`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SONY CORPORATION
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION
`Patent Owner.
`_____________
`
`Case No. IPR2018-00876
`U.S. Patent No. 6,462,905
`(Claims 1-4)
`_____________
`
`REPLY DECLARATION OF THOMAS W. VON ALTEN
`
`SONY Exhibit 1033
`SONY v. FUJI
`IPR2018-00876
`
`
`
`I.
`
`TABLE OF CONTENTS
`GROUND 1: THE MCALLISTER-I AND LAVERRIERE
`COMBINATION RENDERS CLAIMS 1-2 OBVIOUS ................................ 1
`A. McAllister-I Exhibits the Same Potential for Brake
`Misalignment that Motivated Laverriere’s Centering Ribs .................. 2
`1.
`A POSA Knew There Must Be Clearance Between
`McAllister-I’s Locking Gear and Reel Hub ............................... 3
`A POSA Knew There Must Be Clearance Between
`McAllister-I’s Mating Components ..........................................12
`The Location of McAllister-I’s Spring Is Irrelevant .................16
`3.
`The Proposed Combination Would Operate as Intended and
`Would Not Require Significant Redesign ...........................................17
`1.
`The Proposed Combination Would Operate as Intended .........17
`2.
`The Proposed Combination Would Not Require
`Significant Redesign .................................................................22
`GROUND 2: MCALLISTER ANTICIPATES CLAIM 3 ............................23
`II.
`III. GROUND 6: MIZUTANI ANTICIPATES CLAIM 3 .................................29
`
`
`2.
`
`B.
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`- i -
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`
`
`I, Thomas von Alten, declare:
`
`1.
`
`I have been retained by Wolf, Greenfield & Sacks, P.C., counsel for
`
`Petitioner Sony Corporation (“Petitioner” or “Sony”), to submit this reply
`
`declaration in connection with Sony’s Petition for Inter Partes Review of Claims 1-
`
`4 of U.S. Patent No. 6,462,905 (“the ’905 patent”).
`
`2.
`
`I am being compensated for my time at a rate of $250.00 per hour, plus
`
`actual expenses. My compensation is not dependent in any way upon the outcome
`
`of this proceeding.
`
`3. My background is provided in my earlier declaration (Ex. 1004), and
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`that declaration also contains my opinions concerning the patentability of claims 1-
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`4 of the ’905 Patent. I understand that Fujifilm subsequently disclaimed claim 4.
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`4.
`
`In preparing this reply declaration, I was asked to evaluate and respond
`
`to certain opinions that Mr. William Vanderheyden provided in a statement (Ex.
`
`2008) that Fujifilm submitted in this proceeding.
`
`I.
`
`1: THE MCALLISTER-I AND LAVERRIERE
`GROUND
`COMBINATION RENDERS CLAIMS 1-2 OBVIOUS
`As set forth in my opening declaration, a person of ordinary skill in the
`5.
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`art (“POSA”) would have had reasons to add the “centering ribs” of Laverriere to
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`the cartridge depicted in McAllister-I. The resulting McAllister-I / Laverriere
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`combination would have included every element of claims 1 and 2.
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`- 1 -
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`
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`A. McAllister-I Exhibits the Same Potential for Brake
`Misalignment that Motivated Laverriere’s Centering Ribs
`As explained in my opening declaration, Laverriere explains that
`
`6.
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`centering ribs are helpful because clearances between a braking member and the
`
`components with respect to which it moves inside a tape cartridge create the potential
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`for the braking member to become “misaligned…during assembly and/or use.” Ex.
`
`1004 ¶158; Ex. 1007 at 1:31-39.
`
`7.
`
`The same is true of McAllister-I. For example, as I previously
`
`explained, in McAllister-I there must be clearance between the outer circumference
`
`of the locking gear 42 (braking member) and the inner surface of the reel hub 32 to
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`ensure undisturbed rotation of the reel as tape is wound or unwound. Ex. 1004 ¶161.
