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`Paper No. __
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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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`SONY CORPORATION
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`Petitioner,
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`v.
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`FUJIFILM CORPORATION
`Patent Owner.
`_____________
`
`Case IPR2018-00876
`Patent No. 6,462,905 B1
`_____________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................. 1
`I.
`II. CLAIMS 1-3 ARE UNPATENTABLE ............................................................ 2
`A. Ground 1: Claims 1-2 Would Have Been Obvious Over
`McAllister-I and Laverriere ......................................................................... 2
`1. McAllister-I Has the Same Potential for Brake Misalignment
`that Motivated Laverriere’s Centering Ribs .......................................... 2
`2. A POSA Would Not Have Been “Discouraged” From Utilizing
`the Teachings of Laverriere in McAllister-I ......................................... 6
`3. The Combination Would Have Worked For Its Intended
`Purpose and Would Have Been Within the Skill of a POSA................ 8
`4. Laverriere’s “Centering Ribs” Are “Guide Members” .......................11
`B. Ground 2: McAllister-I Anticipates Claim 3 .............................................12
`C. Ground 3: Claim 3 Would Have Been Obvious Over McAllister-I
`and Laverriere ............................................................................................19
`D. Ground 6: Mizutani Anticipates Claim 3 .................................................21
`1. Mizutani Discloses the Outer Diameter Limitation ............................21
`2. Mizutani Discloses an Engagement Gear Tooth on an
`Engagement Gear Projection ...............................................................24
`E. Ground 7: Claim 3 Would Have Been Obvious Over Mizutani ..............25
`III. THE VANDERHEYDEN “DECLARATION” IS UNSWORN AND
`ENTITLED NO WEIGHT ..............................................................................26
`IV. CONCLUSION ................................................................................................27
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`- i -
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`TABLE OF AUTHORITIES
`
`
`CASES
`Arctic Cat, Inc. v. Polaris Indus., Inc.,
`IPR2014-01427, Paper 58 (P.T.A.B. Feb. 4, 2016) .............................................10
`ASM IP Holding B.V. v. Hitachi Kokusai Elec. Inc.,
`IPR2018-01523, 2019 WL 650552 (P.T.A.B. Feb. 15, 2019) ............................15
`Cummins-Allison Corp. v. SBM Co., Ltd.,
`484 F. App’x. 499 (Fed. Cir. 2012) ......................................................................15
`Hutchinson Tech. Inc. v. Nitto Denko Corp.,
`IPR2017-01421, 2018 WL 5098867 (P.T.A.B. Oct. 10, 2018) ...........................15
`In re Brandt,
`886 F.3d 1171 (Fed. Cir. 2018) ............................................................................25
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ................................................................... 6, 7, 21
`In re ICON Health and Fitness, Inc.,
`496 F.3d at 1382 (Fed. Cir. 2007) ........................................................................11
`In re Katz Interactive Call Processing Patent Litigation,
`639 F.3d 1303 (Fed Cir. 2011) ............................................................................... 7
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) ............................................................................25
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .............................................................................. 9
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) ..............................................................................18
`In re Wagner,
`63 F.2d 987 (C.C.P.A. 1933) ................................................................................14
`In re Wolfensperger,
`302 F.2d 950 (C.C.P.A. 1962) ..............................................................................15
`
`- ii -
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`
`
`In re Yufa,
`452 F. App’x 998 (Fed. Cir. 2012) ......................................................................... 7
`Int’l Bus. Machines Corp. v. Intellectual Ventures II LLC,
`IPR2015-01323, Paper 38 (P.T.A.B. Sept. 27, 2015) ..........................................27
`Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC,
