UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`______________________
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`
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING
`Petitioner
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner
`
`______________________
`
`CASE IPR: IPR2017-00177
`U.S. PATENT NO. 8,537,279
`______________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, VA 22313-1450
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`
`
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`
`
`
`
`

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`
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`Page
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`I.
`PAYMENT OF FEES (37 C.F.R. § 42.103) ................................................... 2
`II.
`III. MANDATORY NOTICES (37 C.F.R. § 42.8) ............................................... 2
`A.
`Real Party In Interest (37 C.F.R. § 42.8(b)(1)) ..................................... 2
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 2
`C.
`Notice Of Lead And Backup Counsel (37 C.F.R. § 42.8(b)(3)) ........... 3
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) ....................................... 3
`IV. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) ................................. 3
`V.
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 4
`VI. REASONS FOR THE REQUESTED RELIEF .............................................. 4
`A.
`Summary of ‘279 Petition ..................................................................... 4
`B.
`Overview of the Prior Art Specifically Cited Below ............................ 4
`Fujinawa ..................................................................................... 5
`1.
`Kokubo ........................................................................................ 7
`2.
`3. Watanabe .................................................................................... 8
`Background of the Technology and Summary of ‘279 Patent .............. 8
`1.
`Chassis Limitation .................................................................... 12
`2.
`Fold Mirror Limitation .............................................................. 12
`3.
`Lead Member Limitation .......................................................... 13
`4.
`Carriage Limitation ................................................................... 14
`5.
`Area Sensor Limitation ............................................................. 14
`6.
`Lens Limitation ......................................................................... 15
`7. Motor Limitation ....................................................................... 15
`8.
`Drive Mechanism Limitations .................................................. 16
`
`C.
`
`i
`
`

`
`
`
`D.
`The Relied-On Art Has Not Been Previously Considered .................. 16
`VII. PERSON OF ORDINARY SKILL IN THE ART ........................................ 16
`VIII. CLAIM CONSTRUCTION .......................................................................... 18
`IX. PROPOSED GROUNDS OF REJECTION .................................................. 19
`A. Ground 1: Claims 44 and 49 are Unpatentable Under 35 U.S.C.
`§ 103 as Obvious Over Fujinawa In View of Kokubo. ....................... 20
`1.
`Claim 44 .................................................................................... 20
`Fujinawa’s Disclosure of a Microform Imaging
`a.
`Apparatus ........................................................................ 20
`Kokubo’s Disclosures of a First Drive Mechanism
`(Belt and Guide Mechanism For Moving a
`Carriage) and Position of Carriage and Image
`Sensor ............................................................................. 29
`Combining Fujinawa’s Microform Imaging
`Apparatus With Kokubo’s Disclosures ........................... 32
`Claim 49 .................................................................................... 35
`2.
`Ground 2: Claims 44 and 49 are Unpatentable Under 35 U.S.C.
`§ 103 as Obvious Over Fujinawa In View of Watanabe. ................... 39
`Fujinawa’s Disclosure of a Microform Imaging
`1.
`Apparatus .................................................................................. 39
`2. Watanabe’s Disclosures of a First Drive Mechanism
`(Belt and Guide Mechanism For Moving a Carriage) and
`Position of Carriage and Image Sensor ..................................... 39
`Combining Fujinawa’s Microform Imaging Apparatus
`With Watanabe’s Disclosures ................................................... 41
`CONCLUSION .............................................................................................. 45
`
`b.
`
`c.
`
`B.
`
`3.
`
`X.
`
`ii
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`

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`
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`LIST OF EXHIBITS
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`Ex. 1001: U.S. Patent No. 8,537,279 (“‘279 Patent”)
`
`Ex. 1002: Declaration of Anthony J. Senn
`
`Ex. 1003: Curriculum vitae of Anthony J. Senn
`
`Ex. 1004: U.S. Publication No. 2004/0012827 (“Fujinawa”)
`
`Ex. 1005: U.S. Patent No. 5,585,937 (“Kokubo”)
`
`Ex. 1006: U.S. Patent No. 5,061,955 (“Watanabe”)
`
`Ex. 1007: 5100 FICHE SCANSTATION, Field Service Manual
`
`
`
`iii
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`

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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
`
`
`
`I.
