Trials@uspto.gov
`571.272.7822
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` Paper 6
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` Entered: May 8, 2017
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`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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`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
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`HAAPALA, Administrative Patent Judge.
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2017-00177
`Patent 8,537,279 B2
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`Digital Check Corp. d/b/a ST Imaging (“Petitioner”) filed a Petition
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`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`claims 44 and 49 of U.S. Patent No. 8,537,279 B2 (“the ’279 patent”).
`Paper 1 (“Pet.”). e-ImageData Corp. (“Patent Owner”) filed a Preliminary
`Response. Paper 5 (“Prelim. Resp.”). Applying the standard set forth in
`35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood
`that Petitioner would prevail with respect to at least one challenged claim,
`we grant Petitioner’s request and institute an inter partes review of all
`challenged claims.
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`I. BACKGROUND
`A. The ’279 Patent (Ex. 1001)
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`The ’279 patent describes a digital microform imaging apparatus
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`(DMIA) that may be used to view/scan a broad range of microfilm media
`types (e.g., microfilm, microfiche, 16 mm or 35 mm film roll). See
`Ex. 1001, 1:12–13, 3:19–20, 7:50–53. The DMIA can accommodate a broad
`range of image reduction ratios without the need to change zoom lenses. See
`id. at 3:21–23. Figure 4 of the ’279 patent is reproduced below:
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`Figure 4 illustrates a perspective view of a DMIA with the cover removed
`and as viewed from generally rearward of the apparatus. Id. at 3:58–60.
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`The DMIA illustrated in Figure 4 includes: microform media support
`44; chassis 66; mirror mount 78; first lead screw 86; second lead screw 88;
`lens 90; area sensor 97; first carriage 92; second carriage 98; first motor 100;
`second motor 108; timing pulleys 102, 106, 110, 114; and belts 104, 112.
`See id. at 5:1–6:5. Microform media support 44 is configured to support a
`microform media. Id. at 5:1–2. A fold mirror (not shown) reflects incident
`light transmitted through microform media and is connected to mirror mount
`78, which is connected to chassis 66. Id. at 5:25–27, 5:30–32. Lens 90 is
`connected to first carriage 92, which is linearly adjustable by rotating first
`lead screw 86. Id. at 5:37–39. Area sensor 97 is connected to second
`carriage 98, which is linearly adjustable by rotating second lead screw 88.
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`Id. at 5:46–48. First motor 100 is rotationally coupled to first lead screw 86
`by timing pulley 102, belt 104 with teeth, and timing pulley 106; and second
`motor 108 is rotationally coupled to second lead screw 88 by timing pulley
`110, belt 112 with teeth, and timing pulley 114. Id. at 6:1–5.
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`A controller (not shown) is electrically connected to first motor 100,
`second motor 108, and area sensor 97. Id. at 6:5–7. The controller receives
`commands and inputs, controls first and second motors 100, 108 and other
`components of the DMIA, and outputs an image data of area sensor 97. Id.
`at 6:7–11. The layout of the DMIA, including separately adjustable area
`sensor 97 and lens 90, and algorithms for moving the lens and sensor to
`appropriate respective locations to achieve proper magnification and focus
`of the image, allows the DMIA to autofocus to accommodate different
`reduction ratios of different film media without the need for iterative
`measurements and refocusing of lens 90. Id. at 5:55–64. The DMIA
`depicted in Figure 4 includes additional components not described.
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`B. Illustrative Claim
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`Claims 44 and 49 are independent claims. Claim 44 is illustrative of
`the subject matter at issue.
`1. A digital microform imaging apparatus, comprising:
`a chassis;
`a fold mirror supported by the chassis;
`a first elongated and substantially straight1 lead member
`supported by the chassis;
`a first carriage slidingly coupled to the first lead member;
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`1 The ’279 patent includes a Certificate of Correction, which corrects “strait”
`to be “straight.” See Ex. 1001, 25.
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`an area sensor supported by the first carriage for
`movement therewith to adjust a distance between the area
`sensor and the fold mirror;
`a lens supported by the chassis and positioned between
`the area sensor and the fold mirror; and
`a first motor coupled to the first carriage via a first belt
`for moving the first carriage within a range of motion along at
`least a portion of the first lead member.
`C. References
`Petitioner relies on the following references:
`1. U.S. Patent Application No. 2004/0012827 A1, published
`Jan. 22, 2004 (“Fujinawa”) (Ex. 1004).
