Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`Entered: October 9, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00876
`Patent 6,462,905 B1
`____________
`
`
`Before SALLY C. MEDLEY, GREGG I. ANDERSON, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`

`

`IPR2018-00876
`Patent 6,462,905 B1
`
`
`I. INTRODUCTION
`
`Sony Corporation (“Petitioner”)1 filed a Petition (Paper 2, “Pet.”)
`
`pursuant to 35 U.S.C. §§ 311–19 to institute an inter partes review of claims
`
`1–4 (“challenged claims”) of U.S. Patent No. 6,462,905 (“the ’905 patent”),
`
`filed November 8, 2000.2 Ex. 1001, [22]. The Petition is supported by the
`
`Declaration of Thomas W. von Alten (“von Alten Declaration,” Ex. 1004).
`
`FUJIFILM Corporation (“Patent Owner”) filed a Preliminary Response
`
`(Paper 8, “Prelim. Resp.”).
`
`We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). A
`
`final written decision under 35 U.S.C. § 318(a) must decide the patentability
`
`of all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S.Ct.
`
`1348 (2018). At the institution phase, once it is determined that there is a
`
`reasonable likelihood that Petitioner will succeed on a single claim, review
`
`of all claims is justified. Id. at 1356. After considering the evidence and
`
`arguments presented in the Petition and Preliminary Response, we determine
`
`that Petitioner has demonstrated a reasonable likelihood of success in
`
`proving that at least claim 1 of the ’905 patent is unpatentable. We therefore
`
`institute an inter partes review of all of the challenged claims.
`
`
`1 The Petition identifies Sony Corporation of America, Sony Electronics
`Inc., Sony Storage Media Solutions Corporation, Sony Storage Media
`Manufacturing Corporation, Sony Latin America, Inc., and Sony Digital
`Audio Disc Corporation as additional real parties in interest. Pet. 5.
`2 The ’905 patent lists two Japanese applications, JP 11-317166 and JP 11-
`318464, filed respectively November 8, 1999, and November 9, 1999. Ex.
`1001, [30]. The Petition assumes the claims are entitled to the benefit of the
`foreign priority dates of the two Japanese applications. Pet. 6.
`
`2
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`

`

`IPR2018-00876
`Patent 6,462,905 B1
`
`
`II. BACKGROUND
`
`A. Related Proceedings
`
`The parties advise us that the following litigation is pending and may
`
`be affected by this proceeding: (1) Fujifilm Corp. v. Sony Corp., 1-17-cv-
`
`01309 (D. Del. 2017); and (2) Certain Magnetic Data Storage Tapes and
`
`Cartridges Containing the Same, 337-TA-1076 (USITC Sept. 19, 2017).
`
`Pet. 5; Paper 6, 2. Petitioner has filed a second petition for inter partes
`
`review of the ’905 patent,3 which also challenges claims 1–4. Id.
`
`B. Technology and the ’905 Patent
`
`The ’905 patent relates to a magnetic tape cartridge comprising a
`
`cartridge casing and a single reel about which magnetic tape is wound, all of
`
`which is maintained in a housing. Ex. 1001, 1:6–11. A reel stopper means
`
`prevents rotation of the reel when the magnetic tape cartridge is not being
`
`used. Id.
`
`1. Technology
`
`Magnetic tape cartridges (Fig. 5 below at 1) are used as a recording
`
`medium for external memory of a computer. Ex. 1001, 1:13–15. Magnetic
`
`tape is wound around a single reel (Fig. 5 below at 2) for rotation in a
`
`cartridge casing housing the reel. Id. at 1:15–17. The magnetic tape
`
`cartridge is provided with “a reel stopper means which prevents rotation of
`
`the reel when the magnetic tape cartridge is not being used,” preventing tape
`
`jams or accidentally drawing out the tape. Id. at 1:20–24.
`
`A tape drive of an external memory of the computer rotates the reel
`
`when the magnetic tape cartridge is loaded in a tape drive. Ex. 1001, 25–31.
`
`
`3 Sony Corporation v. FUJIFILM Corporation, IPR2018-00877. Paper 6, 2.
`
`3
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`