`
`INTRODUCTION
`
`Digital Check Corp. d/b/a ST Imaging (“Petitioner”) requests Inter Partes
`
`Review (“IPR”) of claims 44 and 49 of U.S. Patent No. 8,537,279 (“‘279 Patent”)
`
`(Ex. 1001).
`
`The ‘279 Patent discloses and claims microform imaging apparatuses.
`
`Microform readers were ubiquitous long before the ‘279 Patent. The ‘279 Patent
`
`acknowledges that the principle features of microform readers–a chassis, a mirror,
`
`a lens, an image sensor and an adjuster–were well known many years prior to the
`
`alleged invention. (Ex. 1001 at 2:16-29 and 2:43-44; Ex. 1002 at ¶ 21-22). The
`
`‘279 Patent further recognizes that the digital aspects incorporated into the claimed
`
`invention were not novel. (Ex. 1001 at 2:21-24 and 2:43-44; Ex. 1002 at ¶ 21).
`
`Rather, digitization of microfilm was a natural result of the prevalence of
`
`computers and the digital age. (Ex. 1001 at 1:53-60; Ex. 1002 at ¶ 21).
`
`The microform reader of the ‘279 Patent purports to be more “compact and
`
`versatile” than prior art readers. (Ex. 1001 at 2:52-55; Ex. 1002 at ¶ 22). Yet,
`
`claims 44 and 49 of the ‘279 Patent fail to claim any novel elements or a novel
`
`arrangement of elements that were not already well known in the prior art. In
`
`short, claims 44 and 49 are nothing more than a straightforward recitation of
`
`conventional, well-known microform imaging technology.
`
`As described in detail below, the Board should institute IPR and cancel
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`1
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`

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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
`
`
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`claims 44 and 49 of the ‘279 Patent.
`
`II.
`
`PAYMENT OF FEES (37 C.F.R. § 42.103)
`
`The required fee for this Petition has been paid from Deposit Account No.
`
`02-1818, and the Office is authorized to deduct any additional fees due in
`
`association with this Petition.
`
`III. MANDATORY NOTICES (37 C.F.R. § 42.8)
`
`A. Real Party In Interest (37 C.F.R. § 42.8(b)(1))
`
`Digital Check Corp. d/b/a ST Imaging, a Delaware corporation with a
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`principal place of business at 630 Dundee Road, Suite 210, Northbrook, IL 60062
`
`is the real party in interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The ‘279 Patent has been asserted against Petitioner in the case E-
`
`ImageData Corp v. Digital Check Corp. in the Eastern District of Wisconsin (Case
`
`Nos. 2:15-cv-0658 and 2:16-cv-0576). The ‘279 Patent was previously asserted
`
`against Konica Minolta Business Solutions U.S.A., Inc. in the Western District of
`
`Wisconsin (Case No. 3:13-cv-0721). Currently-pending U.S. Patent Application
`
`No. 14/931,583 was filed on November 3, 2015 as a continuation of the ‘279
`
`Patent. U.S. Patent Nos. 9,179,019 and 9,197,766 are also being asserted against
`
`Petitioner in Case No. 2:16-cv-0576. Petitioner is concurrently filing an IPR on
`
`U.S. Patent No. 9,179,019 (IPR2017-00178).
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`2
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`C. Notice Of Lead And Backup Counsel (37 C.F.R. § 42.8(b)(3))
`
`
`
`Lead Counsel
`Jason A. Engel
`Reg. No. 51,654
`K&L Gates LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`jason.engel@klgates.com
`Phone: 312-807-4236
`Fax: 312-827-8145
`
`D.