`2. U.S. Patent No. 5,585,937, issued Dec. 17, 1996 (“Kokubo”)
`(Ex. 1005).
`3. U.S. Patent No. 5,061,955,
`(“Watanabe”) (Ex 1006).
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`issued Oct. 29, 1991
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`D. Grounds Asserted
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`Petitioner challenges the patentability of the claims of the ’279 patent
`under 35 U.S.C. § 103(a) over the following combinations of references:
`References
`Claims
`Fujinawa and Kokubo
`44, 49
`Fujinawa and Watanabe
`44, 49
`E. Related Proceedings
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`Patent Owner identifies the ’279 patent as a continuation of U.S.
`Patent No. 8,269,890 (’890 patent), and a parent to U.S. Patent No.
`9,179,019 (’019 patent) and U.S. Patent No. 9,197,766 (’766 patent). Paper
`4. Petitioner and Patent Owner identify numerous matters as related to this
`proceeding, including currently pending U.S. Patent Application No.
`14/931,583, which is a continuation of the ’279 patent; Petitioner’s
`concurrently filed Petition for inter partes review of the ’019 patent
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`(IPR2017-00178); and a number of district court litigation matters involving
`the ’279, ’890, ’019, and ’766 patents. See Paper 4; Pet. 2.
`II. ANALYSIS
`A. Claim Construction
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`In an inter partes review, claims of an unexpired patent are
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`interpreted using the broadest reasonable construction in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
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`Petitioner proposes constructions for a number of terms that appear in
`the claims of the ’279 patent. See Pet. 18. Petitioner asserts the
`constructions for these terms are the constructions proposed by Patent
`Owner in the related district court case between the parties, and that these
`constructions are the broadest reasonable constructions. Id. Patent Owner
`proposes the same construction for “first carriage” and asserts this
`construction was adopted by the district court in the related litigation.
`Prelim. Resp. 8–9. Patent Owner further asserts the district court concluded
`the preamble “digital microform imaging apparatus” limits the claims;
`Petitioner asserts the parties’ dispute about the preamble is not germane to
`this proceeding because each of the prior art references disclose the
`preamble limitation. See id.; Pet. 18–19.
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`For purposes of this Decision, we do not find it necessary to construe
`any terms, and accord them their ordinary and customary meaning. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
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`1999) (holding that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
`B. Discretion Whether to Institute Under 35 U.S.C. § 325(d)
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`Petitioner asserts “[i]nstitution is warranted under 35 U.S.C. § 325(d)
`because this Petition relies on prior art combinations not considered during
`examination of the ’279 patent.” Pet. 16. Patent Owner contends the Board
`should exercise its discretion not to institute inter partes review because the
`cited references are the same or substantially the same prior art considered
`by the Examiner during prosecution of the ’279 patent. Prelim. Resp. 2.
`Patent Owner asserts the Examiner considered Fujinawa and Watanabe
`during prosecution of the ’279 patent because the Examiner indicated the
`references were considered in an Information Disclosure Statement (IDS)
`submitted by applicant. Id. at 3–4. Patent Owner further asserts that the
`Office also previously considered the substance of Kokubo when it
`evaluated the Watanabe reference. Id. at 5. Therefore, Patent Owner argues
`that we should deny institution because the references are cumulative of
`prior art already considered. Id.
`Institution of inter partes review is discretionary. See 35 U.S.C.
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`§ 314(a); 37 C.F.R. § 42.108. Section 325(d) provides: “[i]n determining
`whether to institute . . . a proceeding . . . , the Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`The evidence supports Patent Owner’s assertion that Fujinawa and
`Watanabe were cited in an IDS and the Examiner considered both
`references. See Ex. 2002. But, there is no indication in the record that the
`Examiner rejected any claims based on either reference or that the Examiner
`or applicant substantively discussed either reference during prosecution of
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`the ’279 patent. Furthermore, Petitioner’s obviousness challenge also relies
`on the testimony of its witness, Anthony J. Senn (see Pet. 16; Ex. 1002); and
`Patent Owner does not argue this testimony is duplicative of evidence
`submitted previously to the Office. Under these circumstances, we decline
`to exercise our discretion to deny institution under § 325(d).
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`C. Obviousness Over Fujinawa and Kokubo
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`Petitioner contends that claims 44 and 49 are unpatentable as obvious
`under 35 U.S.C. § 103(a) over Fujinawa and Kokubo. Pet. 20–38. For the
`reasons discussed below, we are persuaded, based on the current record, that
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
`ground.