`

`IPR2018-00876
`Patent 6,462,905 B1
`
`A brake member of the reel stopper means engages and disengages the reel
`
`to prevent or permit rotation of the reel by the tape drive. Id. The brake
`
`member locks the reel so that the reel is not accidentally rotated or drawn
`
`out. Id. at 1:44–46. A release member “drives the brake member to release
`
`the reel in response to a reel chucking action” of the tape drive so the reel
`
`can be rotated and thus loaded and unloaded. Id. 1:47–51.
`
`The prior art described above is illustrated in Figure 5 of the ’905
`
`patent. Ex. 1001, 1:58–61. Figure 5 is reproduced below.
`
`
`
`
`
`Figure 5 is a fragmentary cross-sectional view showing a magnetic tape
`
`cartridge where braking member 4 is inclined. Ex. 1001, 5:5–7, 5:52
`
`(braking member 4). When release member 6 drives the brake member to
`
`release the reel, the brake member can be inclined. Id. at 5:57–59. The
`
`“gear teeth on the brake member can be brought into contact with the rear
`
`teeth on the reel while the reel is rotated.” Id. at 1:61–63. This
`
`misalignment can cause “generation of noise, obstruction of rotation of the
`
`reel and unstable magnetic tape loading/unloading action.” Id. at 1:63–65.
`
`The prior art also experiences problems “when the braking gear and
`
`the engagement gear are engaged with each other at a substantially normal
`
`surface facing against the tape-unwinding direction.” Ex. 1001, 2:17–20.
`
`4
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`

`

`IPR2018-00876
`Patent 6,462,905 B1
`
`Specifically, the magnetic tape may be cut when the reel is rotated in the
`
`tape-winding direction “due to drop impact when the magnetic tape cartridge
`
`drops.” Id. at 2:15–16. Drop impact occurs when the brake member is
`
`moved and the braking gear is disengaged from the engagement gear. Id. at
`
`2:25–29. Further, “[s]ince the reel cannot be rotated in the tape-unwinding
`
`direction or the direction in which the tension on the magnetic is released,
`
`the tape winding force acting on the magnetic tape can stretch the tape to
`
`deteriorate the magnetic recording” and reliability of the tape cartridge. Id.
`
`at 2:29–38.
`
`2. ’905 Patent (Ex. 1001)
`
`The ’905 patent purports to resolve the problems with the prior art by
`
`three different approaches reflected in the three independent claims. The
`
`first approach is a guide member, which is recited in claim 1. When the
`
`braking gear of the braking member is meshed with the engagement gear,
`
`“the outer periphery of the braking member 4 is guided by guide members
`
`39 formed on the inner surface of the reel hub 21 of the reel 2.” Ex. 1001,
`
`6:26–30. The guide members help center the braking member, keeping it
`
`away from the inclined position shown in Figure 5. Id. at 9:61–63.
`
`Figure 2 of the ’905 patent is reproduced below.
`
`
`
`5
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`IPR2018-00876
`Patent 6,462,905 B1
`
`Figure 2 is a fragmentary cross-sectional view of the magnetic tape cartridge
`
`when the magnetic tape cartridge is being used. Ex. 1001, 4:65–67.
`
`Referring to Figure 2, the “guide members 39 are respectively provided
`
`between each pair of engagement projections 27, and accordingly three
`
`guide members 39 are provided on the inner surface of the reel hub 21.” Id.
`
`at 6:30–34. Claim 2 further defines the guide members as “having an
`
`inclined surface which inclines downward from the upper portion of the
`
`inner surface of the reel hub toward the center of the reel.” Id. at 10:2–4.
`
`The second approach is recited in claim 3. Instead of guide members,
`
`the outer diameter of the engagement gear is larger than the diameter of the
`
`braking gear. Ex. 1001, 8:44–55. This is shown in Figure 2 above where
`
`the braking gear diameter “d” is smaller than that of the engagement gear 29.
`
`Id. at 8:46–48, Fig. 3 (diameter of engagement gear “D” is “larger than the
`
`outer diameter d of the braking gear 42 on the braking member 4”). The
`
`braking gear meshes with the engagement gear teeth 29 holding the braking
`
`member 4 in a horizontal position. Id. at 8:51–55. Thus, “the braking
`
`member 4 is prevented from being inclined in the locking position.” Id.
`
`The third and final approach is recited in claim 4. Figure 4 of the ’905
`
`patent is reproduced below.
`
`
`
`6
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`