`381 F.3d 1142 (Fed. Cir. 2004) ............................................................................15
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................... 8
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) ............................................................................10
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .............................................................................. 9
`Telebrands Corp. v. Tinnus Enter. LLC,
`PGR2017-00015, 2018 WL 5084901 (P.T.A.B. Oct. 10, 2018) ..........................15
`VSR Indus., Inc. v Cole Kerpo Int’l, LLC,
`IPR2015-00182, Paper 33 at 18 (P.T.A.B. April 28, 2016) .......................... 11, 26
`ZTE (USA) Inc. v. Evolved Wireless LLC,
`IPR2016-00757, 2017 WL 6206107 (P.T.A.B. Nov. 30, 2017) ..........................27
`STATUTES
`28 U.S.C. § 1746 ......................................................................................................26
`REGULATIONS
`37 C.F.R. § 1.68 .......................................................................................................26
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`- iii -
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`APPENDIX LISTING OF EXHIBITS
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`Description
`
`Exhibit
`1001 U.S. Patent No. 6,462,905
`1002
`File History for U.S. Patent No. 6,462,905
`1003 CV of Mr. Thomas W. von Alten
`1004 Declaration of Mr. Thomas W. von Alten
`1005 U.S. Patent No. 5,901,916 (“McAllister-I”)
`1006
`Japanese Patent Publication No. H11-273307 (“Mizutani”)
`1007
`European Patent Publication No. 0 284 687 A2 (“Laverriere”)
`1008 U.S. Patent No. 5,927,633 (“McAllister-II”)
`
`1009
`File History for European Patent No. 1 098 320 B1
`1010
`Japanese Patent Publication No. S63-11776 (“Morita-I”)
`1011
`European Patent Publication No. 0 926 676 A1 (“Morita-II”)
`1012
`Japanese Patent Publication No. H11-288571 (“Tsuyuki”)
`1013
`International Patent Publication No. WO 99/41513 (“Betzler”)
`1014
`Fujifilm Corp. and Fujifilm Recording Media U.S.A., Inc.’s Proposed
`Constructions in Certain Magnetic Data Storage Tapes and Cartridges
`Containing the Same, 337-TA-1076 (dated Jan. 18, 2018)
`Summary of Petitioner’s Proposed Claim Constructions
`1015
`1016 Redline Comparison of Issued Claim 4 of U.S. Patent No. 6,462,905 and
`Original Claim 4 of EP 1 098 320 B1
`1017 U.S. Patent No. 2,778,636
`1018
`Excerpt from FUNK & WAGNALLS NEW INTERNATIONAL DICTIONARY OF
`THE ENGLISH LANGUAGE (2000)
`Excerpt from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
`LANGUAGE (2011)
`Excerpt from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
`LANGUAGE (2011)
`1021 Works, G., “CURVIC COUPLING DESIGN,” Gear Technology
`(November/December 1986)
`
`1019
`
`1020
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`- iv -
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`1022
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`Excerpt from WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY OF
`THE ENGLISH LANGUAGE (1989)
`Excerpt from RANDOM HOUSE UNABRIDGED DICTIONARY (1993)
`1023
`1024 U.S. Patent No. 1,660,792
`1025 Claim Comparison of Original Claim 4 of EP 1 098 320 B1 and
`Amended Claim 1 of EP 1 098 320 B1
`1026 Claim Element Comparison of Primary References
`1027
`Standard ECMA-120 (Dec. 1993)
`1028
`Standard ECMA-196 (Dec. 1993)
`1029
`European Patent No. 1 098 320 B1
`1030 Declaration of Nathan R. Speed in Support of Motion for Admission Pro
`Hac Vice
`Enhanced Image of Figure 3 of McAllister-I
`1031
`1032 Annotated Enhanced Image of Figure 3 of McAllister-I
`1033 Reply Declaration of Thomas von Alten
`1034
`ECMA 319
`1035
`Engineering Aid 3 - US Navy (COMPLETE COPY)
`1036
`https://www.merriam-webster.com/dictionary/projection
`1037 Deposition Transcript of William Vanderheyden (February 27, 2019)
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`- v -
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`I.
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`INTRODUCTION
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`Claims 1-3 recite incremental alleged improvements to an indisputably
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`conventional tape cartridge. At institution, the Board found it reasonably likely the
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`claims were obvious (Grounds 1, 3, and 7) and/or anticipated (Grounds 2 and 6).
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`Fujifilm’s POR, which relies on an unsworn expert statement that is entitled no
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`weight, provides the Board no reason to reach a different conclusion.