`
`Backup Counsel
`Robert J. Barz
`Reg. No. 74,363
`K&L Gates LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`robert.barz@klgates.com
`Phone: 312-807-4233
`Fax: 312-827-1265
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Papers concerning this matter should be served on Jason Engel at K&L
`
`Gates LLP, 70 W. Madison St., Suite 3100, Chicago, IL 60602 (Tel. 312-372-
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`1121; Fax 312-827-8000). Petitioner hereby consents to electronic service at the
`
`following electronic mail addresses:
`
`Jason.Engel.PTAB@klgates.com
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`IV. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
`
`The Petition is being filed within one year of Petitioner being served with a
`
`complaint for infringement. Petitioner certifies that (1) the ‘279 Patent, issued on
`
`September 17, 2013, is available for IPR; (2) Petitioner is not barred or estopped
`
`from requesting IPR on the Grounds identified herein; and (3) Petitioner has not
`
`filed a civil action challenging the validity of any claims of the ‘279 Patent. This
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`Petition is filed in accordance with 37 C.F.R. § 42.106(a). Concurrently filed
`
`herewith is a Power of Attorney and an Exhibit List per 37 C.F.R. § 42.10(b) and §
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`3
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`42.63(e), respectively.
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`V.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 44 and 49 of the ‘279
`
`Patent, and cancel those claims as invalid under 35 U.S.C. §103.
`
`VI. REASONS FOR THE REQUESTED RELIEF
`
`A.
`
`Summary of ‘279 Petition
`
`Claims 44 and 49 of the ‘279 Patent are obvious in view of the prior art.
`
`They cover nothing more than the straightforward combination of well known
`
`microform imaging apparatus designs and/or very well known features of such
`
`microform imaging apparatuses.
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`B. Overview of the Prior Art Specifically Cited Below
`
`The relied-on prior art all relates microform readers The narrowness of this
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`field motivates a person of skill in the art to look to the relied-on references since
`
`they are analogous art. The prior art references show the well-known features of
`
`microform readers available at the time of alleged invention. These well-known
`
`features could have been easily incorporated and/or substituted from one
`
`microform reader to the other to achieve predictable outcomes. For example, a
`
`person of skill in the art would have been motivated to combine the teachings of
`
`U.S. Publication No. 2004/0012827 (“Fujinawa”), U.S. Patent No. 5,585,937
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`(“Kokubo”), and/or U.S. Patent No. 5,061,955 (“Watanabe”) to develop a digital
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`microform imaging apparatus. Furthermore, given that all of the art is related to
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`microform readers, a person of skill in the art would have been motivated to seek
`
`out these references when looking to develop a digital microform imaging
`
`apparatus.
`
`1. Fujinawa
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`Fujinawa published on January 22, 2004. (Ex. 1004). Fujinawa is prior art
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`under 35 U.S.C. § 102(b). Fujinawa discloses an image reading apparatus for
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`reading film images that includes a light source, a film carrier, a lens supported by
`
`a moveable carriage, a mirror, an image area sensor, and motor, as illustrated
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`below in Figure 4:
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`[mirror 30
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`carriage
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`motor 26
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`lens 29
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`area sensor 28
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`light source 31
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`frame
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`
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`
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`(Ex. 1004 at Figure 4; see also Ex. 1004 at ¶ 0039-0059; Ex. 1002 at ¶ 27).
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`Specifically, the image reading apparatus of Fujinawa can handle films having
`
`different sizes. (Ex. 1004 at ¶ 0003; see also Ex. 1002 at ¶ 42). Fujinawa
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`discloses a digital microform imaging apparatus that can digitize the images. (Ex.
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`1004 at ¶ 0064; see also Ex. 1002 at ¶ 43). The apparatus disclosed in Fujinawa
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`includes a frame that supports the cover and other structural components, such as
`
`the reflective mirror 30. (Ex. 1004 at ¶¶ 0033, 0039; see also Ex. 1002 at ¶¶ 44-
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`45). Fujinawa includes “a worm that couples the line sensor to the rotating shaft
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`of the [reading] motor 26.” (Ex. 1004 at ¶ 0059; see also Ex. 1002 at ¶ 46).
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`Fujinawa also discloses a structure that sensor 28 is attached to coupled to the
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`worm that is connected to rotating shaft of motor 26. (Ex. 1004 at ¶¶ 0039, 0059;
`
`see also Ex. 1002 at ¶ 47).
