousness
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`allegation is the clear articulation of the reasons why the claimed invention would
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`have been obvious.
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`1.
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`Stating that a modification is a simple substitution is
`insufficient.
`When alleging that a combination is a simple substitution, the Petitioner still
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`must provide a reason why the claimed invention would have been obvious. For
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`example, in TRW Automotive, the Board denied institution of the inter partes
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`review because the petition lacked a supporting articulated reasoning with some
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`rational underpinning. TRW Auto. US LLC v. Magna Elecs. Inc., IPR2014-00258,
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`Paper 16 at *14–15 (P.T.A.B. June 26, 2014). Although the petitioner in TRW
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`Automotive identified all of the claim limitations in the prior art, the petitioner “did
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`not explain why the alleged combination would have been a simple substitution
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`achieving predictable results, or why selecting [an alleged alternative], as opposed
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`to any other, would have been a choice from a finite number of solutions with a
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`reasonable expectation of success.” Id. (emphasis original). The Board also noted
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`that the petitioner’s expert declaration did not elaborate on the petitioner’s position
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`because it simply repeated the petitioner’s conclusory statements. Id.
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`In this case, ST Imaging has similarly failed to provide a supporting
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`articulated reasoning with some rational underpinning. ST Imaging has not
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`provided facts or articulated a reason why a person of ordinary skill in the art
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`would have combined elements from Kokubo with the device of Fujinawa to
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`achieve the claimed invention. See KSR, 550 U.S. at 418. Instead, ST Imaging
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`contends that modifying Fujinawa’s worm arrangement with Kokubo’s drive gear,
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`drive pulley, driven pulley, and timing belt while providing additional guide rails
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`would have been a simple substitution. (Petition at 32.) ST Imaging’s “simple
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`substitution” argument is unsupported by explanation or evidence as to why one of
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`ordinary skill in the art would have made the suggested substitutions, as well as
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`other necessary modifications. It is not sufficient to explain that one of skill in the
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`art would have known how to make the purported modification. InTouch Techs.,
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`Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (assertions that
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`one of ordinary skill in the art could combine references, not that one of ordinary
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`skill in the art would have been motivated to do so, reveals hindsight bias). As the
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`Board explained in TRW Automotive, “that another option existed, in and of itself,
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`does not explain why one of ordinary skill in the art would have been prompted to
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`combine that option with the teachings of the other references at the time of the
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`invention.” IPR2014-00257, Paper 16 at 10. ST Imaging has failed to identify any
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`limitations of the Fujinawa’s arrangement or benefits of its proposed modification
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`that would have motivated one of skill in the art to redesign Fujinawa’s device.
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`Additionally, ST Imaging fails to explain why one of skill in the art would
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`be motivated to add such complexity to the simple design of Fujinawa. The
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`purportedly simple substitution is actually a substantial redesign of Fujinawa’s
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`device. The structure supporting the line sensor would need to be redesigned to be
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`able to accommodate both a rail and a belt. The motor would need to be
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`reoriented. Numerous moving parts would be added. The device would lose the
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`simplicity of the motor shaft rotation directly moving the line sensor. ST Imaging
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`oversimplifies the elements of the claimed invention and ignores modifications that
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`would have been required to make the suggested substitutions.
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`2.
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`The potential benefits of belts in generic applications do not
`show why one would have modified Fujinawa.
`ST Imaging’s purported benefits of the use of belts do not provide a
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`rationale as to why one of ordinary skill in the art would have combined these two
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`particular references. Without any connection to the technology at issue,
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`ST Imaging claims that belts used as part of a drive train between motors and lead
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`screws can facilitate improved packaging when the motor cannot be directly
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`connected to the end of the lead screw. (Petition at 29.) But, in Fujinawa, there is
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`no concern as to whether the motor can be connected to the end of the lead
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`screw—Fujinawa explicitly discloses in the preferred embodiment that the motor is
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`directly connected to the end of the lead screw. (Ex. 1004 ¶ 0059, Fig. 4.)