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`Ground 1 demonstrated that a POSA would have added Laverriere’s
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`“centering ribs” to McAllister-I’s cartridge to prevent brake misalignment during
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`assembly or use. Fujifilm does not address whether the combination would have
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`been an obvious way to prevent brake misalignment during assembly, thus leaving
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`that rationale unrebutted. With respect to misalignment during use, Fujifilm
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`contends that type of misalignment would not happen in McAllister-I’s LTO-type
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`cartridge because the relevant parts would have fit tightly together without
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`clearance—but that suggestion is contrary to the prior art and even the ’905 patent
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`itself. Fujifilm also argues that adding ribs to McAllister-I would require significant
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`redesign—impermissibly treating a POSA as an automaton.
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`Grounds 2 and 6 demonstrated that claim 3’s relational limitation—an
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`engagement gear larger in outer diameter than a braking gear—was disclosed in the
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`figures of McAllister-I (Ground 2) and Mizutani (Ground 6). Rather than address
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`what the figures plainly disclose, Fujifilm criticizes annotations that Sony used
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`1
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`
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`simply as visual aids. Fujifilm’s criticism of annotations, however, does not detract
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`from what the un-annotated figures plainly disclose—the claimed relational
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`limitation. To avoid what is plainly disclosed, Fujifilm invites legal error by arguing
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`that patent figures cannot disclose relational limitations.
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`Grounds 3 and 7 demonstrated that using the relative outer gear diameters of
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`claim 3 was an obvious choice in both McAllister-I and Mizutani, as it ensured
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`clearance between the stationary braking gear and the reel hub that rotates around it.
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`Fujifilm does not deny that this choice was possible and logical, but argues that a
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`different design would have been preferable. As a matter of law, however, an
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`obvious design variation need not be the preferred one.1
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`II. CLAIMS 1-3 ARE UNPATENTABLE
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`A. Ground 1: Claims 1-2 Would Have Been
`Obvious Over McAllister-I and Laverriere
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`for Brake
`the Same Potential
`1. McAllister-I Has
`Misalignment that Motivated Laverriere’s Centering Ribs
`The Petition explained that a POSA would have added Laverriere’s centering
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`ribs to McAllister-I to reduce the likelihood of brake misalignment “during assembly
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`or use.” Pet. at 42.
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`1 Grounds 4-5 related to now-disclaimed claim 4. Ex-2016.
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`2
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`
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`As an initial matter, Fujifilm’s counter-arguments (POR at 22-27) concern
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`only misalignment during use of a fully-assembled cartridge. Fujifilm does not
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`address misalignment during assembly, which also motivated Laverriere’s ribs
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`(Laverriere at 1:28-39, 3:37-46) and formed an independent reason for the
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`combination. Pet. at 42. Sony’s assembly motivation is thus unrebutted.
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`For misalignment during use, Fujifilm contends that misalignment would not
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`happen during use of McAllister-I’s cartridge because its figures “fail to show any
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`clearance” between its locking gear (braking member) and its reel hub. POR at 23.
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`Fujifilm cites Mr. von Alten’s deposition, but he explained that while clearance was
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`not “directly discernable” in Figure 2A, the presence of such clearance was clear “in
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`the context of the patent as a whole.” Ex-2007 at 52:2-10. See also id. at 50:25-
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`51:1, 60:13-23, 61:7-23. For example, the Petition (at 41) also cited Figure 3, which
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`depicts spider washer 40 extending much closer to the hub than locking gear 42.
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`Mr. von Alten also explained that a POSA knew clearance was required to
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`allow the hub to rotate around the locking gear. Ex-1004 ¶161; Ex-1033 ¶¶5-11.
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`Even Fujifilm’s expert Mr. Vanderheyden conceded that the McAllister-I
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`components were designed “to prevent the braking member from touching the inner
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`wall of the reel hub.” Ex-2008 ¶69. Moreover, the prior art consistently depicts
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`clearance between the braking member and the hub. E.g., Ex-1006 at FIG. 1; Ex-
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`1007 at FIGS. 2, 3; Ex-1010 at FIG. 1; Ex-1011 at FIG. 12; Ex-1012 at FIG. 1; Ex-
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`3
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`
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`1027 at 22 (FIG. 13); Ex-1028 at 28 (FIG. 16); Ex-2002 at FIG. 2(b); Ex-2010 at 29;
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`Ex-2017 at FIG. 1. Ex-1033 ¶¶12-13, 17. Fujifilm’s expert is unaware of any
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`cartridge lacking such clearance. Ex-1037 at 115:1-118:15. No POSA would have
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`interpreted McAllister as lacking such clearance. Ex-1033 ¶12.