`
`2. Kokubo
`
`Kokubo issued on December 17, 1996. (Ex. 1005). Kokubo is prior art
`
`under 35 U.S.C. § 102(b). Kokubo discloses that its image reading device uses
`
`digital signals, i.e., it is a digital imaging apparatus. (Ex. 1002 at ¶ 54). The image
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`reading device of Kokubo optically reads a text image and converts the image into
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`an electrical signal via a light source, a film carrier, a lens, a mirror, and an image
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`sensor. (Ex. 1005 at Background and Abstract; Ex. 1002 at ¶ 54). Kokubo
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`discloses that “the image reading device [] comprises a chassis 1, a frame 2 fixed
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`to the chassis 1…a guide shaft 4 fixed to the frame 2, a rail 5 fixed to the frame 2,
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`and a reading unit 6 supported by the guide shaft 4 and the rail 5 such that it is free
`
`to slide toward the front and rear of the image reading device.” (Ex. 1005 at 8:52-
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`59; Ex. 1002 at ¶¶ 27, 55-56, 58). Kokubo discloses that “optical parts for reading
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`a text image such as mirrors and a lens tube [] and a line sensor [] are mounted on
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`the reading unit 6.” (Ex. 1005 at 8:61-64; Ex. 1002 at ¶ 59). Kokubo discloses a
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`“drive gear 7a, a driven pulley 9, and a timing belt 10” which work with the motor
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`7 to move the carriage. (Ex. 1005 at 9:11-17; Ex. 1002 at ¶ 60).
`
`3. Watanabe
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`Watanabe issued on October 29, 1991. (Ex. 1006). Watanabe is prior art
`
`under U.S.C. § 102(b). Watanabe discloses a digital microfilm reader/printer for
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`reading and printing an image. (Ex. 1006 at 3:45 to 4:6; Ex. 1002 at ¶ 62).
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`Watanabe discloses that the “optical system 33 includ[es] a projection lens 24, an
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`image rotating prism 26 (serving as image rotating means) and plural reflection
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`mirrors 28, 30 and 32.” (Ex. 1006 at 5:24-27; see also Ex. 1002 at ¶¶ 27, 64).
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`Watanabe discloses a movable plate 80 slidingly coupled to the guide rail 82 via
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`cylindrical slots in the movable plate, which enable the plate to slide along the
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`guide rail. (Ex. 1006 at 6:62-7:3; see also Ex. 1002 at ¶¶ 27, 66).
`
`C. Background of the Technology and Summary of ‘279 Patent
`
`The ‘279 Patent describes a microform imaging apparatus. (‘279 Patent at
`
`Abstract, 1:12-13; Ex. 1002 at ¶¶ 20-22). Microform readers have existed for
`
`decades and certainly predate the ‘279 Patent. (Ex. 1002 at ¶ 23). The ‘279 Patent
`
`discloses microform reader patents dating back to 1973, but these reading devices
`
`were well known long before the 1970s. (Ex. 1001 at 1:38-40, 1:59-60, 2:16-17,
`
`2:43-44). Microform reading devices have been used for nearly a century to read
`
`and view documents stored as microform including Microfilm, Microfiche,
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`Aperture cards, etc. (Ex. 1002 at ¶ 23). Microform is stored on reel film or as
`
`cassettes, which can hold thousands of pages of miniaturized documents for
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`efficient archiving and storage. (Ex. 1002 at ¶ 23). A user operates a microform
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`reader to access the archived documents through magnification and display. (Ex.
`
`1002 at ¶ 23). Microform’s ability to store many documents in a small space
`
`became increasingly popular in the 1950s when libraries used it for the archival of
`
`deteriorating newspaper collections and record preservation. (Ex. 1002 at ¶ 23).
`
`Due to the increased popularity of microform, microform readers were
`
`increasingly developed to enable users to retrieve and view the image information
`
`stored on the microform. (Ex. 1002 at ¶ 24). The basic operation of a microform
`
`reader has not changed for decades, i.e., microform readers retrieve image
`
`information by projecting a magnified view of microform images to readable
`
`proportions. (Ex. 1002 at ¶ 24). The image can then be viewed, printed, or saved
`
`by the user. (Ex. 1002 at ¶ 24).
