UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SONY CORPORATION
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION
`Patent Owner.
`_____________
`
`Case No. IPR2018-00877
`U.S. Patent No. 6,462,905
`_____________
`
`REPLY DECLARATION OF THOMAS W. VON ALTEN
`
`SONY Exhibit 1033
`SONY v. FUJI
`IPR2018-00877
`
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SONY CORPORATION
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION
`Patent Owner.
`_____________
`
`Case No. IPR2018-00877
`U.S. Patent No. 6,462,905
`_____________
`
`REPLY DECLARATION OF THOMAS W. VON ALTEN
`
`SONY Exhibit 1033
`SONY v. FUJI
`IPR2018-00877
`
`
`
`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.
`
`
`
`- i -
`
`
`
`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
`
`that declaration also contains my opinions concerning the patentability of claims 1-
`
`4 of the ’905 Patent. I understand that Fujifilm subsequently disclaimed claim 4.
`
`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.
`
`art (“POSA”) would have had reasons to add the “centering ribs” of Laverriere to
`
`the cartridge depicted in McAllister-I. The resulting McAllister-I / Laverriere
`
`combination would have included every element of claims 1 and 2.
`
`
`
`- 1 -
`
`
`
`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.
`
`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
`
`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
`
`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
`
`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.
`
`
`
`- 2 -
`
`
`
`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
`
`could be a “line-to-line” fit (i.e., no clearance at all) between McAllister-I’s locking
`
`gear 42 (braking member) and the inner surface of its reel hub 32. Id. This, of
`
`course, is impossible as I explained in my opening declaration, because the reel of
`
`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
`
`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
`
`(i.e., mating elements 58 and 60) separately in the next section of this declaration.
`
`
`
`- 3 -
`
`
`
`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
`
`the inner surface of the reel hub 32 (i.e., the kinds of images that Mr. Vanderheyden
`
`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
`
`readily have understood that such clearance certainly exists for multiple reasons.
`
`11. First, as noted above, Mr. Vanderheyden’s hypothetical alternative, in
`
`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
`
`parts during operation – let alone a reel spinning at 2,000 rpm – would create
`
`vibration and friction. Vibration in the tape path would interfere with the very
`
`sensitive operation of a magnetic tape drive reading and writing system. Friction in
`
`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
`
`
`
`- 4 -
`
`
`
`(Shima) at FIG. 2(b), Ex. 2017 (Imation patent publication) at FIGS. 1-3. The
`
`uniformity of the prior art on this point confirms that Mr. Vanderheyden’s
`
`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
`
`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
`
`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.
`
`
`
`- 5 -
`
`
`
`• “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
`
`(proceeding from top to bottom) an upward facing element that mates with a
`
`downward-facing element on the top shell of the cartridge, a downward-facing gear
`
`for locking the reel, and a downward-facing area in the middle of the braking
`
`member to receive an upward force causing the braking member to disengage from
`
`the reel so that the reel can rotate. The difference between the 3480-style design and
`
`the LTO-style design lies not in the braking member, but in the element that actuates
`
`(pushes up on) the braking member to disengage it from the reel. In 3480-style
`
`cartridges, a chucking member in the drive unit presses up directly on a central
`
`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
`
`is referred to as a “brake button” – a phrase Mr. Vanderheyden repeats many times
`
`
`
`- 6 -
`
`
`
`style cartridges, the chucking member pushes up, in three equidistant locations,
`
`against the legs of an intermediate element called a spider washer, which in turn
`
`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
`
`portion of the braking member against which the drive unit chuck pushes. A more
`
`accurately descriptive name for the part as a whole is “braking member.”
`
`
`
`- 7 -
`
`
`
`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
`
`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,
`
`ECMA-319, the standard that the LTO consortium prepared in the late 1990’s and
`
`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
`
`[of LTO] also obviated the need for the ‘significantly’ different diameters between
`
`brake button and hub” (Ex. 2008 ¶153) is nonsensical because, as described already,
`
`the imposition of a spider washer in the LTO design had no impact on the braking
`
`member. Unsurprisingly, Mr. Vanderheyden cites not a single document (let alone
`
`a prior art document) describing an LTO cartridge as lacking clearance between the
`
`braking member and the inner surface of the hub.