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`Fujifilm also argues that components (projections) 58/60 connecting the
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`braking member to the shell prevent misalignment because they are “tightly mated.”
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`POR at 24.2 While a “tight fit” might hypothetically prevent misalignment (Ex-
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`2007 at 53:6-10), Mr. von Alten explained that clearance “is needed to ensure that
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`locking gear 42 can move up and down.” Ex-1004 ¶162. See also Ex-2001 at
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`125:19-126:16, 207:7-18; Ex-1033 ¶20. Fujifilm misinterprets a statement in
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`McAllister-I (3:44-45) about movement in “one dimension” (POR at 10, 14, 25-26)
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`that merely conveys that the braking member moves up and down but does not
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`rotate—so it can lock the reel against rotation. Ex-1033 ¶21.
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`The prior art uniformly confirms that clearance exists between such
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`components, creating potential for brake misalignment. Laverriere, FIGS. 1-2
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`(elements 26, 52), 3:25-29 (despite projections, braking member can go “off-
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`2 Though not discussed in the POR (and thus waived), Fujifilm’s expert contends
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`that McAllister-I’s figures are distorted. Ex-2008 ¶¶134-135. As Mr. von Alten
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`explains, Fujifilm’s expert is wrong; nothing is distorted. Ex-1033 ¶¶54-60.
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`4
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`
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`center”); Mizutani ¶5 (“there must be a certain amount of clearance” between the
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`projections and “tilt motion for this clearance amount cannot be avoided”).
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`Fujifilm’s own Shima reference described potential misalignment in an LTO-design
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`due to “looseness of engagement between the upper casing and brake lock.” Ex-
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`2002 at 5:46-50. See also Ex-1033 ¶¶22-30.
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`The ’905 Patent itself confirms that misalignment occurs in LTO cartridges
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`despite projections connecting the braking gear to the cartridge shell. Ex-1001 at
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`FIG. 5 (“Prior Art”); Ex-1037 at 122:22-123:23; Ex-1033 ¶20.3 Even Mr.
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`Vanderheyden agreed that clearance between mating projections necessarily creates
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`a potential for tilt. Ex-2008 ¶70; Ex-1037 at 66:16-67:6.
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`Fujifilm also argues that the location of McAllister-I’s spring minimizes tilt,
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`obviating the need for ribs. POR at 26-27. To the contrary, McAllister-I teaches
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`that “any suitable…biasing mechanism may be used” (3:63-64), suggesting that the
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`spring’s location is irrelevant. In fact, a small diameter spring pressing on the middle
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`of locking gear 42 increases the risk of misalignment compared to the spring in
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`Laverriere. Ex-1033 ¶¶31-34.
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`3 Fujifilm incorrectly distinguishes (without evidence) between the projections in
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`LTO-style and 3480-style cartridges. POR at 25-26; Ex-1033 ¶¶20-30.
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`5
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`Finally, Fujifilm suggests HP’s decision not to use guide members is
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`“evidence” that no misalignment existed in McAllister-I since McAllister-I was
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`conceived at HP. POR at 27. As Mr. von Alten explained, HP “approached the
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`problem in a different way and solved the problem without guide members.” Ex-
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`2007 at 179:18-20. HP’s history confirms that misalignment was a known
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`“problem.” As a matter of law, guide members need not be the only solution to be
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`an obvious solution. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).4
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`2.
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`A POSA Would Not Have Been “Discouraged” From
`Utilizing the Teachings of Laverriere in McAllister-I
`Fujifilm wrongly argues that a POSA would have been discouraged from
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`combining Laverriere and McAllister-I because McAllister-I “critici[zes]” the older
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`“brake button” design used in Laverriere. POR at 27-33.