`
`Likewise, as I also previously explained, in McAllister-I there must be clearance
`
`between mating components 58 and 60 that attach the braking member to the top
`
`portion of the cartridge shell because these components move up and down relative
`
`to one another when the braking member moves up and down to unlock and lock the
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`reel. Ex. 1004 ¶162; McAllister-I at Fig. 3.
`
`8. Mr. Vanderheyden disagrees and states that “a person of ordinary skill
`
`in the art would not identify a misalignment problem in McAllister-I.” 2008 ¶130.
`
`Mr. Vanderheyden is incorrect.
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`- 2 -
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`1.
`
`A POSA Knew There Must Be Clearance Between
`McAllister-I’s Locking Gear and Reel Hub
`9. Mr. Vanderheyden states that “a POSA would not assume that
`
`clearance exists between elements, if such a clearance or spacing is not explicitly
`
`shown in the figures” of McAllister-I. Ex. 2008 ¶133. He then argues that there
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`could be a “line-to-line” fit (i.e., no clearance at all) between McAllister-I’s locking
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`gear 42 (braking member) and the inner surface of its reel hub 32. Id. This, of
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`course, is impossible as I explained in my opening declaration, because the reel of
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`such a cartridge rotates at speeds of more than 2,000 rpm and is expected to last for
`
`years. Were the locking gear 42 and the inner surface of the reel hub 32 in contact
`
`with each other, operation of the cartridge would be impossible. Indeed, in an earlier
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`section of his declaration, Mr. Vanderheyden admitted that McAllister-I is designed
`
`to have clearance between these components: “The male and female interlocking
`
`structures were designed with a tight fit1 to prevent the braking member from
`
`touching the inner wall of the reel hub, without obstructing the intended up and
`
`down movement of the braking member.” Ex. 2008 ¶69 (emphasis added).
`
`
`1 I will address Mr. Vanderheyden’s incorrect analysis of the interlocking structures
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`(i.e., mating elements 58 and 60) separately in the next section of this declaration.
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`- 3 -
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`10. While McAllister-I does not include the sort of orthogonal cross-
`
`section views that would most clearly depict clearance between locking gear 42 and
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`the inner surface of the reel hub 32 (i.e., the kinds of images that Mr. Vanderheyden
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`admits allow the viewer to clearly see such clearance in Laverriere, Ex. 2008 ¶104),
`
`a POSA reading McAllister-I and understanding typical cartridge design would
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`readily have understood that such clearance certainly exists for multiple reasons.
`
`11. First, as noted above, Mr. Vanderheyden’s hypothetical alternative, in
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`which there is a “line-to-line” fit (i.e., no clearance) between the braking member
`
`and the inner surface of the reel hub, is not practical. Any contact between moving
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`parts during operation – let alone a reel spinning at 2,000 rpm – would create
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`vibration and friction. Vibration in the tape path would interfere with the very
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`sensitive operation of a magnetic tape drive reading and writing system. Friction in
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`turn creates heat and the potential for damage to either the cartridge or the magnetic
`
`tape. No POSA would ever consider it a viable design to use a “line-to-line” fit,
`
`with no clearance, between the braking member and the inner surface of the reel hub.
`
`12. Second, the prior art consistently depicts clearance between the braking
`
`member and the inner surface of the reel hub. E.g., Ex. 1006 (Mizutani) at FIG.1;
`
`Ex. 1007 (Laverriere) at FIGS. 2 & 3; Ex. 1010 (Morita-I) at FIG. 1; Ex. 1011
`
`(Morita-II) at FIGS. 4, 7, 9, 10, 12, 14; Ex. 1012 (Tsuyuki) at FIG. 1; Ex. 1027
`
`(ECMA-210) at 22 (FIG. 13), Ex. 1028 (ECMA-196) at 28 (FIG. 16), Ex. 2002
`
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`- 4 -
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`
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`(Shima) at FIG. 2(b), Ex. 2017 (Imation patent publication) at FIGS. 1-3. The
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`uniformity of the prior art on this point confirms that Mr. Vanderheyden’s
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`hypothetical alternative “line-to-line” fit (i.e., no clearance) between the braking
`
`member and the inner surface of the real hub is not how a POSA would have
`
`understood McAllister-I’s components to be sized.