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`1. Overview of Fujinawa and Kokubo
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`Fujinawa describes an image reading apparatus that can handle films
`having different sizes. Ex. 1004 ¶ 3. Figure 4 of Fujinawa is reproduced
`below:
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`Figure 4 depicts one embodiment of an image reading apparatus during
`reading of roll film. Id. ¶ 22. Image reading apparatus 1 includes reading
`device motor 26, lens motor 27, line sensor 28, and reflective mirror 30. Id.
`¶ 39. Line sensor 28 is supported by a worm that couples line sensor 28 to
`rotating shaft of reading device motor 26 so that the position of the light-
`receiving surface can be moved in accordance with the rotation of the
`rotating shaft. Id. ¶ 59.2 Lens 29 is supported by a worm that couples lens
`29 to the rotating shaft of lens motor 27 so that it can move in accordance
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`2 Because other sections of Fujinawa describe element 26 as “reading device
`motor” (see e.g., Ex. 1004 ¶¶ 39, 60), we agree with Petitioner that Fujinawa
`mislabels reading motor 26 in paragraph 59 as “take-up motor 26.” See Pet.
`28 n.3.
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`with rotation of the rotating shaft. Id. Fujinawa further describes that an
`area-type sensor could be provided instead of line sensor 28. Id. ¶¶ 49, 112.
`A CPU (not depicted) separately drives reading motor 26 and lens motor 27
`to adjust the reading scope and resolution according to the results of this
`determination. Id. ¶¶ 60, 66. Figure 4 depicts additional components of
`image reading apparatus 1 that are not described.
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`Kokubo describes an image reading device, which optically reads a
`text image by moving an image reading unit on which a line sensor and a
`light source for text illuminating is mounted. Ex. 1005, 1:8–11. Figure 1 of
`Kokubo is reproduced below:
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`Figure 1 is a plan view showing features of an image reading device with the
`upper part of the chassis cut away. Id. at 5:66–6:1. The image reading
`device comprises chassis 1, reading unit 6, and motor 7. Id. at 8:52–57,
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`9:10–11. Reading unit 6 is supported by guide shaft 4 and rail 5, such that it
`is free to slide toward the front and rear of the image reading device. Id. at
`8:56–59. Kokubo describes that in some embodiments, an image reading
`unit may include a movable mirror, a lens tube consisting of a series of
`lenses, and a line sensor (components not depicted). See id. at 11:63–12:6.
`Motor 7 is provided with drive gear 7a on a rotation shaft, drive pulley 8
`rotated by the drive force of drive gear 7a, driven pulley 9, and timing belt
`10 wound around drive pulley 8 and driven pulley 9, which is also fixed to
`reading unit 6. Id. at 9:10–15. Reading unit 6 is therefore moved by timing
`belt 10, which moves due to the rotation of motor 7. Id. at 9:15–17. Figure
`1 includes additional components not described.
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`2. Claims 44 and 49
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`Petitioner contends the combination of Fujinawa and Kokubo teaches
`the limitations recited in independent claim 44. Pet. 20–35. Specifically,
`Petitioner asserts Fujinawa discloses a digital microform imaging apparatus
`nearly identical to the claimed digital microform imaging apparatus. Id. at
`20. Petitioner asserts Fujinawa discloses the claimed chassis, fold mirror,
`first elongated straight lead member, first carriage, area sensor, lens, and
`first motor limitations recited in claim 44. Id. at 20–29. Petitioner relies on
`Kokubo to disclose a carriage slidingly coupled to the first lead member and
`a first belt for moving the first carriage. Id. at 29–32. Petitioner asserts one
`of skill in the art at the time of the invention of the ’279 patent would have
`known to simply substitute one well-known drive mechanism for moving a
`carriage along an optical path (Fujinawa’s worm) for another well-known
`drive mechanism for moving a carriage along an optical path (Kokubo’s
`guide rail and belt/pulley drive apparatus), and such a combination would
`have been a simple substitution to achieve a predictable result. See id. at
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`32–33. In support of its assertions, Petitioner relies on the testimony of Mr.
`Senn. See Pet. 22–35 (citing Ex. 1002).
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`Patent Owner contends Petitioner’s rationale is insufficient to support
`the proposed modification of Fujinawa’s drive mechanism with Kokubo’s
`drive mechanism. See Prelim. Resp. 11–19. Specifically, Patent Owner
`argues Petitioner did not explain why one of ordinary skill in the art would
`have made the substitution, which Patent Owner asserts would add
`complexity and be a substantial redesign of Fujinawa. See id. at 12–15.