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`ST Imaging also claims, without any connection to the technology at issue, that
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`belts and pulleys can be used to create a mechanical advantage ratio of rotational
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`speed between a motor and a lead screw. (Petition at 29.) But ST Imaging offers
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`no evidence that modifying Fujinawa with Kokubo would provide any mechanical
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`advantage ratio. Nor does ST Imaging offer any evidence why one of skill in the
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`art would want to change the mechanical advantage ratio of Fujinawa’s device.
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`These generic benefits of belts, disconnected from the technology and
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`references at issue, are not reasons why a person of skill in the art would have
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`modified Fujinawa’s device in the manner proposed by ST Imaging. Even if these
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`alleged benefits are true, “[t]he fact that the combination of the prior art could
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`result in benefits . . . does not fully support establishing that it would have been
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`obvious to combine their respective teachings or give any rationale for why a
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`person of ordinary skill would have done so with these specific references.”
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`Hughes Network Sys., LLC v. Elbit Sys. Land & C4I LTD., IPR2016-00496, Paper
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`No. 7 at *14 (July 14, 2016).
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`The Senn Declaration offers no help. The declaration merely repeats, nearly
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`verbatim, what is set forth in the Petition and provides no further analysis or
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`explanation. (Ex. 1002 ¶¶ 70–74.) “Expert testimony that does not disclose the
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`underlying facts or data on which the opinion is based is entitled to little or no
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`weight.” 37 C.F.R. § 42.65(a).
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`In sum, ST Imaging’s “simple substitution” argument is unsupported by
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`explanation or evidence as to why one of ordinary skill in the art would have made
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`the suggested substitutions, as well as other necessary modifications. Accordingly,
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`the Board should deny institution on Ground 1.
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`B. One Of Skill In The Art Would Have Been Discouraged From
`Modifying Fujinawa In The Manner Proposed By ST Imaging.
`ST Imaging was unable to provide a motivation to support a prima facie case
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`of obviousness because there is no motivation to combine the references. The
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`many shortcomings of belt and pulley drive systems would have discouraged one
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`of skill in the art from redesigning Fujinawa’s scanner to include a belt and pulley
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`drive system. One of skill in the art would have been discouraged from modifying
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`Fujinawa in light of Kokubo for at least four reasons.
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`First, ST Imaging’s proposed modification of Fujinawa’s device to
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`incorporate a belt-based drive mechanism would render the device unsuitable for
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`its intended purpose. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (if
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`proposed modification would render the prior art invention being modified
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`unsatisfactory for its intended purpose, then there is no suggestion or motivation to
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`make the proposed modification). Fujinawa’s device relies on precise movement
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`of the lens and line sensor to focus the image onto the line sensor and capture the
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`image. (Ex. 1004 ¶¶ 0059–61, clm. 16.) A belt drive system is unsuitable for a
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`Fujinawa’s intended purpose because a belt drive system does not allow movement
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`sufficiently precise to focus an image. Belt drive systems are suitable for scanners,
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`such as Kokubo’s device, because they only need to move the reading unit at a
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`predetermined constant speed to capture the image. The drive systems in scanners
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`do not need to move the reading unit to a precise location.
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`Belt drive systems are unsuitable moving optical components to focus an
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`image because focusing requires precise movements in minute increments that a
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`belt cannot achieve. That is why Fujinawa, Kokubo, and the ’279 Patent all
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`disclose use of threaded members to focus an image. Fujinawa discloses threaded
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`worms that precisely position the lens and area sensor. (Ex. 1004 ¶ 0059.)
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`Kokubo discloses that feed screw 57 precisely positions the lens tube. (Ex. 1005 at
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`13:31–54, Fig. 15.) The ’279 Patent discloses that the lead screws precisely
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`position the lens and area sensor for focusing the image. (Ex. 1001 at 6:40–7:15.)
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`Because a belt drive mechanism would not provide the necessary precision to
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`focus the image, it would not have been obvious to modify Fujinawa to replace the
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`precise worm drive system with a belt based drive system. See DePuy Spine, Inc.