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`IPR2018-00876
`Patent 6,462,905 B1
`
`Figure 4 is a cross-sectional view taken along line B-B of Figure 2. Ex.
`
`1001, 5:3–4. The gear teeth of the braking gear having first and second
`
`inclined surfaces of the gear teeth are inclined at an angle where “the reel 2
`
`is rotated in the unwinding direction U to reduce the tension on the magnetic
`
`tape, and the magnetic tape can be prevented from being stretched or cut.”
`
`Id. at 8:65–67. Because “the interior angles β for the second inclined
`
`surfaces 42b and 29b of the braking gear 42 and the engagement gear teeth
`
`29 are not smaller than 30°,” the reel 2 can be rotated even if the braking
`
`member 4 is in the locking position. Id. at 9:1–5. The tape can be rewound
`
`onto the cartridge reducing tension in the tape. Id. at 9:6–9. Still referring
`
`to Figure 4, when the interior angle α is larger than 45°, the force between
`
`the gear teeth for preventing rotation in the unwinding direction is small. Id.
`
`at 9:12–14.
`
`That is, in order to ensure both the effect of reducing the tension
`on the magnetic tape and the sufficient locking force, it is
`necessary that the apical angle γ is not larger than 90° and the
`interior angles α for the first inclined surfaces 42a and 29a which
`are brought into abutment against each other when the reel 2 is
`rotated in the unwinding direction U are smaller than the interior
`angles β for the second inclined surfaces 42b and 29b which are
`brought into abutment against each other when the reel 2 is
`rotated in the winding direction W.
`
`Id. at 9:14–23.
`
`C. Illustrative Claim
`
`Claims 1, 3, and 4 of the challenged claims are independent claims to
`
`a magnetic tape cartridge. Claim 2 depends from claim 1. The three
`
`7
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`

`IPR2018-00876
`Patent 6,462,905 B1
`
`independent claims are in Jepson claim format, i.e., “wherein the
`
`improvement comprises.”4
`
`Each of the independent claims concludes with one of the approaches
`
`to solving the prior art problems discussed in Section II.B.2 above.
`
`Claim 1 is reproduced below as illustrative.
`
`1[preamble]5
` A magnetic tape cartridge comprising a
`magnetic tape wound around a single reel, a cartridge casing in
`which the reel is housed for rotation and a reel stopper means
`which locks the reel not to rotate when the magnetic tape
`cartridge is not being used and releases the reel to permit rotation
`thereof when the magnetic tape cartridge is to be used, wherein
`the improvement comprises
`
`that the reel stopper means comprises a braking member
`1a
`which is movable between a locking position where it is in
`contact with the reel to restrict rotation of the reel and a releasing
`position where it is away from the reel to permit rotation of the
`same,
`
`an urging member which urges the braking member
`1b
`toward the locking position, and
`
`
`
`4 “The Jepson form allows a patentee to use the preamble to recite ‘elements
`or steps of the claimed invention which are conventional or known.’ 37
`C.F.R. § 1.75(e) (1996). When this form is employed, the claim preamble
`defines not only the context of the claimed invention, but also its scope.”
`Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1997) (citations omitted).
`5 We follow the format adopted by Petitioner. See, e.g. Pet. 43 (claim 1
`preamble), 46 (limitation 1a), Appendix A: Claim Listing. Accordingly,
`each limitation of the Petition includes the claim number followed by either
`“preamble” or letters alphabetically arranged, each representing the claim
`preamble and subsequent claim limitations. The word “while” of limitation
`1e is missing in Petitioner’s Claim Listing. We have included it. The Claim
`Listing brackets the alphabetical letters but the Petition uses the above
`described format.
`
`8
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`