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`To “teach away” from a proposed combination, a reference must “criticize,
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`discredit, or otherwise discourage” investigation into the invention claimed. In re
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`Fulton, 391 F.3d at 1201. For claims 1 and 2, McAllister-I must thus teach away
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`from the use of “guide members,” i.e., Laverriere’s centering ribs, in an LTO-style
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`cartridge like McAllister-I. Yet the single sentence Fujifilm cites says nothing about
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`Laverriere’s ribs or their usefulness to align a brake.
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`4 Whether clearance can be reduced (POR at 23-24) is irrelevant; in practice
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`clearance could and likely would exist. Ex-1033 ¶19.
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`6
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`
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`The purported criticism occurs when McAllister-I states that cartridges with
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`brake buttons, like Laverriere, are “advantageous,” but typically require a protective
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`shroud around the brake which occupies space that could be better used by other
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`components. McAllister-I at 1:46-49. This sentence at most5 criticizes only the use
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`of a protective shroud, not the use of centering ribs. The sentence thus does not
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`discourage the proposed combination. In re Fulton, 391 F.3d at 1201 (prior art that
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`did not criticize feature of alternative design as undesirable did not teach away from
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`use of such feature); In re Yufa, 452 F. App’x 998, 1001 (Fed. Cir. 2012) (criticism
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`of one aspect of prior art system did not teach away where criticized aspect was not
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`part of the proposed combination).
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`Fujifilm also argues, without substantive explanation, that Laverriere’s ribs
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`were somehow “uniquely designed” to operate with a shroud such that McAllister-
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`I’s criticism of shrouds applies to ribs too. POR at 30. However, the shroud is a
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`metal disk below the bottom of the cartridge (id. at 29) wholly separate from the ribs
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`inside the hub. Fujifilm never explains how a shroud below a cartridge impacts ribs
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`inside it.
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`5 The sentence distinguishes McAllister-I’s novel “reel lock” from the prior art, and
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`does not teach away from anything. In re Katz Interactive Call Processing Patent
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`Litigation, 639 F.3d 1303, 1321 (Fed Cir. 2011).
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`7
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`
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`Fujifilm also intimates, again without substantive explanation, that a
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`difference between the braking members in LTO-style and 3480-style cartridges
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`makes Laverriere’s ribs applicable only to the latter (POR at 31-32)—yet there is no
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`material difference between them. Ex-1033 ¶¶13-16. Fujifilm’s analysis (POR at
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`30) manufactures non-existent differences and improperly treats a POSA as an
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`automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); Ex-1004 ¶165.
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`3.
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`The Combination Would Have Worked For Its Intended
`Purpose and Would Have Been Within the Skill of a POSA
`Contrary to Fujifilm’s argument (POR at 33-34), the proposed combination
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`would not inhibit the function of McAllister-I’s cartridge. Fujifilm seizes on the
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`word “abut” in Laverriere to argue that the round braking member is wedged by the
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`vertical cylindrical surfaces of the ribs when in the locked position. POR at 33-34.
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`Laverriere is clear, however, that the “abutting surface” is the angled portion of the
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`ribs (red below), which is used to guide the braking member (not wedge it) as it
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`moves toward the locked position—not the vertical portion (green below) on which
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`Fujifilm improperly focuses. Ex-1033 ¶¶36-41.
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`8
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`
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`The suggestion of wedging is absurd given that Laverriere’s braking member
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`must move up and down (repeatedly) to lock and unlock the cartridge. Ex-1033 ¶23.
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`See also Laverriere at 5:26-27 (explaining that its ribs do not “interfere with
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`assembly or operation of the cartridge”); Ex-1033 ¶37.