`
`13. The prior art listed in the prior paragraph includes both references
`
`describing LTO-style cartridges (e.g., Mizutani, Morita-II, Shima, Tsuyuki) and
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`earlier-generation products embodying IBM 3480-style cartridge designs (e.g.,
`
`Laverriere, Morita-I, ECMA-210, ECMA-196, Imation patent publication).
`
`14.
`
`In an attempt to suggest that McAllister-I should be interpreted as
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`lacking any clearance between the braking member and the inner surface of the reel
`
`hub, Mr. Vanderheyden tries to differentiate between the braking members in LTO-
`
`style cartridges and those in 3480-style cartridges. For example:
`
`• “The projecting means of Laverriere were intended to address unique issues
`
`with respect to the Laverriere brake button cartridge design, which included a
`
`large space between the brake button and the inner wall of the reel hub.
`
`McAllister-I, on the other hand, specifically criticized and rejected the exact
`
`cartridge design used by Laverriere.” Ex. 2008, ¶128.
`
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`- 5 -
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`
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`• “To help overcome the above disadvantages associated with the 3480-type
`
`magnetic tape cartridge, future generations of tape cartridges stopped using
`
`brake buttons altogether…LTO cartridges moved away from the brake button
`
`of the 3480-type cartridge, and instead utilized a completely different braking
`
`mechanism known as an LTO reel lock mechanism, also referred to as an
`
`alternative reel lock mechanism.” Id., ¶65.
`
`15.
`
`In fact, however, the braking members in LTO-style cartridges and
`
`3480-style cartridges are virtually identical. As shown below, all comprise
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`(proceeding from top to bottom) an upward facing element that mates with a
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`downward-facing element on the top shell of the cartridge, a downward-facing gear
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`for locking the reel, and a downward-facing area in the middle of the braking
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`member to receive an upward force causing the braking member to disengage from
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`the reel so that the reel can rotate. The difference between the 3480-style design and
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`the LTO-style design lies not in the braking member, but in the element that actuates
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`(pushes up on) the braking member to disengage it from the reel. In 3480-style
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`cartridges, a chucking member in the drive unit presses up directly on a central
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`portion of the braking member (referred to as the “brake button”2), while in LTO-
`
`
`2 Sometimes the prior art uses a shorthand in which the entire 3480 braking member
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`is referred to as a “brake button” – a phrase Mr. Vanderheyden repeats many times
`
`
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`- 6 -
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`
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`style cartridges, the chucking member pushes up, in three equidistant locations,
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`against the legs of an intermediate element called a spider washer, which in turn
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`presses up on a central portion of the braking member.
`
`McAllister-I, FIG. 2B
`
`Morita-I, FIG. 1
`
`
`
`
`
`
`
`
`
`in his statement in an apparent effort to make the 3480-style braking member sound
`
`different from the LTO-style braking member – but in fact the “button” is simply the
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`portion of the braking member against which the drive unit chuck pushes. A more
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`accurately descriptive name for the part as a whole is “braking member.”
`
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`- 7 -
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`16. That difference (i.e., imposition of a spider washer between the drive
`
`unit’s chucking member and the braking member in the LTO design) has nothing to
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`do with the shape or diameter of the braking member. As shown in orthogonal cross-
`
`section figures in Mizutani and Morita-II, LTO-style cartridges certainly had
`
`clearance between the braking member and the inner surface of the hub.3 Indeed,
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`ECMA-319, the standard that the LTO consortium prepared in the late 1990’s and
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`published in 2001, clearly shows such clearance (highlighted in Figure 10 below).4
`
`
`3 Mr. Vanderheyden’s suggestion that the “new more efficient release mechanism
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`[of LTO] also obviated the need for the ‘significantly’ different diameters between
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`brake button and hub” (Ex. 2008 ¶153) is nonsensical because, as described already,
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`the imposition of a spider washer in the LTO design had no impact on the braking
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`member. Unsurprisingly, Mr. Vanderheyden cites not a single document (let alone
`
`a prior art document) describing an LTO cartridge as lacking clearance between the
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`braking member and the inner surface of the hub.