`
`4 As I have previously mentioned, I was intimately involved in development of the
`
`mechanical design for the LTO cartridge on behalf of HP (one of the three members
`
`of the LTO consortium) and I prepared the drawings of the cartridge that appear in
`
`the ECMA-319 standard.
`
`
`
`- 8 -
`
`
`
`
`
`Ex-1034 at 28.
`
`17.
`
`Indeed, the ’905 patent itself (which purports to describe features of
`
`LTO-style cartridges) describes and even claims the existence of clearance between
`
`the braking member and the inner surface of the hub in an LTO cartridge. The reel’s
`
`engagement gear, which itself is inset with respect to the inner surface of the hub,
`
`has an outer diameter “D” that is described and claimed to be larger than the outer
`
`diameter “d” of the braking gear. Ex. 1001 at 6:17-20, claim 3. A fortiori, the inner
`
`diameter of the hub (which is larger than the outer diameter of the reel’s engagement
`
`gear) is larger than the outer diameter of the braking gear, resulting in clearance
`
`between the braking gear and the inner surface of the hub.
`
`
`
`- 9 -
`
`
`
`
`
`
`
`18.
`
`Indeed, the ’905 patent is based on the idea that clearance between the
`
`braking member and other components with respect to which it moves can cause the
`
`braking member in an LTO cartridge to move “off center” (id., 1:67), requiring guide
`
`members to center it again. Mr. Vanderheyden proceeds from an assumption – i.e.,
`
`
`
`- 10 -
`
`
`
`that LTO-style braking members lack clearance relative to the reel hub and thus
`
`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
`
`some spacing alleged by the Petitioner was present…that in itself does not mean
`
`there would be misalignment. The specific amount of spacing is critical to
`
`understanding whether misalignment issues would exist.” Ex. 2008, ¶136. Here Mr.
`
`Vanderheyden misses the point of my obviousness analysis. While it is physically
`
`possible with sufficient time and resources and precise enough manufacturing
`
`equipment, to build a tape cartridge in which clearances are small enough to
`
`minimize misalignment of a braking member, doing so is an expensive and time-
`
`consuming proposition. Laverriere clearly taught – a decade before the teaching was
`
`reiterated in the ’905 patent itself – that adding guide members was an efficient way
`
`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
`
`member that moves up and down to unlock and lock a reel. The fact that it is possible
`
`to make a tape cartridge that can operate with little clearance (and thus without a
`
`need for guide members) does not disturb the conclusion that, in view of Laverriere’s
`
`clear teachings, guide members are obvious components to use to address
`
`
`
`- 11 -
`
`
`
`misalignment, instead of expending the resources necessary to avoid the need to use
`
`guide members.
`
`2.
`
`A POSA Knew There Must Be Clearance Between
`McAllister-I’s Mating Components
`20. Mr. Vanderheyden also says, repeatedly, that LTO cartridges were
`
`designed by the LTO consortium with a “tight fit” between the mating components
`
`(which he refers to as “male” and “female” components) that connect the top of the
`
`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.
`
`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”
`
`between the mating components, without clearance that would permit misalignment:
`
`“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 -
`
`
`
`
`
`and in which I personally participated in the original design of the LTO cartridge,
`
`understood the function of the braking member.
