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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 IPR2018-00877
`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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`I.
`INTRODUCTION ............................................................................................. 1
`II. CLAIMS 1-3 ARE UNPATENTABLE ............................................................ 2
`A. Ground 1: Claim 1 Would Have Been Obvious Over Morita-I and
`Morita-II ...................................................................................................... 2
`1. A POSA Would Have Reasons to Make the Combination ................... 3
`2. The Combination Would Have Worked For Its Intended
`Purpose Without Substantial Redesign ................................................. 6
`3. Morita-I’s “Guide Surface” and the Claimed “Guide Member”
`Are Equivalents ...................................................................................10
`B. Ground 2: Claim 2 Would Have Been Obvious Over Morita-I,
`Morita-II and Laverriere ............................................................................11
`1. A POSA Had Reason to Substitute a Single Guide Surface with
`Multiple Centering Ribs ......................................................................11
`2. Laverriere’s “Centering Ribs” Are “Guide Members” .......................13
`C. Ground 3: Tsuyuki Anticipates Claim 3 ....................................................14
`D. Ground 4: Claim 3 Would Have Been Obvious Over Tsuyuki ................19
`III. THE VANDERHEYDEN “DECLARATION” IS UNSWORN AND
`ENTITLED TO NO WEIGHT ........................................................................26
`IV. CONCLUSION ................................................................................................26
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`i
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`TABLE OF AUTHORITIES
`
`
`CASES
`ASM IP Holding B.V. v. Hitachi Kokusai Elec. Inc.,
`IPR2018-01523, 2019 WL 650552 (P.T.A.B. Feb. 15, 2019) ............................16
`Bayer Pharma AG v. Watson Labs., Inc.,
`874 F.3d 1316 (Fed. Cir. 2017) ............................................................................24
`Bumble Bee Foods, LLC v. Kowalski,
`IPR2014-00224, 2014 WL 2584188 (P.T.A.B. June 5, 2014) .............................26
`Caterpillar Inc. v. Deere & Co.,
`224 F.3d 1374 (Fed. Cir. 2000) ............................................................................11
`ClassCo, Inc. v. Apple, Inc.,
`838 F.3d 1214 (Fed. Cir. 2016) .............................................................................. 9
`Cummins-Allison Corp. v. SBM Co., Ltd.,
`484 F. App’x. 499 (Fed. Cir. 2012) ......................................................................15
`Elbrus Int’l. Ltd. v. Samsung Elecs. Co.,
`783 F. App’x. 694 (Fed. Cir. 2018) ........................................................................ 9
`Geo. M. Martin Co. v. Alliance Mach. Sys.,
`618 F.3d 1294 (Fed. Cir. 2010) ............................................................................25
`Hutchinson Tech. Inc. v. Nitto Denko Corp.,
`IPR2017-01421, 2018 WL 5098867 (P.T.A.B. Oct. 10, 2018) ...........................16
`In re Beattie,
`974 F.2d 1309 (Fed. Cir. 1992) .............................................................................. 3
`In re Brandt,
`886 F.3d 1171 (Fed. Cir. 2018) ............................................................................25
`In re Copaxone Consolidated Cases,
`906 F.3d 1013 (Fed. Cir. 2018) ............................................................................25
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ............................................................................24
`
`ii
`
`
`
`In re Gorelik,
`652 F. App’x. 954 (Fed. Cir. 2016) ........................................................................ 8
`In re ICON Health and Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) .............................................................................. 7
`In re Katz Interactive Call Processing Patent Litigation,
`639 F.3d 1303 (Fed. Cir. 2011) .............................................................................. 3
`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) ..............................................................................19
`In re Wagner,
`63 F.2d 987 (C.C.P.A. 1933) ................................................................................15
`In re Wolfensperger,
`302 F.2d 950 (C.C.P.A. 1962) ..............................................................................16
`Intel Corp. v. Alacritech, Inc.,
`IPR2017-01395, 2017 WL 6062957 (P.T.A.B. Nov. 22, 2017) ..........................26
`Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC,
`381 F.3d 1142 (Fed. Cir. 2004) ............................................................................16
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................... 7
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) .............................................................................. 9
`Rexnord Indus. LLC v. Kappos,
`705 F.3d 1347 (Fed. Cir. 2013) ............................................................................20
`Telebrands Corp. v. Tinnus Enter. LLC,
`PGR2017-00015, 2018 WL 5084901 (P.T.A.B. Oct. 10, 2018) ..........................16
`
`iii
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`
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`ZTE (USA) Inc. v. Evolved Wireless LLC,
`IPR2016-00757, 2017 WL 6206107 (P.T.A.B. Nov. 30, 2017) ..........................26
`STATUTES
`28 U.S.C. § 1746 ......................................................................................................26
`REGULATIONS
`37 C.F.R. § 1.68 .......................................................................................................26
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`iv
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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
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`1020
`
`v
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`
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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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`vi
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`
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`I.