`
`To improve image quality, many prior art microform readers included focus
`
`and magnification adjustment functionality, which is typically achieved by moving
`
`the lens and/or image sensor. (Ex. 1002 at ¶ 25). Devices with moving
`
`components are not a new concept. Rotating and translating parts have been a part
`
`of mechanical reading and imaging devices for the last century. (Ex. 1002 at ¶ 25).
`
`Achieving motion within a microform reading or imaging device has been
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`accomplished much in the same way for decades. (Ex. 1002 at ¶ 25). The well
`
`known and long used configurations to convert motor drive shaft rotational energy
`
`into linear motion include lead members, guide rails, and rack and pinion
`
`arrangements. (Ex. 1002 at ¶ 25). A lead member arrangement, such as a threaded
`
`lead screw (e.g., worm) and threaded (driven) nut enables linear motion as the
`
`threaded nut moves along the rotating lead member (e.g., worm). (Ex. 1002 at ¶
`
`25). The motor shaft can be directly connected to the lead member or can be
`
`coupled to the lead member through the use of pulleys and belts gears or other
`
`means of rotary motion transmission. (Ex. 1002 at ¶ 25). Another well known
`
`technique includes a guide rail, pulleys, and a drive belt. The drive belt may be
`
`coupled to a carriage that slides along the guide rail as the drive shaft rotates a
`
`drive pulley. (Ex. 1002 at ¶ 25). Additionally, a rack and pinion gear arrangement
`
`can be used, such that rotation of the motor shaft guides the pinion gear along the
`
`rack. (Ex. 1002 at ¶ 25).
`
`With the advent of the computer and advances in electronic storage, digital
`
`conversions of microform became popular. (Ex. 1001 at 1:53-60). Microform
`
`readers were adapted with image sensors such as line sensors and area sensors to
`
`capture the image information from the projected film, which could then be saved
`
`and stored electronically. (Ex. 1002 at ¶ 26). Many microform readers were
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`integrated with computers to save digital copies of the scanned images. (Ex. 1002
`
`at ¶ 26).
`
`One of the basic, well known prior art processes for retrieving and
`
`displaying an image is illustrated below:
`
`(Ex. 1002 at ¶ 28; Ex. 1004 at Fig. 4). Since microform readers are designd to
`
`project and save film images, there are a handful of components common to many
`
`of the designs. For example, most designs include a light source, a film carrier, a
`
`lens, a mirror, and an image sensor. (See generally Ex. 1004; Ex. 1005; Ex. 1006).
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`The claim elements of the ‘279 Patent are not unique, but instead include the same
`
`common components typically used in microform and other imaging devices.
`
`1.
`
`Chassis Limitation
`
`Chassis have been used in microform readers since their inception to support
`
`the different components of the microform reader. (Ex. 1002 at ¶ 29). For
`
`example, the chassis is used to support lenses, mirrors, motors, etc. (Ex. 1002 at ¶
`
`29). The chassis may be in the form of a frame or other support structure to
`
`support the light source, film carrier, fold mirror, lens, sensor, lead member,
`
`carriage(s) and/or motor(s). (Ex. 1002 at ¶ 29). Almost universally, prior art
`
`microform readers include a chassis that supports the other components of the
`
`microform reader. (Ex. 1004 at ¶ 0033, Figures 3-6; Ex. 1005 at 8:52-54, Figures
`
`1, 2, 4, and 6-8; Ex. 1006 at 5:9-13, Figure 1; Ex. 1007 at Fig. 2.1b).
`
`2.