`Patent Owner further argues the proposed modification of Fujinawa to
`incorporate a belt-based drive mechanism would render the device
`unsuitable for its intended purpose because it does not allow movement
`sufficiently precise to focus an image. Id. at 16–18. Patent Owner also
`argues one of skill in the art would have been discouraged from making the
`proposed modification because the belt and pulley system would increase
`the size of Fujinawa’s device, would require numerous additional
`components, and would violate a fundamental principle of mechanical
`design that the number of moving parts should be minimized. Id. at 18–19.
`Additionally, Patent Owner asserts the combination of Fujinawa and
`Kokubo would not have resulted in the claimed invention, but rather would
`have resulted in a single image reading unit that houses the image reading
`components because Kokubo’s disclosure relates to a device that has a single
`image reading unit that contains the necessary reading components. See id.
`at 20–21.
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`We have reviewed the information provided by Petitioner and
`determine, based on the current record and for purposes of this Decision,
`that Petitioner sufficiently establishes the combination of Fujinawa and
`Kokubo teaches the limitations recited in claim 44. For example, Petitioner
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`sufficiently shows that Fujinawa discloses “a first elongated and
`substantially straight lead member supported by the chassis” and “a first
`motor coupled to the first carriage . . . for moving the first carriage within a
`range of motion along at least a portion of the first lead member.” Pet. 23,
`27–28. Petitioner adequately shows that Kokubo discloses “a first carriage
`slidingly coupled to the first lead member” and a first motor coupled to the
`first carriage via a first belt for moving the first carriage. Id. at 30–32.
`Petitioner also sufficiently establishes, for purposes of this Decision, that
`Fujinawa teaches the remaining limitations set forth in claim 44. See id. at
`20–29.
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`With respect to independent claim 49, we have reviewed Petitioner’s
`analysis and determine, for purposes of this Decision, that Petitioner also
`sufficiently supports its contentions that the combination of Fujinawa and
`Kokubo teaches the limitations recited in this claim. See id. at 22–27, 35–
`38.3 For instance, Petitioner adequately shows that Fujinawa discloses
`“rotation of a first shaft causes the first driving mechanism to move the first
`carriage along the first lead member among positions within a range” and
`Kokubo discloses a first driving mechanism spaced apart from the first lead
`member. Id. at 37.
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`At this stage of the proceeding, we are not persuaded by Patent
`Owner’s arguments that Petitioner fails to sufficiently explain why one of
`skill in the art would have made the modification. Although an assertion of
`obviousness cannot be sustained by mere conclusory statements, if a person
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`3 Petitioner maps some of the claim elements appearing in claim 49, which
`do not appear in claim 44 (e.g., the fold mirror “including a reflecting
`surface aligned with first and second optical axis”), in its analysis of claim
`44, which Petitioner expressly states applies to claim 49 as well. See Pet.
`22–27, 36.
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`of ordinary skill can implement a predictable variation (such as a simple
`substitution of one known element for another), it is likely to be obvious
`under § 103. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417–418. We
`determine, for purposes of this Decision, that Petitioner’s stated reason for
`the combination, namely that replacing Fujinawa’s drive mechanism with
`Kokubo’s belt and pulley drive mechanism is a simple substitution that
`yields predictable results, is sufficient rationale to support the combination.
`In reaching our determination, we credit the testimony of Petitioner’s
`witness, Mr. Senn. See Ex. 1002 ¶¶ 70–74. On the current record, we are
`not persuaded by Patent Owner’s attorney arguments that the proposed
`modification would not allow movement sufficiently precise to focus an
`image or that one of skill in the art would have been discouraged from
`making the modification. Additionally, at this stage of the proceeding, we
`are not persuaded by Patent Owner’s arguments that Petitioner’s proposed
`modification to replace the drive mechanism of Fujinawa with Kokubo’s
`drive mechanism also would have bodily incorporated Kokubo’s single
`image reading unit and, thus, not resulted in the claimed invention.
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`For the foregoing reasons, we are persuaded Petitioner has
`demonstrated a reasonable likelihood of prevailing in establishing that
`claims 44 and 49 would have been obvious over the combination of
`Fujinawa and Kokubo.