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`Ignoring Laverriere’s teachings, Fujifilm cites Shima (2002) for the
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`proposition that “the industry recognized significant problems” with Laverriere’s
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`ribs. POR at 34. Shima states that “smooth release of the brake” in the Laverriere
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`design “is sometimes impossible because…the outer periphery of [the brake]
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`catches” on the ribs due to misalignment of the brake. 2002 at 1:60-67. Shima thus
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`identifies a potential drawback to a “centering rib” that occurs when the cartridge
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`transitions from a locked state to an unlocked state, which can be resolved with the
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`dented spider washer that Shina describes. Ex-1033 ¶42. Shima never questions the
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`ribs’ centering benefits during assembly and during the transition from the unlocked
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`to locked states as described in Laverriere, and certainly never suggests that the ribs
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`should be removed. Id. ¶43. In any event, merely identifying a disadvantage of a
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`feature in addition to known advantages does not negate the motivation to combine.
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); In re Mouttet,
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`686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[A] known system…does not become
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`patentable simply because it has been described as somewhat inferior to some other
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`product for the same use.”).
`
`9
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`
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`Fujifilm also argues that the proposed combination would require “significant
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`redesign” that would deter POSA—impermissibly treating a POSA as an automaton.
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`Fujifilm faults Sony for not detailing the precise “shape,” “size,” and “tolerances”
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`that would have been used to physically create the proposed combination (POR at
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`36), yet Sony had no obligation to do so. Arctic Cat, Inc. v. Polaris Indus., Inc.,
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`IPR2014-01427, Paper 58 at 22-23 (P.T.A.B. Feb. 4, 2016) (“Petitioner is not
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`required to account for every technical challenge in order to show obviousness.”).
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`Moreover, as Mr. von Alten explained, such details require only “basic mechanical
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`engineering assessment” familiar to a POSA. Ex-2007 at 82:14-25; 168:7-10
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`(“straightforward from an engineering standpoint”).
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`Indeed, “the test for obviousness…is not whether the features of a secondary
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`reference may be bodily incorporated into the structure of the primary reference.”
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`MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015),
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`but rather accounts for the ordinary creativity of a POSA. While Fujifilm posits that
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`McAllister-I’s components would need to change to accommodate Laverriere’s ribs
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`(POR at 36-37), it never argues that such changes would stretch a POSA’s ability.
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`To the contrary, Laverriere teaches that adding its ribs to a cartridge “requires only
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`minimal modifications” (Laverriere at 5:23-27), and Fujifilm offers no evidence to
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`suggest otherwise. A mechanical engineer with experience designing cartridges
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`(Pet. at 21, Ex-2008 ¶¶49-51) would easily have made the modest design alterations
`
`10
`
`
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`needed. Ex-1033 ¶¶44-46; In re ICON Health and Fitness, Inc., 496 F.3d 1374,
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`1382 (Fed. Cir. 2007). That the ’905 Patent is silent as to how the inventors
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`addressed the various changes needed to incorporate a “guide member” into an LTO-
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`style cartridge underscores the trivial nature of the changes. VSR Indus., Inc. v Cole
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`Kerpo Int’l, LLC, IPR2015-00182, Paper 33 at 18 (P.T.A.B. April 28, 2016) (design
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`change within POSA’s skill where the patent did not describe the “alleged technical
`
`difficulties” patent owner identified in its POR); Ex-1037 at 135:4-136:10 (arguing
`
`claim 1 is enabled despite lack of “guide member” implementation details).
`
`Laverriere’s “Centering Ribs” Are “Guide Members”
`4.
`Fujifilm argues that Laverriere’s “centering ribs” do not satisfy the structural
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`aspect of Sony’s proposed “guide member” construction because the ribs’ “inclined
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`surface” is purportedly at the bottom portion of the hub and thus cannot “incline[]
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`downward from the upper portion of the inner surface of the reel hub.” POR at 37-
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`39. Fujifilm is wrong.
`
`The Petition explained that Laverriere’s “centering ribs” create “angled,
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`contoured steps” that satisfy the structural part of the “guide member” construction.
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`Pet. at 56; id. at 41; Ex-1004 ¶¶221-223. Laverriere identifies one such “curve” as
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`element 76. Laverriere at 4:44-55, FIG. 3.
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`Fujifilm focuses on “abutting surface 72,” but ignores curve 76 which, as seen
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`below and as explained by Mr. von Alten, is at the top of the rib and inclines
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`11
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`
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`downward from the upper portion of the inner surface of the reel hub. Ex-2007 at
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`78:19-79:20 (explaining that the ribs “have two inclined surfaces” with one labeled
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`76 “at the very top”). Laverriere’s “centering ribs” thus plainly satisfy the structural
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`aspect of Sony’s construction.