`
`4 As I have previously mentioned, I was intimately involved in development of the
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`mechanical design for the LTO cartridge on behalf of HP (one of the three members
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`of the LTO consortium) and I prepared the drawings of the cartridge that appear in
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`the ECMA-319 standard.
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`- 8 -
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`
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`Ex-1034 at 28.
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`17.
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`Indeed, the ’905 patent itself (which purports to describe features of
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`LTO-style cartridges) describes and even claims the existence of clearance between
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`the braking member and the inner surface of the hub in an LTO cartridge. The reel’s
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`engagement gear, which itself is inset with respect to the inner surface of the hub,
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`has an outer diameter “D” that is described and claimed to be larger than the outer
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`diameter “d” of the braking gear. Ex. 1001 at 6:17-20, claim 3. A fortiori, the inner
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`diameter of the hub (which is larger than the outer diameter of the reel’s engagement
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`gear) is larger than the outer diameter of the braking gear, resulting in clearance
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`between the braking gear and the inner surface of the hub.
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`- 9 -
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`18.
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`Indeed, the ’905 patent is based on the idea that clearance between the
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`braking member and other components with respect to which it moves can cause the
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`braking member in an LTO cartridge to move “off center” (id., 1:67), requiring guide
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`members to center it again. Mr. Vanderheyden proceeds from an assumption – i.e.,
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`- 10 -
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`
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`that LTO-style braking members lack clearance relative to the reel hub and thus
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`cannot go off-center – that directly contradicts the key premise of the ’905 patent
`
`itself.
`
`19. Mr. Vanderheyden also contends, as a backup argument, that “[e]ven if
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`some spacing alleged by the Petitioner was present…that in itself does not mean
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`there would be misalignment. The specific amount of spacing is critical to
`
`understanding whether misalignment issues would exist.” Ex. 2008, ¶136. Here Mr.
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`Vanderheyden misses the point of my obviousness analysis. While it is physically
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`possible with sufficient time and resources and precise enough manufacturing
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`equipment, to build a tape cartridge in which clearances are small enough to
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`minimize misalignment of a braking member, doing so is an expensive and time-
`
`consuming proposition. Laverriere clearly taught – a decade before the teaching was
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`reiterated in the ’905 patent itself – that adding guide members was an efficient way
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`to address the possibility of misalignment due to clearances that could and likely
`
`would exist in practical implementations of a tape cartridge that includes a braking
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`member that moves up and down to unlock and lock a reel. The fact that it is possible
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`to make a tape cartridge that can operate with little clearance (and thus without a
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`need for guide members) does not disturb the conclusion that, in view of Laverriere’s
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`clear teachings, guide members are obvious components to use to address
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`- 11 -
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`
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`misalignment, instead of expending the resources necessary to avoid the need to use
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`guide members.
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`2.
`
`A POSA Knew There Must Be Clearance Between
`McAllister-I’s Mating Components
`20. Mr. Vanderheyden also says, repeatedly, that LTO cartridges were
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`designed by the LTO consortium with a “tight fit” between the mating components
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`(which he refers to as “male” and “female” components) that connect the top of the
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`braking member to the shell of the cartridge, such that misalignment of the braking
`
`member would not occur. Ex. 2008 ¶¶69, 71, 74, 131, 139. Once again, Mr.
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`Vanderheyden’s premise contradicts the ’905 patent itself, which includes Figure 5
`
`showing clearance between the mating components in question, in a “prior art” LTO
`
`cartridge, such that the braking member tilts substantially.