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`INTRODUCTION
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`Claims 1-3 recite modest improvements on conventional tape cartridge
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`design. The Petition demonstrated that those “improvements” were obvious
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`(Grounds 1-2 and 4) or known (Ground 3), and the Board agreed at institution.
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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 deviate from its initial decision.
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`Ground 1. Fujifilm concedes the proposed Morita-I/Morita-II combination
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`would have been the “only logical” combination, but argues a POSA would have
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`been unable to physically combine the references and thus would have been
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`discouraged from pursuing the combination. Fujifilm’s design challenges,
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`however, are trivial and already addressed by the prior art. Fujifilm is
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`impermissibly treating POSA as an automaton incapable of exercising ordinary
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`creativity and ignorant of the state of art. Moreover, as the Board already warned
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`Fujifilm, the test for obviousness is “not whether the references could be physically
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`combined but whether the claimed inventions are rendered obvious by the teachings
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`of the prior art as a whole.” Paper 10 at 34.
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`Ground 2. Fujifilm argues a POSA would have had no reason to use multiple
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`ribs rather than one rib to center a brake. Laverriere, however, teaches that the two
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`designs are interchangeable and that a design with multiple ribs is “preferable.”
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`Fujifilm never addresses Laverriere’s express motivation for the combination.
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`1
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`Ground 3. Fujifilm criticizes annotations that Sony super-imposed on
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`Tsuyuki’s Figure 3. The criticism, however, is a red-herring—even without the
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`annotations the gear diameter limitation recited in claim 3 is plainly depicted in
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`Figure 3. Fujifilm also asks the Board to adopt a bright-line rule that patent figures
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`alone cannot disclose relational limitations like claim 3’s gear diameter limitation,
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`but such a rule is contrary to precedent.
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`Ground 4. Fujifilm does not directly refute that a POSA would have had a
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`reason to design the gears of Tsuyuki in a manner that meets claim 3’s gear diameter
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`limitation. Instead, Fujifilm argues a POSA would have “preferred” to pursue a
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`different design for Tsuyuki’s gears that does not meet the limitation. However,
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`even if Fujifilm’s argument was true (it’s not), an obviousness design need not be
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`the preferred design. Sony identified a reason why a POSA would have pursued
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`the proposed design, Fujifilm failed to refute that reason, and claim 3 is
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`unpatentable.1
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`II. CLAIMS 1-3 ARE UNPATENTABLE
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`A. Ground 1: Claim 1 Would Have Been Obvious Over
`Morita-I and Morita-II
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`The Petition established that a POSA would have had reasons to modify
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`Morita-I’s cartridge to include Morita-II’s “reel stopper means.” Pet. at 47-48. For
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`1 Grounds 5-6 related to now-disclaimed claim 4. Ex-2016.