`C. Obviousness Over Fujinawa and Watanabe
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`Petitioner contends that claims 44 and 49 are unpatentable as obvious
`under 35 U.S.C. § 103(a) over Fujinawa and Watanabe. Pet. 39–45. For the
`reasons discussed below, we are persuaded, based on the current record, that
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
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`ground as to claim 49. Petitioner fails to establish a reasonable likelihood of
`prevailing on this ground as to claim 44.
`1. Overview of Watanabe
`Watanabe describes a microfilm reader/printer for selecting a desired
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`image from images recorded on a microfilm roll and to print the desired
`image automatically in normal orientation, without the need for manual
`operation of inverting the image when the images are recorded in duo
`photographing mode. Ex. 1006, 1:59–65. Figure 2 of Watanabe is
`reproduced below:
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`Figure 2 is a schematic illustration showing an embodiment of the microfilm
`reader/printer. Id. at 4:35–38. The reader/printer includes microfilm roll 2
`that has images recorded in duo mode, in which the orientation of images on
`the lower channel are in an inverted relationship with the orientation of
`images in the upper channel. See id. at 2:52–68. An image in each frame 4
`on microfilm roll 2 is projected on screen 14 in an enlarged size. Id. at
`5:13–15. CCD line sensor 78 serves as the image sensor and is held behind
`screen 14 by movable plate 80, which is moved in the horizontal direction
`while being guided by guide rails 82, 84. Id. at 6:62–65. Ends of wire 90
`extending around pulley wheels 86, 88 are fixedly connected to the right and
`left edges of the lower end of movable plate 80. Id. at 6:65–68. Pulley
`wheel 88 is rotated by motor 92 to drive wire 90 so that movable plate 80 is
`moved in the horizontal direction. Id. at 7:1–3. Figure 2 depicts additional
`components not described.
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`2. Claim 44
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`Petitioner asserts that Watanabe discloses “a first belt for moving the
`first carriage within a range of motion,” as set forth in claim 44. Pet. 39–40.
`Specifically, Petitioner asserts that Watanabe meets the first belt limitation
`through its disclosure that pulley wheel 88 is rotated by motor 92 to drive
`wire 90 (equated by Petitioner to the first belt) to move movable plate 80 in
`the horizontal direction. Id. at 40 (citing Ex. 1006, 6:62–7:3, Fig. 2).
`Petitioner argues “[a] wire and a belt would have been understood to be the
`same, or at least predictable replacements” and cites to testimony of Mr.
`Senn in support of this assertion. Pet. 40 (citing Ex. 1002).
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`Patent Owner argues that a wire is not a belt because they have
`different surface contours that provide differing degrees of stability, are
`made of different materials that wear differently, have different tension and
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`expansion properties, and have different failure rates. Prelim. Resp. 26–27.
`Patent Owner contends that Petitioner offers no explanation as to why it
`would have been obvious to modify Fujinawa to include a belt. Id. at 27.
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`We agree with Patent Owner that a wire and a belt are not the same.
`Petitioner’s contention that they are the same is unsupported by the evidence
`of record. In particular, Watanabe distinguishes between the terms by its
`description that element 50 is a belt and element 90 is a wire. Compare
`Ex. 1006, 5:64–66, with id. at 6:65–7:3. Additionally, Petitioner’s witness
`merely asserts a wire and a belt would have been understood to be the same,
`but does not provide any supporting explanation or evidence. See Ex. 1002
`¶ 69. Such testimony is entitled to little or no weight. See 37 C.F.R.
`§ 42.65(a). Thus, Petitioner fails to establish Watanabe discloses the
`claimed belt.
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`Furthermore, we agree with Patent Owner that Petitioner does not
`sufficiently explain why a person of ordinary skill would have found it
`obvious to modify the combination of Fujinawa and Watanabe to include a
`belt. Petitioner cannot satisfy its burden of proving obviousness by
`employing “mere conclusory statements,” but “must instead articulate
`specific reasoning, based on evidence of record” to support an obviousness
`determination. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
`(Fed. Cir. 2016). Because Petitioner fails to provide such reasoning, we
`conclude Petitioner has not demonstrated a reasonable likelihood of
`prevailing in establishing that claim 44 would have been obvious over the
`combination of Fujinawa and Watanabe.