`
`Fold Mirror Limitation
`
`Mirrors have been used in microform readers to change the direction of the
`
`light path within the device. (Ex. 1002 at ¶ 30). Even the earliest of projector
`
`systems and microform readers used mirrors to project images illuminated by a
`
`light source onto a projector screen. (Ex. 1002 at ¶ 30). In the same sense, fold
`
`mirrors are used in digital systems to direct light towards the image sensor, which
`
`enables the optical components to be positioned on different axes than the light
`
`source. (Ex. 1002 at ¶ 30). A fold mirror is supported by the chassis and typically
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`directs light from the light source, through the lens to the sensor. Utilizing a fold
`
`mirror to direct light through the lens to the image sensor or CCD was fundamental
`
`in prior art microform readers (Ex. 1004 at ¶ 0039, Figures 3-6; Ex. 1005 at 8:61-
`
`64, 12:1-33, Figures 17, 18, and 56; Ex. 1006 at 5:24-27, Figures 1-4 and 6; Ex.
`
`1007 at Figures 2.2a and 2.2b, p.16).
`
`3.
`
`Lead Member Limitation
`
`Lead members are one of the many ways that microform readers move
`
`components within the device. (Ex. 1002 at ¶ 31). For example, a lead member
`
`may be used with a belt and a motor to move a lens, an image sensor, and/or a film
`
`housing to ensure that the image is properly magnified and focused. (Ex. 1002 at ¶
`
`31). Lead member(s) guide carriage(s) along an optical path. In prior art readers
`
`where the sensor and the lens are supported by separate carriages, it was well
`
`known to use multiple lead members to guide those distinct components (e.g., the
`
`sensor and the lens may each be coupled to a separate lead member). (Ex. 1002 at
`
`¶ 31). Lead members were well known throughout the prior art as of the date of
`
`the invention of the ‘279 Patent. (Ex. 1004 at ¶ 0059, Figures 3-6; Ex. 1005 at
`
`8:52-59, Figures 1-4, 10, and 12; Ex. 1006 at 6:62-65, Figure 2; Ex. 1007 at Figure
`
`2.1b, p. 17).
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`4.
`
`Carriage Limitation
`
`Carriages have been used in microform readers and other devices to support
`
`components, especially components that move within the microform device. (Ex.
`
`1002 at ¶ 32). For example, lenses and image sensors may be attached to carriages
`
`to provide additional support and to position the components within the device.
`
`(Ex. 1002 at ¶ 32). Carriages couple the optical components to the lead member
`
`such that they can slide along the lead member. (Ex. 1002 at ¶ 32). It was well
`
`known in the prior art to utilize carriages to adjust the distance between the light
`
`source, mirror, lens, and/or sensor. (Ex. 1004 at ¶ 0059, Figures 3-6; Ex. 1005 at
`
`8:52-64, 9:11-17, Figures 1-3; Ex. 1006 at 6:62-7:3, Figure 2; Ex. 1007 at p. 16-
`
`17).
`
`5.
`
`Area Sensor Limitation
`
`As discussed above, with the advent of the computer and the continuing
`
`advances in electronic storage, digital conversions of microform became popular.
`
`(Ex. 1001 at 1:53-60). Microform readers were adapted with image sensors such
`
`as line sensors and area sensors to capture the image information from the
`
`projected film. (Ex. 1002 at ¶ 33). In the prior art, it was well known that a
`
`sensor, e.g., an area sensor, would be used to capture image data of the microform.
`
`(Ex. 1002 at ¶ 33; Ex. 1004 at ¶¶ 0009, 0039, 0049, 0055, 0059, 0112, Figures 3-6;
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`Ex. 1005 at 8:61-64, 11:63-12:6, 2:37-39, Figures 17, 18, 56; Ex. 1006 at 6:62-65,
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`7:66-68, 10:4-13, Figure 2; Ex. 1007 at p. 7, p. 14-17).
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`6.
`
`Lens Limitation
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`Lenses are used to magnify and/or focus the image on the film such that the
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`film is readable. (Ex. 1002 at ¶ 34). It was well known in the prior art to position
`
`a lens on a movable carriage between a sensor and a fold mirror to help focus the
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`image. (Ex. 1004 at ¶¶ 0039, 0055, 0059, Figures 3-6; Ex. 1005 at 8:61-64, 2:37-
`
`39, 12:1-6, Figures 17, 18, and 56; Ex. 1006 at 5:22-27, Figures 1-4 and 6; Ex.