`
`21. Mr. Vanderheyden cites a single sentence from McAllister-I in support
`
`of this assertion that the LTO consortium (and McAllister-I) anticipated a “tight fit”
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`between the mating components, without clearance that would permit misalignment:
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`“Locking gear is moveable in only one dimension, parallel to the axis of rotation of
`
`reel 14.” Ex. 1005 at 3:44-45. Mr. Vanderheyden misinterprets this sentence, which
`
`simply conveys that the braking member was designed to move up and down parallel
`
`to the axis of rotation (i.e., to unlock and lock the reel) but not to rotate. To stop the
`
`reel from rotating, of course, the braking member itself must be locked against
`
`rotation. This is how the LTO consortium, of which my employer HP was a member,
`- 12 -
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`
`
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`and in which I personally participated in the original design of the LTO cartridge,
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`understood the function of the braking member.
`
`22. Other LTO prior art confirms this straightforward understanding of the
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`mating components. Morita-II ¶29 (“…whereby the brake member 104 is able to
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`move toward and away from the bottom wall 121a of the reel hub 121 without
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`rotating relative to the reel hub”); Mizutani ¶19 (“…vertical sliding is enabled, but
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`relative rotation is disabled…”); Tsuyuki ¶16 (describing components as
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`“restrict[ing]” the brake “to a non-rotatable state”).
`
`23. Given that the braking member must move up and down to unlock and
`
`lock the reel, the “tight fit,” with zero clearance, that Mr. Vanderheyden argues
`
`existed between the mating components in LTO cartridges (and in McAllister-I in
`
`particular), would render the cartridge unusable because the braking member would
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`be unable to move reliably and repeatably between the locked (“in hand”) and
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`unlocked (“in drive”) configurations. In a mechanical device requiring repeated
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`movement of connecting parts relative to one another, such friction would be
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`intolerable. No POSA would interpret McAllister-I to describe the zero-clearance
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`arrangement that Mr. Vanderheyden suggests.
`
`24. Moreover, contrary to Mr. Vanderheyden’s assumption, the LTO
`
`consortium absolutely recognized that the mating components that connect the
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`braking member to the cartridge shell would have clearances, and even specified the
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`
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`- 13 -
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`
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`maximum effect of those clearances. For example, in ECMA-319 (Ex. 1034)—the
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`published standard for the first generation of LTO cartridges—Section 8.6.1 requires
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`that, in the locked position, “the angular resolution [of the locking mechanism] shall
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`not be greater than 3°,” and that the reel, which in the locked position is coupled to
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`the braking member, “shall not rotate by more than 10° when a torque not greater
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`than 0,32 N· m is applied in the direction that will cause the tape to unwind.”
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`25. Likewise, Section 8.6.7 required that, in the in-hand position (i.e., when
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`the reel is locked against rotation) “[t]he d16 dimension of the reel” (i.e. its central
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`axis) “shall be centered to the central window (figure 3) within ±0.25 mm.”
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`26. Clearances between the mating components connecting the braking
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`member to the cartridge shell contribute both to the permitted rotation of the reel
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`(8.6.1) and to its permitted displacement relative to center (8.6.7). Thus, the LTO
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`consortium expressly acknowledged, in the LTO standard itself, that these mating
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`components would have clearances between them, permitting some rotation and
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`displacement of the braking member and the reel (coupled to the braking member).
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`Simply put, the LTO consortium recognized the mechanical engineering reality that
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`assembly clearances, as well as variations in part dimensions (i.e., manufacturing
`
`tolerances) were a necessary part of any mechanical design.
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`27. Given the requirement for operational clearance between moving
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`components, a POSA would have recognized that there was some space between
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`- 14 -
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`
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`female structure 60 on locking gear 42 and male structure 58 on cartridge housing
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`12. Such space would have introduced the potential for locking gear 42 to become
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`misaligned or tilted. The prior art confirms this.