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`v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“[T]he
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`‘predictable result’ discussed in KSR refers not only to the expectation that prior
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`art elements are capable of being physically combined, but also that the
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`combination would have worked for its intended purpose.”).
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`Second, one of skill in the art would have been discouraged from modifying
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`Fujinawa to include a belt and pulley drive system because belts—especially
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`smooth timing belts like those disclosed in Kokubo—are prone to slipping. (See
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`Ex. 1005 at 2:48–56.) Slipping causes errors in the displacement of the sensor
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`leading to image distortion. (Id.) When belts slip, it is difficult to track the
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`location of the lens or sensor because the location of the lens or sensor is generally
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`calculated based on the pulses used to drive the motors, not the actual physical
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`location of the lens or sensor. Slipping is not a concern in Fujinawa because the
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`worm drive mechanism is threadingly coupled to the line sensor for precise
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`movement. (Ex. 1004 Fig. 4.)
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`Third, one of skill in the art would have been discouraged from using
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`Kokubo’s belt and pulley system in Fujinawa’s device because the belt and pulley
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`system would increase the size of Fujinawa’s device. Fujinawa’s worms allow for
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`a compact device because no additional components are required to drive the line
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`sensor. In contrast, a belt and pulley system would require numerous additional
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`components that need to be positioned within the housing of Fujinawa’s scanner.
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`(See Ex. 1005 at Fig. 1.) One of skill in the art would recognize that it is
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`undesirable to increase the size of scanners because compact size is desirable in the
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`microform scanning industry. (See, e.g., Ex. 1001 at 2:38–42, 2:53–55, 3:19–20.)
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`Fourth, one of skill in the art would have been discouraged because
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`replacing a single component worm with the multicomponent belt and pulley
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`system of Kokubo would add numerous moving parts to Fujinawa’s device.
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`ST Imaging’s proposed combination violates one of the most fundamental
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`principles of mechanical design—the number of moving parts should be
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`minimized. The belt and pulley drive system of Kokubo requires many more parts
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`than the worm drive system of Fujinawa. In addition to the motor and motor shaft,
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`the belt and pulley system of Kokubo includes a drive gear, drive pulley, driven
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`pulley, belt, and two rails, plus support structures to connect all of the components
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`to the chassis. (Ex. 1005 at 9:11–20, Fig. 1.) In contrast, the drive system of
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`Fujinawa only includes a worm.
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`Additional moving parts can create multiple problems for mechanical
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`devices. The addition of all of these moving parts would in turn lower the
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`mechanical efficiency of Fujinawa’s device. The lower mechanical efficiency
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`increases the amount of energy consumed by the device. The higher number of
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`moving parts also increases the number of potential parts that can wear out and
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`need to be replaced. Worn parts affect the precision of the device and lead to
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`image distortion. For each additional part, there is an increased opportunity for a
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`defective part and an assembly error. One of skill in the art would have understood
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`these considerations and been discouraged from making the combination proposed
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`by ST Imaging.
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`For at least these reasons, one of skill in the art would not have found it
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`obvious to modify Fujinawa to incorporate the teachings of Kokubo. ST Imaging’s
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`failure to explain why one of skill in the art would have modified Fujinawa is
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`particularly indicative of nonobvious in light of all of the reasons one of skill in the
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`art would not have modified Fujinawa.
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`C. The Combination Of Fujinawa and Kokubo Would Not Result In
`The Claimed Invention.
`While one of skill in the art would not have been motivated to combine
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`Fujinawa and Kokubo, the combination of references would not have resulted in
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`the claimed invention. Instead, one of skill in the art would have modified
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`Fujinawa to arrange the lens, line sensor, and mirror of Fujinawa within a single
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`movable reading unit, as disclosed by Kokubo. Kokubo’s entire disclosure relates
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`to a device that reads text by moving an image reading unit that itself contains the
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`necessary image reading components, series of mirrors, a series of lenses, and a
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`line sensor. (See, e.g., Ex. 1005 Fig. 17.) Thus, if the teachings