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`1007 at Figures 2.2a and 2.2b, p. 15-17).
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`7. Motor Limitation
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`Motors have been used in microform readers for various tasks. (Ex. 1002 at
`
`¶ 35). For example, motors have been used in microform readers to advance and
`
`rewind film. (Ex. 1002 at ¶ 35). Similarly, motors have been used to move other
`
`components of the microform reader such as the lens and/or the area sensor. (Ex.
`
`1002 at ¶ 35). It was well known in the prior art to couple a motor to a carriage
`
`for moving the carriage, and therefore the sensor or lens, along a portion of the
`
`lead member. (Ex. 1002 at ¶ 35; Ex. 1004 at ¶¶ 0039, 0041-0043, 0051, 0059,
`
`0060, Figures 3-6; Ex. 1005 at 9:10-17, Figures 1, 2, and 4; Ex. 1006 at 6:57-58,
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`6:65-7:3, 7:11-13, Figures 2-4; Ex. 1007 at p. 15-18, 27). It was also well known
`
`in the prior art that the motor may be coupled to a carriage via any conventional
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`technique, e.g., a drive belt connected to the carriage for moving the carriage along
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`the lead member. (Ex. 1002 at ¶ 35; Ex. 1004 at ¶¶ 0039, 0041-0043, 0051, 0059,
`
`0060, Figures 3-6; Ex. 1005 at 9:10-17, Figures 1, 2, and 4; Ex. 1006 at 6:57-58,
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`6:65-7:3, 7:11-13, Figures 2-4; Ex. 1007 at p. 15-18, 27).
`
`8.
`
`Drive Mechanism Limitations
`
`Drive mechanisms have been used in microform readers and other devices to
`
`move components within the microform device. (Ex. 1002 at ¶ 36). It was well
`
`known in the prior art for the drive mechanism to link the carriage to the chassis
`
`via a conventional technique, e.g., a drive belt and pulley for moving the carriage
`
`along the lead member. (Ex. 1002 at ¶ 36; Ex. 1004 at ¶ 0059, Figures 3-6; Ex.
`
`1005 at 9:11-18, Figures 1, 2, and 4; Ex. 1006 at 6:62-7:3, Figure 2; Ex. 1007 at p.
`
`15-18, 27).
`
`D. The Relied-On Art Has Not Been Previously Considered
`
`Institution 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.
`
`Additionally, this petition includes an expert declaration to help explain the prior
`
`art landscape and give context to the presented combinations. (Ex. 1002).
`
`VII. PERSON OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art is a hypothetical person presumed to
`
`know the relevant prior art. Gnosis S.p.A. v. S. Ala. Med. Sci. Found., IPR2013-
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`00116, Final Written Decision (Paper 68) at 9 (citing In re GPAC Inc., 57 F.3d
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`1573, 1579 (Fed. Cir. 1995)). Such person is of ordinary creativity, not merely an
`
`automaton, and is capable of combining teachings of the prior art. Id. (citing KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007)). Citing the Federal Circuit,
`
`the Board has held “the references themselves represent the level of ordinary skill
`
`in the art.” eBay Inc. v. Locata LBS LLC, IPR2014-00585, Final Written Decision
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`(Paper 31) at 6 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
`
`(the level of ordinary skill in the art usually is evidenced by the references
`
`themselves)); In re GPAC, 57 F.3d at 1579 (finding that the Board of Patent
`
`Appeals and Interferences did not err in concluding that the level of ordinary skill
`
`in the art was best determined by the references of record).
`
`From the “Field of the Disclosure” of the ‘279 Patent and the references
`
`presented herein, it is evident that a person of ordinary skill in the art at the time of
`
`filing of the ‘279 Patent had at least some experience with microform imaging
`
`apparatuses. (See, e.g., Ex. 1001 at 1:6-7 (“present disclosure relates to digital
`
`microform imaging apparatus”)). Petitioner submits that a person of ordinary skill
`
`in the art of the ‘279 Patent at the time of filing the ‘279 Patent would have had at
`
`least a bachelor’s of science degree in either electrical engineering or mechanical
`
`engineering with at least 3 years’ experience designing electro-mechanical
`
`products including experience designing imaging equipment such as copiers,
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`scanners, and/or microform scanners and readers. (Ex. 1002 at ¶ 39).