`
`28. Mizutani, for example, explains that for the mating projections to allow
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`vertical movement “there must be a certain amount of clearance maintained between
`
`the” projections. Mizutani ¶5. This clearance, Mizutani explains, is a “factor”
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`causing the brake “to tilt.” Id.
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`29. Shima, which Mr. Vanderheyden cites, also confirms that clearance
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`between mating projections creates the potential for the brake to become misaligned.
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`Shima explains that “looseness of engagement between the upper casing and brake
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`lock or between brake lock and hub can sometimes bring the center of brake lock 5
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`out of alignment.” Ex. 2002 at 5:47-50. Shima thus recognizes the potential for
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`“looseness,” i.e., clearance, between the mating projections in an LTO cartridge to
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`create brake misalignment.
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`30. Tsuyuki, which discloses an LTO cartridge, also recognizes that even
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`with mating projections “[i]t is difficult to hold [the brake] matched to the reel
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`rotation center.” Tsuyuki ¶6. A POSA would understand that clearance is the cause
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`of the difficulty.
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`- 15 -
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`
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`The Location of McAllister-I’s Spring Is Irrelevant
`3.
`31. Mr. Vanderheyden states that the “position of biasing spring 64 in
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`McAllister-I also helps to prevent any potential misalignment of locking gear 42.”
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`Ex. 2008, ¶141. Again, I disagree.
`
`32. McAllister-I is explicit that the location of its biasing spring is
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`exemplary and that “any suitable interlocking structures and biasing mechanism may
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`be used.” McAllister-I at 3:61-64. If, as Mr. Vanderheyden posits, the position of
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`the spring served an important function such as preventing potential misalignment,
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`McAllister-I certainly did not recognize it.
`
`33.
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`Indeed, a centrally located spring is more likely to cause misalignment
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`of the locking gear than to prevent it. With a centrally located spring, the urging
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`force on the locking gear is focused on the center of the locking gear. Any
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`counterforces on the outer perimeter of the locking gear would be largely unopposed
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`and the central spring would act as a fulcrum aiding, rather than preventing, tilting.
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`In contrast, a large diameter spring located around the perimeter of the locking gear
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`would oppose any counterforces and decreases the amount of tilt the locking gear
`
`experiences. I illustrate this phenomenon below:
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`- 16 -
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`Central Spring Design
`
`Peripheral Spring Design
`
`
`Locking Gear
`
`
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`34. McAllister-I’s spring, if relevant to the presence of tilt at all, suggests
`
`
`
`
`
`that McAllister-I is even more prone to tilt than other LTO-type cartridges that use
`
`a peripheral spring design.
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`B.
`
`The Proposed Combination Would Operate as Intended and
`Would Not Require Significant Redesign
`The Proposed Combination Would Operate as Intended
`1.
`35. Mr. Vanderheyden argues that adding the centering ribs of Laverriere
`
`to the inner surface of the McAllister-I reel hub would inhibit the function of the
`
`McAllister-I cartridge and/or require significant redesign. I disagree.
`
`36. Mr. Vanderheyden notes Laverriere’s description that its centering ribs
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`“contain[] the brake button and maintain[] the brake button in the desired position.”
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`Ex. 2008, ¶156. Mr. Vanderheyden then interprets this to mean that there can be no
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`- 17 -
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`
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`clearance between the centering ribs and the braking member (particular once the
`
`braking member is adjacent the narrowest “vertical” portion of the ribs as the braking
`
`member enters the locked position) and that this lack of clearance would inhibit the
`
`function of the cartridge. Ex. 2008, ¶157. A POSA, however, would understand
`
`that the quoted phrase merely means directing the brake toward the center of the reel
`
`but would not remove all clearance. The brake needs to move up and down, and a
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`POSA would have included clearance between the vertical portions of the ribs and
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`the braking member so that the braking member could transition smoothly from the
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`locked position to an unlocked position.
`
`37.