`

`IPR2018-00876
`Patent 6,462,905 B1
`
`
`a releasing member which is rotated integrally with the
`1c
`reel and moves the braking member toward the releasing position
`in response to a reel chucking action of the reel drive means of a
`tape drive, and
`
`the braking member is provided with a braking gear which
`1d
`is adapted to be engaged, to restrict rotation of the reel, with an
`engagement gear tooth on an engagement projection formed on
`the reel
`
`1e while the reel is provided with a guide member which
`centers the braking member with respect to the reel.
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims of the ’905 patent as unpatentable on the
`
`following grounds. Pet. 6, 40–93.
`
`Reference(s)
`McAllister-I6 and
`Laverriere7
`McAllister-I
`
`McAllister-I and
`Laverriere
`McAllister-I
`
`Basis
`§1038
`
`§102
`
`§103
`
`§102
`
`
`Claim(s) Challenged
`1, 2
`
`3
`
`3
`
`4
`
`
`
`
`6 U.S. 5,901,916, to Jeffrey S. McAllister and Thomas W. von Alten, issued
`May 11, 1999 (“MacAllister-I,” Ex. 1005).
`7 EP 0 284 687, to Guy P Laverriere, published October 5, 1988
`(“Laverriere,” Ex. 1007).
`8 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), which revised 35 U.S.C. §§ 102 and 103, became
`effective March 16, 2013. The ’905 patent has an effective filing date of at
`least November 8, 1999 (see n.2 above), prior to the effective date of the
`AIA. Thus, the grounds asserted are under the pre-AIA version of §§ 102
`and 103.
`
`9
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`

`

`IPR2018-00876
`Patent 6,462,905 B1
`
`
`Reference[s]
`
`Basis
`
`Claim(s) Challenged
`
`McAllister-I and
`McAllister-II9
`Mizutani10
`
`Mizutani
`
`§103
`
`§102
`
`§103
`
`4
`
`3
`
`3
`
`III. ANALYSIS
`
`A. Previous Consideration of References
`
`Patent Owner argues that McAllister-I and Laverriere were previously
`
`presented to the Office in an Information Disclosure Statement (“IDS”)
`
`under 37 C.F.R. § 1.97. Prelim. Resp. 12–14, see id. at 13 (citing File
`
`History of US Patent No. 6,462,905, Ex. 1002, 103 (listing McAllister-I and
`
`Laverriere)). Specifically, Patent Owner contends we should not revisit the
`
`prosecution of the same combination of McAllister-I and Laverriere as was
`
`presented to the Office in IDS because “the Director may take into account
`
`whether, and reject the petition or request because, the same or substantially
`
`the same prior art or arguments previously were presented to the Office.” Id.
`
`at 13 (citing 35 U.S.C. § 325(d)).
`
`Patent Owner does not show, nor does the prosecution history support,
`
`that McAllister or Laverriere were considered with respect to the
`
`patentability of any claim of the ’905 patent. The mere citation of a
`
`reference in an IDS does not rise to the level of consideration. On this
`
`
`9 US 5,927,633, to Jeffrey S. McAllister, issued July 27, 1999 (“McAllister-
`II,” Ex. 1008).
`10 JP H11-273307, to Hikaru Mizutani, published October 8, 1999
`(“Mizutani,” Ex. 1006).
`
`10
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`