`
`VIII. CLAIM CONSTRUCTION
`
`In an inter partes review, claim terms are given their “broadest reasonable
`
`construction.” 37 C.F.R. § 42.100(b). A correct construction under this standard
`
`must be “consistent with the specification” of the patent. In re Cuozzo Speed
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`Techs., LLC, 778 F.3d 1271, 1279 (Fed. Cir. 2015) (quoting In re Rambus, Inc.,
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`753 F.3d 1253, 1255 (Fed. Cir. 2014)). Claim terms are generally given their
`
`ordinary and customary meaning to an artisan in the context of the disclosure. In
`
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citing Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). Any special
`
`definition must be described in the specification “with reasonable clarity,
`
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`The parties have engaged in Markman briefing in the district court case; a
`
`claim construction order has not yet issued. Patent Owner construed “first
`
`carriage” to mean “first movable support structure,” “lead member” to mean
`
`“guiding element,” and “drive mechanism” to mean “parts connected to a motor
`
`for moving a component.” For the purpose of this proceeding, those constructions
`
`are the broadest reasonable constructions and are applied herein. In district court,
`
`the parties dispute whether the preamble limits the claim. For this proceeding,
`
`however, that dispute is not germane because each of the prior art references used
`
`18
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
`
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`in this petition discloses a “digital microform imaging apparatus.” Accordingly,
`
`regardless of whether the preamble is limiting, claims 44 and 49 are obvious for
`
`the reasons set forth herein.
`
`IX. PROPOSED GROUNDS OF REJECTION
`
`Ground
`1
`2
`
`Claims Challenged
`44 and 49
`44 and 49
`
`Challenge
`Obvious over Fujinawa in view of Kokubo
`Obvious over Fujinawa in view of Watanabe
`
`
`Petitioner provides the declaration of Anthony J. Senn, an expert in the
`
`relevant field, in support of these Grounds. (Ex. 1002 at ¶¶ 1-19, 37-38, 41, 53,
`
`61).1
`
`
`
`1 Mr. Senn has a bachelor’s degree in Mechanical Engineering and has worked
`
`on the design of mechanical products for over 25 years, and specifically
`
`worked on microform and roll film scanning equipment for approximately the
`
`last ten years. He is an expert in the field with specific experience in
`
`microform imaging equipment. (Ex. 1003; see also Ex. 1002 at ¶ 40).
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`Petition For Inter Partes Review of U.S. Patent No. 8,537,279
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`A. Ground 1: Claims 44 and 49 are Unpatentable Under 35 U.S.C. §
`103 as Obvious Over Fujinawa In View of Kokubo.
`
`1.
`
`Claim 44
`
`a.
`
`Fujinawa’s Disclosure of a Microform Imaging
`Apparatus
`
`Fujinawa discloses a digital microform imaging apparatus including
`
`elements of claim 44, as shown below:
`
`Claim 44
`
`[Element] - shorthand
`
`[44.0] A digital microform imaging apparatus,
`comprising:
`[44.1] a chassis;
`[44.2] a fold mirror supported by the chassis;
`[44.3] a first elongated and substantially straight
`lead member supported by the chassis;
`[44.4] a first carriage slidingly coupled to the
`first lead member;
`[44.5] an area sensor supported by the first
`carriage for movement therewith to adjust a
`distance between the area sensor and the fold
`mirror;
`[44.6] a lens supported by the chassis and
`positioned between the area sensor and the fold
`mirror; and
`[44.7] 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.
`
`[1.0] - preamble
`
`[1.1] - chassis
`[1.2] - mirror
`[1.3] - first lead member
`
`[1.4] - first carriage
`
`[1.5] - area sensor
`
`[1.6] - lens
`
`[1.7] - first motor
`
`Fujinawa discloses a digital microform imagi