`
`22. Other LTO prior art confirms this straightforward understanding of the
`
`mating components. Morita-II ¶29 (“…whereby the brake member 104 is able to
`
`move toward and away from the bottom wall 121a of the reel hub 121 without
`
`rotating relative to the reel hub”); Mizutani ¶19 (“…vertical sliding is enabled, but
`
`relative rotation is disabled…”); Tsuyuki ¶16 (describing components as
`
`“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
`
`be unable to move reliably and repeatably between the locked (“in hand”) and
`
`unlocked (“in drive”) configurations. In a mechanical device requiring repeated
`
`movement of connecting parts relative to one another, such friction would be
`
`intolerable. No POSA would interpret McAllister-I to describe the zero-clearance
`
`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
`
`braking member to the cartridge shell would have clearances, and even specified the
`
`
`
`- 13 -
`
`
`
`maximum effect of those clearances. For example, in ECMA-319 (Ex. 1034)—the
`
`published standard for the first generation of LTO cartridges—Section 8.6.1 requires
`
`that, in the locked position, “the angular resolution [of the locking mechanism] shall
`
`not be greater than 3°,” and that the reel, which in the locked position is coupled to
`
`the braking member, “shall not rotate by more than 10° when a torque not greater
`
`than 0,32 N· m is applied in the direction that will cause the tape to unwind.”
`
`25. Likewise, Section 8.6.7 required that, in the in-hand position (i.e., when
`
`the reel is locked against rotation) “[t]he d16 dimension of the reel” (i.e. its central
`
`axis) “shall be centered to the central window (figure 3) within ±0.25 mm.”
`
`26. Clearances between the mating components connecting the braking
`
`member to the cartridge shell contribute both to the permitted rotation of the reel
`
`(8.6.1) and to its permitted displacement relative to center (8.6.7). Thus, the LTO
`
`consortium expressly acknowledged, in the LTO standard itself, that these mating
`
`components would have clearances between them, permitting some rotation and
`
`displacement of the braking member and the reel (coupled to the braking member).
`
`Simply put, the LTO consortium recognized the mechanical engineering reality that
`
`assembly clearances, as well as variations in part dimensions (i.e., manufacturing
`
`tolerances) were a necessary part of any mechanical design.
`
`27. Given the requirement for operational clearance between moving
`
`components, a POSA would have recognized that there was some space between
`
`
`
`- 14 -
`
`
`
`female structure 60 on locking gear 42 and male structure 58 on cartridge housing
`
`12. Such space would have introduced the potential for locking gear 42 to become
`
`misaligned or tilted. The prior art confirms this.
`
`28. Mizutani, for example, explains that for the mating projections to allow
`
`vertical movement “there must be a certain amount of clearance maintained between
`
`the” projections. Mizutani ¶5. This clearance, Mizutani explains, is a “factor”
`
`causing the brake “to tilt.” Id.
`
`29. Shima, which Mr. Vanderheyden cites, also confirms that clearance
`
`between mating projections creates the potential for the brake to become misaligned.
`
`Shima explains that “looseness of engagement between the upper casing and brake
`
`lock or between brake lock and hub can sometimes bring the center of brake lock 5
`
`out of alignment.” Ex. 2002 at 5:47-50. Shima thus recognizes the potential for
`
`“looseness,” i.e., clearance, between the mating projections in an LTO cartridge to
`
`create brake misalignment.
`
`30. Tsuyuki, which discloses an LTO cartridge, also recognizes that even
`
`with mating projections “[i]t is difficult to hold [the brake] matched to the reel
`
`rotation center.” Tsuyuki ¶6. A POSA would understand that clearance is the cause
`
`of the difficulty.
`
`
`
`- 15 -
`
`
`
`The Location of McAllister-I’s Spring Is Irrelevant
`3.
`31. Mr. Vanderheyden states that the “position of biasing spring 64 in
`
`McAllister-I also helps to prevent any potential misalignment of locking gear 42.”
`
`Ex. 2008, ¶141. Again, I disagree.
`
`32. McAllister-I is explicit that the location of its biasing spring is
`
`exemplary and that “any suitable interlocking structures and biasing mechanism may
`
`be used.” McAllister-I at 3:61-64. If, as Mr. Vanderheyden posits, the position of
`
`the spring served an important function such as preventing potential misalignment,
`
`McAllister-I certainly did not recognize it.
`
`33.
`
`Indeed, a centrally located spring is more likely to cause misalignment
`
`of the locking gear than to prevent it. With a centrally located spring, the urging
`
`force on the locking gear is focused on the center of the locking gear. Any
`
`counterforces on the outer perimeter of the locking gear would be largely unopposed
`
`and the central spring would act as a fulcrum aiding, rather than preventing, tilting.