`IPR2018-00876
`Patent 6,462,905 B1
`
`record, we decline to exercise our discretion and deny the Petition on that
`
`basis.
`
`B. Claim Construction
`
`In inter partes review, claim terms are given their broadest reasonable
`
`interpretation in light of the specification in which they appear. See 37
`
`C.F.R. § 42.100(b). We presume that claim terms have their ordinary and
`
`customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`
`(Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of the
`
`claim must be given their plain meaning, unless such meaning is inconsistent
`
`with the specification and prosecution history.”) (citation omitted); In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definition for a claim term must be set forth in the specification with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). In the absence of such a special definition or
`
`other consideration, “limitations are not to be read into the claims from the
`
`specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`“[O]nly those terms need be construed that are in controversy, and only to
`
`the extent necessary to resolve the controversy.” See Nidec Motor Corp. v.
`
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`
`2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`
`Cir. 1999).
`
`Petitioner cites to our rules for the proposition that, if the claims
`
`include means-plus-function limitations under section 112 paragraph 6, the
`
`Petitioner must identify “the specific portions of the specification that
`
`describe the structure . . . corresponding to each claimed function.” Pet. 33
`
`(citing 37 C.F.R. § 42.104(b)(3)). Petitioner proceeds to identify a function
`
`11
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`

`

`IPR2018-00876
`Patent 6,462,905 B1
`
`and structure for the following claim terms: “reel stopper means” (Pet. 35);
`
`“braking member” (Pet. 35–37); “urging member” (Pet. 37); “releasing
`
`member” (Pet. 37–38); “guide member” (Pet. 38–39); and “reel drive
`
`means” (Pet. 39).11
`
`Patent Owner takes no position on whether any term is a means-plus-
`
`function term or not. See Prelim. Resp. 10. Indeed, Patent Owner contends
`
`that, save two terms it seeks to construe, it construes all terms “in
`
`accordance with their plain and ordinary meaning under the required
`
`broadest reasonable interpretation standard.” Id. The two terms Patent
`
`Owner seeks to construe are “inclined surface” and “gear tooth.” Id. at 10–
`
`12.
`
`At this stage of the proceeding, the parties’ arguments do not raise any
`
`dispute with respect to any means-plus-function term identified by
`
`Petitioner. Accordingly, we need not construe these terms at this time. See
`
`Vivid Techs., 200 F.3d at 803.
`
`At the time it files its Response to the Petition, Patent Owner should
`
`include the proposed construction of any disputed claim term that may be
`
`dispositive on patentability with any supporting arguments on the proposed
`
`construction. In the normal course, Petitioner may respond in its Reply.
`
`The two terms identified by Patent Owner relate to the improvement
`
`recited in the independent claims and will be construed.
`
`
`11 Regardless of whether or not certain claims terms are means plus function,
`particular functionality recited with claimed structure may be claimed.
`Nazomi Communications, Inc. v. Nokia Corp., 739 F.3d 1339, 1344 (Fed.
`Cir. 2014) (“there is nothing unusual or improper in construing device
`claims to require particular functionality”).
`
`12
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`

`

`IPR2018-00876
`Patent 6,462,905 B1
`
`
`1. “inclined surface” (claims 2 and 4)
`
`Patent Owner argues the plain and ordinary meaning of “inclined
`
`surface” should be applied and the term construed to mean “a surface that
`
`deviates from the vertical.” Prelim. Resp. 10 (citing MERRIAM-WEBSTER
`
`Dictionary, https://www.merriam-webster.com/dictionary/incline, Ex.
`
`200412). Patent Owner also relies on the Specification for additional
`
`support. Id. at 10–11. In one example, Patent Owner quotes from the
`
`Specification that “the interior angle α between the first inclined surface 42a
`
`(or 29a) and the vertical S and the interior angle β between the second
`
`inclined surface 42b (or 29b) and the vertical β are not smaller than 30º.” Id.
`
`at 11 (quoting Ex. 1001 at 6:64–7:2). According to Patent Owner, “[t]his
`
`permits the reel some movement to avoid the tape from being damaged due
`
`to cartridge mishandling, such as could occur with prior art gears that were
`
`‘like sawteeth in shape.’” Id. at 11 (citing Ex. 1001, 2:9–17; 2:29–39; 2:48–
`
`52; 4:55–59).
`
`The term appears in both claim 2 and claim 4. In claim 2 it further
`
`specifies that the “ribs which are formed on the inner surface of the reel hub
`
`[in] at [] least three places, each having an inclined surface which inclines
`
`downward from the upper portion of the inner surface of the reel hub toward
`
`the center of the reel.” Patent Owner’s proposal does not address how its
`
`proposed construction applies to claim 2. Patent Owner’s proposal and what
`
`is recited in claim 2 about the way the surface “inclines” are difficult to
`
`reconcile, if not directly contradictory. Specifically, requiring that the
`
`
`12 “Definition of incline inclined; inclining intransitive verb 1: to bend the
`head or body forward: bow 2: to lean, tend, or become drawn toward an
`opinion or course of conduct 3: to deviate from a line, direction, or course;
`specifically: to deviate from the vertical or horizontal.”
`
`13
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`