`
`In fact, Laverriere is clear that incorporating guide ribs requires
`
`“minimal modifications to the structure of the hub 66” and the presence of the ribs
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`“does not otherwise interfere with assembly or operation of the cartridge.” Ex. 1007
`
`at 5:25-27. A POSA would recognize that to avoid interfering with the operation of
`
`the cartridge, some clearance is required.
`
`38. Mr. Vanderheyden’s opinion is based on a misreading of Laverriere.
`
`Mr. Vanderheyden interprets Laverriere’s use of the word “abut” to mean that there
`
`is contact between “a vertical surface of the disc 61” of the braking member and a
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`“corresponding vertical surface on projecting means 70.” Ex. 2008, ¶ 105; see also
`
`id. ¶¶ 146, 156. In support of his interpretation, Mr. Vanderheyden cites Column 5,
`
`lines 49-54 of Laverriere as well as Column 4, line 55 through Column 5, line 2.
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`- 18 -
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`39. Yet, Laverriere is clear that the “abutting surface” is the inclined
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`portion 72 (red below)—not the vertical portion (green below) of the projecting
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`means 70 (yellow below). “The projecting means 70 preferably includes an
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`abutting surface 72 which is angled relative to a plane tangential to the annular
`
`wall 68 of the hub 66.” Ex. 1007 at 4:30-31.5 The so-called “vertical portion” of
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`the projecting means is not “angled relative to a plane tangential to the annular wall
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`68.” Rather, it is a cylinder that is parallel to the cylinder of the annular wall 68 of
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`the hub 66.
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`5 Elsewhere Laverriere mentions that curves 76 and 77 (which likewise are angled
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`relative to a plane tangential to the annular wall 68 of the hub 66) “cause the abutting
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`surface 72…to include angled, contoured steps which gradually and positively
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`receive and position the circular brake concentrically relative to the hub 66.” Ex.
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`1007 at 4:46-53. Thus, curves 76 and 77, as well as inclined abutting surface 72, are
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`also abutting surfaces that contact and center the braking member. But the “vertical”
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`portions of the projections 70’ (i.e., the cylindrical portions like the portion colored
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`green above) are not angled or contoured and are not described as centering the
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`braking member – in fact, because they are vertical they cannot move the braking
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`member toward center.
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`40. Likewise, claim 1 of Laverriere refers to the “surface 72 of the
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`projecting means as that which “abuts the circular periphery of the brake button…”
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`Ex. 1007 at 5:49-51. This recitation, which is one of the passages on which Mr.
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`Vanderheyden relies, establishes the opposite of what he suggests: it is the inclined
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`surface (conical section in red above), not the vertical surface (cylindrical section in
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`green above) of the rib that contacts the braking member.
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`41. Mr. Vanderheyden also cites Column 4, line 55 through Column 5, line
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`2 of Laverriere. That portion merely says that the “projecting means 70” as a whole
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`receives and centers the braking member. It also states that the “first step 78 formed
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`on the bottom portion 69 of the hub 66 advantageously receives the first step 80
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`formed on the brake button 61”s—referring to two horizontal (not vertical) surfaces
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`in the view of Figure 3. The word “receives” in no way implies a lack of clearance
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`between the vertical cylindrical portions of the braking member and the projecting
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`means. Indeed, there is nothing in Laverriere suggesting that the vertical
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`(cylindrical) portion of the projecting means contacts, let alone constrains, the
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`braking button in the Laverriere arrangement. In fact, the evidence is 100% to the
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`contrary: Laverriere states very clearly that the rib “does not otherwise interfere with
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`assembly or operation of the cartridge.” Ex. 1007 at 5:25-27.
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`42. Mr. Vanderheyden also cites Shima when arguing that “a POSA would
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`not look to combine the [centering ribs] of Laverriere with an LTO-type cartridge
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`described in McAllister-I.” 2008 ¶158. The portion of Shima that Mr.