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`
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`B. Ground 2: McAllister-I Anticipates Claim 3
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`Claim 3 requires that the engagement gear’s outer diameter be “larger” than
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`the braking gear’s outer diameter by any amount no matter how small. Indeed,
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`Sony’s cartridges were found to infringe even though their engagement gears were
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`less than 0.2 mm larger than their braking gears due to manufacturing tolerances.
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`Ex-2009 at 135-136. The question for Ground 2 is thus whether a POSA would have
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`interpreted McAllister-I’s figures to depict an engagement gear any amount larger
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`in diameter than locking gear 42.
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`Fujifilm criticizes the thickness and placement of dashed lines in Sony’s
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`annotations to McAllister-I’s figures (POR at 42-46), but the annotations are simply
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`12
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`
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`visual aids. Ex-1033 ¶50. The figures of McAllister-I plainly depict locking gear
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`42 as smaller in diameter than the engagement gear. Id. ¶¶47-48, 51-52. This is
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`seen, for example, in annotated Figure 4A without the criticized dashed lines:
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`The same can be seen in Figure 3 without the criticized dashed lines:
`
`13
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`
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`
`
`
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`
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`While Sony relied on the Figure 8 embodiment in which gear teeth 45
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`substitute for locking post 44 (Pet. at 63-64), Mr. von Alten explained that a POSA
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`would have known such substitution did not require altering the diameter
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`relationship depicted in Figures 3 and 4A, and that Figure 8 also depicts that diameter
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`relationship albeit in a different fashion. Ex-1004 ¶¶246-247. While Mr.
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`Vanderheyden suggests that the components in Figure 8 might be shifted such that
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`they are not coaxially aligned (Ex-2007 ¶184), a POSA would not have interpreted
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`the figure to depict any such shift. Ex-1033 ¶¶49, 53.
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`
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`Fujifilm argues that McAllister-I could disclose the claimed diameter
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`relationship only if its text expressed “concern[] with the[ir] size or dimensions”—
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`in other words, what is clearly depicted in the figures must have been intended. POR
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`at 41. This is contrary to precedent. In re Wagner, 63 F.2d 987, 986-87 (C.C.P.A.
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`1933) (“[I]f a drawing clearly suggests to one skilled in the art the way in which the
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`result sought is accomplished by a later applicant, it is immaterial whether the prior
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`patentee’s showing was accidental or intentional.”); Cummins-Allison Corp. v. SBM
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`Co., Ltd., 484 F. App’x. 499, 507 (Fed. Cir. 2012) (“[T]here is no additional
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`requirement that the specification must explicitly disclose the precise proportions or
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`particular size.”).
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`Fujifilm also argues that “as a legal matter” patent drawings cannot be relied
`
`on to disclose relative size of parts. POR at 47-48. Again, that is not the law. In re
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`14
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`
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`Wolfensperger, 302 F.2d 950, 959 (C.C.P.A. 1962) (figures properly relied upon to
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`show “relative width and depth dimensions”); Koito Mfg. Co., Ltd. v. Turn-Key-
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`Tech, LLC, 381 F.3d 1142, 1154-55 (Fed. Cir. 2004) (figures alone disclose
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`limitation requiring a channel to be “significantly thicker and wider” than an
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`adjacent layer); ASM IP Holding B.V. v. Hitachi Kokusai Elec. Inc., IPR2018-01523,
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`2019 WL 650552, *12 (P.T.A.B. Feb. 15, 2019) (“[Hockerson] do[es]
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`not…preclude use of figures to establish that one component dimension is
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`relatively larger (or smaller) than another”); Hutchinson Tech. Inc. v. Nitto Denko
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`Corp., IPR2017-01421, 2018 WL 5098867, *12 (P.T.A.B. Oct. 10, 2018) (figures
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`alone disclosed limitation and finding Koito more on point than Hockerson where
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`the relevant limitation required a “relational relationship” between components
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`rather than “quantitative relationship”); Telebrands Corp. v. Tinnus Enter. LLC,
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`PGR2017-00015, 2018 WL 5084901, *10 (P.T.A.B. Oct. 10, 2018) (reliance on
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`figure proper where the “issue is relative positioning [of elements], which would
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`appear to be more amenable to visual observation”).6 This law is also consistent
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`6 Fujifilm argues the Board decisions cited in the Petition at page 62 are
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`distinguishable because the relevant figures included “cross-sectional views.” POR
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`at 48. McAllister-I’s figures, however, also include “cross section” views.