`IPR2018-00876
`Patent 6,462,905 B1
`
`surface needs to “deviate from the vertical” does not assist in achieving
`
`clarity of the claim language. Neither is the proposed construction
`
`consistent with the specification, which substantially tracks claim 2. See Ex.
`
`1001, 3:9–13, 4:34–40.
`
`We apply the plain and ordinary meaning of “inclined surface.” The
`
`plain and ordinary meaning of “inclined surface” is a “surface” that is
`
`“inclined.” To require more would present potential inconsistencies
`
`between claims 2 and 4. While claim 2 describes one way the surface is
`
`inclined, claim 4 recites something potentially different, that the “gear teeth”
`
`have “first and second inclined surfaces forming therebetween an apical
`
`angle not larger than 90°.”
`
`2. “gear tooth” (claims 1 and 4)
`
`Patent Owner argues the plain and ordinary meaning of “gear tooth”
`
`should be applied and the term construed to mean “a tooth element of a gear
`
`that is tapered towards a center of the gear.” Prelim. Resp. 11 (citing Stock
`
`Drive Products/Sterling Instrument specification sheet, sdp-
`
`si.com/resources, Ex. 2003). According to Patent Owner, cited Exhibit 2003
`
`explains that “a face gear includes ‘[t]ooth elements [that] are tapered
`
`towards its center.’” Id. Patent Owner argues this construction is supported
`
`by the Specification. The ’905 patent explains that “the height of each tooth
`
`is higher at the outer periphery thereof.” Id. at 11–12 (quoting Ex. 1001,
`
`6:21–25). According to Patent Owner, this means “each tooth is higher at
`
`the outer periphery of the gear, and smaller at the inner periphery or towards
`
`the center of the gear.” Id. at 12.
`
`The term “gear tooth” appears in claims 1 and 4. Both recite, in
`
`pertinent part, “a braking gear which is adapted to be engaged, to restrict
`
`14
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`IPR2018-00876
`Patent 6,462,905 B1
`
`rotation of the reel, with an engagement gear tooth on an engagement
`
`projection formed on the reel.” Ex. 1001, 9:38–41 (claim 1), 10:46–49
`
`(claim 4). However, neither claim requires that the gear tooth have any
`
`specific shape. The dictionary definition of “gear” is similarly general.13
`
`The specification describes both the braking gear and the engagement
`
`gear as “conical in shape” and that each tooth “is higher at the outer
`
`periphery thereof.” Ex. 1001, 6:21–25. The preceding is the primary basis
`
`for Patent Owner’s proposed construction. But Patent Owner does not
`
`allege that the preceding is a special definition for “gear tooth” as used in the
`
`claims. See In re Paulsen, 30 F.3d at 1480. In the absence of such a special
`
`definition or other consideration, “limitations are not to be read into the
`
`claims from the specification.” See In re Van Geuns, 988 F.2d at 1184. On
`
`this record we decline to read limitations from the Specification into the
`
`claims.14 The proposed construction does not represent the broadest
`
`reasonable interpretation consistent with the specification.
`
`We apply the plain and ordinary meaning of “gear tooth.”15
`
`Applying the relevant portion of the dictionary definition, “gear tooth”
`
`means an element on a gear that meshes with another toothed element on
`
`
`13 Gear, “[a] toothed wheel, cylinder, or other machine element that meshes
`with another toothed element to transmit motion or to change speed or
`direction.” Gear, THE AMERICAN HERITAGE DICTIONARY OF THE
`ENGLISH LANGUAGE, (1979), Ex. 3001.
`14 Petitioner requested a sur-reply on Patent Owner’s proposed construction
`of “gear tooth,” which we denied. See Paper 11. Among other things,
`Petitioner argued the proposed construction was unreasonably narrow. For
`the reasons discussed above, on this record, we agree.
`15 At such time as our rules are amended to the district court standard for
`claim interpretation, on this record our preliminary determination on both
`terms, “inclined surface” and “gear tooth,” would not change.
`
`15
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`another gear. The specification is consistent in explaining, for example, “the
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`braking gear is brought into mesh with the engagement gear teeth.” Ex.
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`1001, 3:18–19, see also id. at 6:60–61, 8:5–6, 27–30, 8:51–52, claim 4 (“the
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`braking gear and the engagement gear tooth in mesh with each other.”).