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`Vanderheyden cites explains that “smooth release of the brake” in the Laverriere
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`design “is sometimes impossible because…the outer periphery of [the braking
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`member] catches a sloped rib” due to misalignment of the brake. Ex. 2002 at 1:60-
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`67. This passage merely identifies a potential problem with guide ribs during
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`“release.” i.e., transition from the locked to unlocked state. To resolve this potential
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`problem, Shima teaches the use of a release member—like spider washer 40 used in
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`McAllister-I—with a dented center that keeps the brake centered during the
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`transition from the locked to unlocked states. Ex. 2002 at 2:1-5, 5:46-6:4
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`43. As noted in the prior paragraph, Shima is focused on centering the brake
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`during the transition from the locked to unlocked state, and it offers a solution for
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`keeping the braking member centered during that process to avoid the potential
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`problem of the braking member catching on a rib. Shima never suggests that the
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`ribs – which help center the braking member during the transition from the unlocked
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`state to the locked state – should be removed. As Laverriere explains, and Shima
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`does not dispute, the centering ribs “gradually and positively receive and position
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`the circular brake button concentrically relative to the hub.” Laverriere at 4:51-53.
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`The ribs “receive” and “position” the brake when the brake is moving down to
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`transition the cartridge from the unlocked state to the locked state. Thus, the
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`centering ribs perform the centering function during the locking process and Shima’s
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`dented spider washer does so during the unlocking process. In short, nothing in
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`Shima would have discouraged a POSA from using Laverriere’s centering ribs in an
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`LTO cartridge such as McAllister-I.
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`2.
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`The Proposed Combination Would Not Require Significant
`Redesign
`44. Mr. Vanderheyden also argues that the proposed combination would
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`“require engineering redesigns to several existing components” of the McAllister-I
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`cartridge. 2008 ¶163. I disagree that the proposed combination would require more
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`than ordinary, indeed very modest, effort.
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`45. Mr. Vanderheyden speculates that the diameters of the reel hub 32,
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`locking gear 42 and reel gear 34 would need to be modified to accommodate the
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`Laverriere centering ribs. Ex. 2008 ¶163. I disagree. As Mr. Vanderheyden has
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`noted, McAllister-I does not specify precise dimensions in either its text or drawings.
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`It depicts the necessary and expected clearance a POSA would know was required
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`for a functional mechanism. The design and dimensioning of centering ribs within
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`the existing constraints would be straightforward work for a mechanical engineer
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`with two years of experience in cartridge design or equivalent work
`- 22 -
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`46. Mr. Vanderheyden also speculates that “spider washer 40 and legs 50
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`would need to be reshaped, and interlocking structures 58 and 60 would need to be
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`adjusted and maybe even reshaped.” Ex. 2008, ¶163. Again, I disagree. I do not
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`know what specific design changes Mr. Vanderheyden envisions, but the proposed
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`combination could have been accomplished without any need to alter spider washer
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`40, its legs 50, or the interlocking structures 58 and 60. To the extent some
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`modifications would have been needed for some unknown reason, a mechanical
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`engineer with two years of experience in cartridge design would certainly know how
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`to accomplish such modifications.
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`II. GROUND 2: MCALLISTER ANTICIPATES CLAIM 3
`I agree with Mr. Vanderheyden that the standard dictionary definition
`47.
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`of diameter is “a straight line segment passing through the center of a figure, esp. a
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`circle or sphere, and terminating at the periphery.” Ex. 2008, ¶169. I disagree,
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`however, with his suggestion that a POSA cannot assess a figure’s implied diameter
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`simply because a straight line segment cannot be drawn on the figure.
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`48. POSAs—mechanical engineers with two years of cartridge design
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`experience in addition to years of mechanical engineering education—would have
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`been able to assess a component’s implied diameter even if a drawing of the
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`component was presented such that a straight segment could not be accurately drawn
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`on it. This is especially true where, as here, the issue is whether the diameter of one
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`- 23 -
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`component is any amount larger than the diameter of another compone