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`McAllister-I at 2:32-33. That McAllister-I provides multiple different views of the
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`15
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`
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`with how a POSA would interpret patent drawings. Ex-2001 at 152:10-153:25
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`(figures “illustrate parts in relation to one another…regardless of scale”), 156:6-19
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`(drawings show “juxtaposition of parts…irrespective of the scale of the drawing”).
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`Fujifilm also argues that, Mr. von Alten’s interpretation of McAllister-I’s
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`figures is flawed because he “acknowledges several mistakes and ambiguities in his
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`analysis.” POR at 42, 48. Fujifilm overreaches.
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`First, while Mr. von Alten testified that determining the relative diameters of
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`the locking engagement gears from Figure 9 alone would be “difficult” (POR at 42),
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`his analysis (and the Petitioner’s) was based on how a POSA would interpret Figure
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`8 when viewed in combination with all other McAllister-I figures and the
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`knowledge of a POSA. E.g., Ex-1004 ¶¶230, 233, 235-240, 246-2477; Pet. at 63-
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`64. That it might be difficult to determine a diameter relationship based on a single
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`figure in isolation is unsurprising, which is why Mr. von Alten relied on all the
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`figures. Ex-1004 ¶240.
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`same cartridge (2:28-54) and each depicts the locking gear as smaller than the
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`engagement gear (Ex-1004 ¶¶235-240) makes its drawings more, not less, reliable.
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`7 Mr. von Alten once referred to Figure 9 (Ex-1004 ¶228), but he clarified that this
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`was a typographical error. Ex-2007 at 171:10-172:24. The remainder of his
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`declaration makes clear he relied on Figure 8. Ex-1004 ¶¶229-240, 246-247.
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`16
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`
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`Second, Fujifilm argues that Figure 8 is “admittedly ambiguous” because Mr.
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`von Alten identified “defects” in the dashed lines Sony super-imposed on the figure.
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`POR at 43; Ex-2007 at 113:8-116:25. The minor “defect” in the annotation Mr. von
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`Alten identified, however, does not change what the figure depicts. As he explained,
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`even if the “defect” was fixed, the figure “would still have the same relationship
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`between the diameter of the two parts.” Ex-2007 at 116:8-17; 115:19-24.
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`Third, Fujifilm argues that Mr. von Alten cannot offer an “opinion on relative
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`dimensions in Figure 4A” because he did not perform a “bolt circle” analysis. POR
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`at 45. His decision not to perform a bolt circle analysis to measure the quantitative
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`difference in diameter between Figure 4A’s locking gear and locking posts would
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`be relevant if claim 3 required such quantity, but it does not. A bolt circle
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`measurement was not needed to show a relative difference between the two
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`components—that difference is clear from the drawing itself. Tellingly, Fujifilm
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`does not claim that a bolt circle analysis would have resulted in the locking gear
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`having a diameter larger than or equal to that of the locking posts.
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`Fourth, Fujifilm attacks the thickness and location of dashed lines that Sony
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`superimposed on the McAllister-I figures. POR at 46-47. Yet, as explained above
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`(supra pp. 12-13), those lines were intended as visual aids and with the lines
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`removed the figures plainly depict the claimed relationship.
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`17
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`Finally, Fujifilm argues that Sony is using the knowledge of a POSA to “fill
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`in [] holes” in the anticipation analysis. POR at 48. However, prior art references
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`“must be ‘considered together with the knowledge of one of ordinary skill in the
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`pertinent art.’” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). As Mr. von
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`Alten explained, a POSA’s background knowledge
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