`
`C. Legal Standard for Obviousness (Grounds 1, 3, 5, and 7)
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`A patent claim is invalid as obvious if the differences between the
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`claimed subject matter and the prior art are “such that the subject matter as a
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`whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which said subject matter pertains.”
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`35 U.S.C. § 103(a).
`
`The ultimate determination of obviousness is a question of law, but
`
`that determination is based on underlying factual findings . . . . The
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`underlying factual findings include (1) “the scope and content of the prior
`
`art,” (2) “differences between the prior art and the claims at issue,” (3) “the
`
`level of ordinary skill in the pertinent art,” and (4) the presence of secondary
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`considerations of nonobviousness such “as commercial success, long felt but
`
`unsolved needs, failure of others,” and unexpected results. In re Nuvasive,
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`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (citing inter alia Graham v. John
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`Deere Co., 383 U.S. 1, 17–18 (1966)).
`
`“To satisfy its burden of proving obviousness, a petitioner
`cannot employ mere conclusory statements. The petitioner
`must instead articulate specific reasoning, based on evidence of
`record, to support the legal conclusion of obviousness.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`2016). Furthermore, in assessing the prior art, the Board must
`consider whether a person of ordinary skill would have been
`motivated to combine the prior art to achieve the claimed
`invention. Nuvasive, 842 F.3d at 1381. As stated in Personal
`Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991–992
`
`16
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`(Fed. Cir. 2017):,The Supreme Court in KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 167 L.Ed.2d 705
`(2007), explained that, “because inventions in most, if not all,
`instances rely upon building blocks long since uncovered, and
`claimed discoveries almost of necessity will be combinations of
`what, in some sense, is already known,” “it can be important to
`identify a reason that would have prompted a person of
`ordinary skill in the relevant field to combine the elements in
`the way the claimed new invention does.” Id. at 418–19, 127
`S. Ct. 1727.
`
`1. Person of Ordinary Skill in the Art
`
`Petitioner alleges a person of ordinary skill in the art
`
`
`would have had a bachelor’s degree in mechanical engineering
`or related field with two years of experience designing magnetic
`tape cartridges or similar advanced post-graduate education in
`this area. A person with less education but more design
`experience may also meet this standard as would a person with
`less design experience and more education.
`
`Pet. 21 (citing Ex. 1004 ¶¶ 25–28). In its Preliminary Response, Patent
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`Owner accepts Petitioner’s proposed level of ordinary skill, reserving its
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`“right to offer a competing definition” upon institution. Prelim. Resp. 9 n.1.
`
`We adopt Petitioner’s proposed level of ordinary skill for purposes of this
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`Decision.
`
`2. Prior Art Relied Upon
`
`As listed in Section II.D above, Petitioner relies on the following prior
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`art for its obviousness grounds.
`
`a. McAllister-I (Ex. 1005)
`
`McAllister-I describes and claims
`
`[A] novel tape cartridge and reel lock that allows the reel lock to
`be released away from the center of rotation of the tape reel while
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`keeping the frictional interface between the moving and fixed
`parts at the center of rotation of the reel. . . [T]he tape cartridge
`includes a housing, a tape reel rotatably disposed in the housing,
`a tape drive interface on the reel, a rotatably fixed locking
`member operatively coupled to the reel and an actuator
`operatively coupled to the locking member.
`
`Ex. 1005, 1:52–61. The locking member is movable between a locked