`
`In contrast, a large diameter spring located around the perimeter of the locking gear
`
`would oppose any counterforces and decreases the amount of tilt the locking gear
`
`experiences. I illustrate this phenomenon below:
`
`
`
`- 16 -
`
`
`
`Central Spring Design
`
`Peripheral Spring Design
`
`
`Locking Gear
`
`
`
`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.
`
`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
`
`“contain[] the brake button and maintain[] the brake button in the desired position.”
`
`Ex. 2008, ¶156. Mr. Vanderheyden then interprets this to mean that there can be no
`
`
`
`- 17 -
`
`
`
`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
`
`POSA would have included clearance between the vertical portions of the ribs and
`
`the braking member so that the braking member could transition smoothly from the
`
`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
`
`“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
`
`“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.
`
`
`
`- 18 -
`
`
`
`39. Yet, Laverriere is clear that the “abutting surface” is the inclined
`
`portion 72 (red below)—not the vertical portion (green below) of the projecting
`
`means 70 (yellow below). “The projecting means 70 preferably includes an
`
`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
`
`the projecting means is not “angled relative to a plane tangential to the annular wall
`
`68.” Rather, it is a cylinder that is parallel to the cylinder of the annular wall 68 of
`
`the hub 66.
`
`
`5 Elsewhere Laverriere mentions that curves 76 and 77 (which likewise are angled
`
`relative to a plane tangential to the annular wall 68 of the hub 66) “cause the abutting
`
`surface 72…to include angled, contoured steps which gradually and positively
`
`receive and position the circular brake concentrically relative to the hub 66.” Ex.
`
`1007 at 4:46-53. Thus, curves 76 and 77, as well as inclined abutting surface 72, are
`
`also abutting surfaces that contact and center the braking member. But the “vertical”
`
`portions of the projections 70’ (i.e., the cylindrical portions like the portion colored
`
`green above) are not angled or contoured and are not described as centering the
`
`braking member – in fact, because they are vertical they cannot move the braking
`
`member toward center.
`
`
`
`- 19 -
`
`
`
`
`40. Likewise, claim 1 of Laverriere refers to the “surface 72 of the
`
`projecting means as that which “abuts the circular periphery of the brake button…”
`
`Ex. 1007 at 5:49-51. This recitation, which is one of the passages on which Mr.
`
`Vanderheyden relies, establishes the opposite of what he suggests: it is the inclined
`
`surface (conical section in red above), not the vertical surface (cylindrical section in
`
`green above) of the rib that contacts the braking member.
`
`41. Mr. Vanderheyden also cites Column 4, line 55 through Column 5, line
`
`2 of Laverriere. That portion merely says that the “projecting means 70” as a whole
`
`receives and centers the braking member. It also states that the “first step 78 formed
`
`on the bottom portion 69 of the hub 66 advantageously receives the first step 80
`
`formed on the brake button 61”s—referring to two horizontal (not vertical) surfaces
`
`in the view of Figure 3. The word “receives” in no way implies a lack of clearance
`
`between the vertical cylindrical portions of the braking member and the projecting
`
`means. Indeed, there is nothing in Laverriere suggesting that the vertical
`
`(cylindrical) portion of the projecting means contacts, let alone constrains, the
`
`braking button in the Laverriere arrangement. In fact, the evidence is 100% to the
`- 20 -
`
`
`
`
`
`contrary: Laverriere states very clearly that the rib “does not otherwise interfere with
`
`assembly or operation of the cartridge.” Ex. 1007 at 5:25-27.
`
`42. Mr. Vanderheyden also cites Shima when arguing that “a POSA would
`
`not look to combine the [centering ribs] of Laverriere with an LTO-type cartridge
`
`described in McAllister-I.” 2008 ¶158. The portion of Shima that Mr.