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`3. Claim 49
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`With respect to claim 49, Petitioner relies on Fujinawa in the same
`manner as in the obviousness challenge based on Fujinawa and Kokubo to
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`disclose most of the limitations of claim 49. See Pet. 39, 44. Petitioner
`relies on Watanabe to disclose the remaining limitations of claim 49,
`namely: (i) the first drive mechanism spaced apart from the first lead
`member; (ii) the first carriage slidingly coupled to the first lead member; and
`(iii) the area sensor position at least in part between the first lead member
`and the first driving mechanism. See Pet. 39–41, 44. Petitioner contends
`one of skill in the art would have known at the time of the invention of the
`’279 patent to simply substitute the motor shaft mechanism of Fujinawa for
`the drive mechanism disclosed by Watanabe, and that the combination
`would be a simple substitution that achieves a predictable result. Pet. 41.
`Petitioner supports its contentions with testimony of Mr. Senn. See Pet. 41–
`45.
`Patent Owner argues that Petitioner’s rationale for modifying
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`Fujinawa is deficient for similar reasons as those presented for the
`combination of Fujinawa and Kokubo. See Prelim. Resp. 22–24. Patent
`Owner further argues Watanabe teaches away from use of a wire and pulley
`system with an area sensor because it discloses that an area sensor eliminates
`the need for a mechanical scanning operation. Id. at 24–25. Thus, Patent
`Owner asserts there is no need for the wire/pulley device of Watanabe when
`the device incorporates an area sensor as claimed, and, therefore, one of skill
`in the art would have been discouraged from making the proposed
`modification. Id. at 25.
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`We have reviewed Petitioner’s analysis and determine, for purposes
`of this Decision, that Petitioner sufficiently supports its contentions that the
`combination of Fujinawa and Watanabe teaches the limitations recited in
`claim 49. As discussed previously, Petitioner adequately supports its
`contentions that Fujinawa discloses most of the limitations of claim 49. See
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`Pet. 36–37. Petitioner also adequately supports its contention that Watanabe
`discloses the remaining limitations set forth in claim 49. See Pet. 39–41, 44.
`For example, Petitioner adequately shows that Watanabe discloses a first
`carriage (moveable plate 80) slidingly coupled to a first lead member (guide
`rail 82). See Pet. 40–41.
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`Furthermore, for substantially the same reasons discussed in the
`previous ground, at this stage of the proceeding and on the current record,
`we are not persuaded by Patent Owner’s arguments that Petitioner provides
`insufficient rationale for the proposed combination. For purposes of this
`Decision, Petitioner’s stated reason for the combination—replacing
`Fujinawa’s drive mechanism with Watanabe’s wire and guide rail device is a
`simple substitution that yields predictable results—is sufficient rationale to
`support the combination, particularly as it is supported by testimony of Mr.
`Senn (Ex. 1002 ¶¶ 75–79), which we credit. We are also not persuaded, on
`the current record, that Watanabe teaches away from the proposed
`combination. Although Watanabe discloses an area sensor eliminates the
`need of mechanical scanning operation (Ex. 1006, 10:10–14), we are not
`persuaded this discourages or discredits replacing Fujinawa’s motor with
`Watanabe’s wire/guide rail drive mechanism. In the proposed combination,
`Watanabe’s drive mechanism is used to move the first carriage “to adjust a
`distance between the area sensor and the fold mirror” (claim 49), and not to
`perform mechanical scanning.
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`For the foregoing reasons, we are persuaded Petitioner has
`demonstrated a reasonable likelihood of prevailing in establishing that claim
`49 would have been obvious over the combination of Fujinawa and
`Watanabe.
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`III. CONCLUSION
`Petitioner has demonstrated a reasonable likelihood of prevailing on
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`certain of its challenges to claims 44 and 49 as set forth above.
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`At this stage of the proceeding, we have not made a final
`determination as to the patentability of any of the challenged claims or the
`construction of any claim term.
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`IV. ORDER
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`It is
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted with respect to U.S. Patent No. 8,537,279 B2 on
`the following grounds:
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`(1) Obviousness of claims 44 and 49 over Fujinawa and Kokubo; and
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`(2) Obviousness of claim 49 over Fujinawa and Watanabe;
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`FURTHER ORDERED that no review is instituted based on any
`other grounds of unpatentability; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this decision.
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`IPR2017-00177
`Patent 8,537,279 B2
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`PETITIONER:
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`Jason A. Engel
`Robert J. Barz K&L
`GATES LLP
`jason.engel@klgates.com
`robert.barz@klgates.com
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`PATENT OWNER:
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`Johanna M. Wilbert
`Joel Austin
`Michael Piery
`QUARLES & BRADY LLP
`johanna.wilbert@quarles.com
`joel.austin@quarles.com
`michael.piery@quarles.com
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