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`position which prevents the reel to prevent from rotating and an unlocked
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`position where the reel is free to rotate. Id. at 1:62–66.
`
`Figures 2A and 2B, are reproduced below and show respectively the
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`tape cartridge in a locked and unlocked position. Ex. 1005, 2:32–34.
`
`Figures 2A and 2B are fragmentary cross sections of a single reel tape
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`cartridge, including top portion 18 and bottom portion 20 of a housing and
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`tape supply reel 14. Id. at 2:58–67. Neither tape nor a tape drive are shown.
`
`
`
`Id. at 2:67–3:1.
`
`Still referring to Figures 2A and 2B, as a “drive motor gear in a tape
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`drive engages reel gear 34, the tips of the drive motor gear push on spider
`
`legs 50 to drive spider washer 40 up into reel gear 34,” which “moves lock
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`gear 42 up and off locking posts 44 to unlock reel lock 38.” Ex. 1005, 3:66–
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`4:3. Biasing spring 64 and spider washer 40 actuate the reel lock 38, which
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`“disengage[s] the locking member, lock gear 54, from reel 14 and unlock
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`reel lock 38 when the tape drive engages the reel 14.” Id. at 4:3–7. “Spring
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`18
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`64 serves as a biasing mechanism to urge the locking member, lock gear 42,
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`towards the locked position.” Id. at 4:7–9.
`
`b. Laverriere (Ex. 1007)
`
`Laverriere describes and claims a single-spool tape cartridge. Ex.
`
`1007, 1:1–15. Figure 2 of Laverriere is reproduced below.
`
`
`
`Figure 2 is a side, cross-sectional view of brake button and spool of a
`
`conventional cartridge illustrating the off-center orientation of the brake
`
`button relative to the spool. Id. at 2:29–33, 3:1, 2:52. As shown in Figure 2,
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`the brake button includes a circular disk 44, first upper projection 50, and
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`second lower projection 52. Id. at 3:18–20. Still referring to Figure 2, the
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`spool includes a hub formed from an integrally formed planar flange 19 and
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`a top portion 22 having three spaced protuberances 40. Id. at 3:4–8.
`
`The diameter d of the annular wall 38 of the hub in Figure 2 is
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`significantly greater than the diameter d’ of the brake button, but the
`
`resulting loose fit may cause the brake button to become misaligned, i.e.,
`
`off-center. Ex. 1007, 3:37–46. “[T]he biased nature of the brake button 24
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`aggravates this misalignment since the brake button 24 is necessarily urged
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`in the misaligned position via the spring 28.” Id. at 3:48–51.
`
`Figure 3 of Laverriere is reproduced below.
`
`19
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`Figure 3 is a side, cross-sectional view of brake button and spool of a
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`conventional cartridge where the brake button is centered with the spool.
`
`Ex. 1007, 2:34–37. Still referring to Figure 3, concentric alignment between
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`the brake button and hub is maintained by six projections or projecting
`
`means 70 or “centering ribs 70’ integrally molded to be equally, radially,
`
`spaced about the inner circumference of the annular wall 68.” Id. at 4:15–
`
`17, 4:37–41. “Alternatively, the projecting means 70 can constitute a single,
`
`continuous annular ring 70’’as indicated by the phantom lines in FIG. 3.”
`
`Id. at 4:41–43.
`
`c. McAllister-II (Ex. 1008)
`
`In the background of the invention, McAllister-II discloses a tape
`
`cartridge with a “reel locking mechanism.” Ex. 1008, 2:56–3:3, Figs. 3–4.
`
`Figure 3 illustrates an internal reel locking mechanism which is engaged to
`
`lock the reel.