`
`Vanderheyden cites explains that “smooth release of the brake” in the Laverriere
`
`design “is sometimes impossible because…the outer periphery of [the braking
`
`member] catches a sloped rib” due to misalignment of the brake. Ex. 2002 at 1:60-
`
`67. This passage merely identifies a potential problem with guide ribs during
`
`“release.” i.e., transition from the locked to unlocked state. To resolve this potential
`
`problem, Shima teaches the use of a release member—like spider washer 40 used in
`
`McAllister-I—with a dented center that keeps the brake centered during the
`
`transition from the locked to unlocked states. Ex. 2002 at 2:1-5, 5:46-6:4
`
`43. As noted in the prior paragraph, Shima is focused on centering the brake
`
`during the transition from the locked to unlocked state, and it offers a solution for
`
`keeping the braking member centered during that process to avoid the potential
`
`problem of the braking member catching on a rib. Shima never suggests that the
`
`ribs – which help center the braking member during the transition from the unlocked
`
`state to the locked state – should be removed. As Laverriere explains, and Shima
`
`does not dispute, the centering ribs “gradually and positively receive and position
`
`
`
`- 21 -
`
`
`
`the circular brake button concentrically relative to the hub.” Laverriere at 4:51-53.
`
`The ribs “receive” and “position” the brake when the brake is moving down to
`
`transition the cartridge from the unlocked state to the locked state. Thus, the
`
`centering ribs perform the centering function during the locking process and Shima’s
`
`dented spider washer does so during the unlocking process. In short, nothing in
`
`Shima would have discouraged a POSA from using Laverriere’s centering ribs in an
`
`LTO cartridge such as McAllister-I.
`
`2.
`
`The Proposed Combination Would Not Require Significant
`Redesign
`44. Mr. Vanderheyden also argues that the proposed combination would
`
`“require engineering redesigns to several existing components” of the McAllister-I
`
`cartridge. 2008 ¶163. I disagree that the proposed combination would require more
`
`than ordinary, indeed very modest, effort.
`
`45. Mr. Vanderheyden speculates that the diameters of the reel hub 32,
`
`locking gear 42 and reel gear 34 would need to be modified to accommodate the
`
`Laverriere centering ribs. Ex. 2008 ¶163. I disagree. As Mr. Vanderheyden has
`
`noted, McAllister-I does not specify precise dimensions in either its text or drawings.
`
`It depicts the necessary and expected clearance a POSA would know was required
`
`for a functional mechanism. The design and dimensioning of centering ribs within
`
`the existing constraints would be straightforward work for a mechanical engineer
`
`with two years of experience in cartridge design or equivalent work
`- 22 -
`
`
`
`
`
`46. Mr. Vanderheyden also speculates that “spider washer 40 and legs 50
`
`would need to be reshaped, and interlocking structures 58 and 60 would need to be
`
`adjusted and maybe even reshaped.” Ex. 2008, ¶163. Again, I disagree. I do not
`
`know what specific design changes Mr. Vanderheyden envisions, but the proposed
`
`combination could have been accomplished without any need to alter spider washer
`
`40, its legs 50, or the interlocking structures 58 and 60. To the extent some
`
`modifications would have been needed for some unknown reason, a mechanical
`
`engineer with two years of experience in cartridge design would certainly know how
`
`to accomplish such modifications.
`
`II. GROUND 2: MCALLISTER ANTICIPATES CLAIM 3
`I agree with Mr. Vanderheyden that the standard dictionary definition
`47.
`
`of diameter is “a straight line segment passing through the center of a figure, esp. a
`
`circle or sphere, and terminating at the periphery.” Ex. 2008, ¶169. I disagree,
`
`however, with his suggestion that a POSA cannot assess a figure’s implied diameter
`
`simply because a straight line segment cannot be drawn on the figure.
`
`48. POSAs—mechanical engineers with two years of cartridge design
`
`experience in addition to years of mechanical engineering education—would have
`
`been able to assess a component’s implied diameter even if a drawing of the
`
`component was presented such that a straight segment could not be accurately drawn
`
`on it. This is especially true where, as here, the issue is whether the diameter of one
`
`
`
`- 23 -
`
`
`
`component is any amount larger than the diameter of another component. The
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