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`2
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`example, Morita-II teaches that (1) the Morita-I cartridge was problematic because
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`its brake button design permitted dust and dirt to enter inside the cartridge and (2)
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`replacing the brake button design with Morita-II’s “reel stopper means” design
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`solved that problem. Id. at 45. Morita-II identified a problem with Morita-I and
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`provided a solution to that problem that would have been obvious for a POSA to
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`implement in Morita-I. Id. at 48; Ex-1004 ¶¶364-366.
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`A POSA Would Have Reasons to Make the Combination
`1.
`Fujifilm argues that a POSA would not have been motivated to pursue the
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`proposed combination because Morita-I discloses an older-style cartridge that
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`Morita-II’s cartridge improved upon. POR at 22-26. As Morita-II improved on
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`Morita-I, Fujifilm argues, a POSA would not “look to” Morita-I as a “starting point”
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`for designing a cartridge. Id. at 26. Fujifilm has the law and facts wrong.
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`On the law, Fujifilm asks the Board to hold that a reference distinguishing
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`the prior art cannot be combined with the prior art which it distinguishes. Id.
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`(arguing a POSA would “completely forgo the older-style brake button cartridge
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`and reel assembly of Morita-I.”). However, “a reference can distinguish prior art
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`to show the novelty of an invention without teaching away from combining the prior
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`art with the invention disclosed in the reference.” In re Katz Interactive Call
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`Processing Patent Litigation, 639 F.3d 1303, 1321 (Fed. Cir. 2011); In re Beattie,
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`974 F.2d 1309, 1312-13 (Fed. Cir. 1992) (“[R]ecommendation of a new [] system,
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`3
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`
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`however, does not require obliteration of another.”). Morita-II can disclose a design
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`intended to improve upon Morita-I’s cartridge and still provide a POSA with reason
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`to combine aspects of its new design with Morita-I’s cartridge.
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`On the facts, Fujifilm admits that the proposed combination would have been
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`obvious. As Fujifilm explains, the “only logical conclusion” for addressing the
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`“dust and dirt” problem in Morita-I, would have been “to use a closed LTO-type
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`cartridge” like the one depicted in Morita-II. POR at 26. See also POR at 24. Yet,
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`this “logical conclusion” is the proposed combination—replace Morita-I’s open-
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`concept brake button which allowed dust to enter the cartridge with Morita-II’s
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`closed-concept “reel stopper means.” Pet. at 45-49.
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`Fujifilm contends that, given Morita-II’s improved design, a POSA would
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`have “completely forgo[ne]” the cartridge casing and reel of Morita-I in favor of
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`Morita-II’s casing and reel. POR at 26. Again, this contention starts from the
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`erroneous premise that a reference cannot both improve upon the prior art and be
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`combined with it. It’s also a red-herring as the only difference Fujifilm identifies
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`between the casings and reels of Morita-I and Morita-II is the presence of a central
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`hole in the reel of Morita-I to accommodate the brake button. POR at 27. Yet, this
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`difference is not recited in claim 1 and Fujifilm concedes that eliminating the hole
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`would have been the natural by-product of using Morita-II’s closed-concept “reel
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`4
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`
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`stopper means” in Morita-I. POR at 26-27 (“[A] POSA would have used the LTO-
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`type reel assembly, which removed the center opening….”).
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`Once a POSA replaced the open-concept brake button of Morita-I with
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`Morita-II’s closed-concept “reel stopper means”—a replacement Fujifilm
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`maintains is the “only logical” solution—the obvious next implementation detail
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`would have been to eliminate the central hole in Morita-I’s reel which allowed dirt
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`to enter the cartridge and was no longer needed with the removal of the brake button.
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`Ex-2007 at 96:4-25 (“One would want to remove that hole, yes….[T]here’s no
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`purpose for that hole.”). Rather than “completely forgo[ing]” the reel of Morita-I,
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`a POSA would have modified it to accommodate Morita-II’s “reel stopper means.”
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`Fujifilm’s argument that Morita-II “teaches away from using” Morita-I’s
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`design (POR at 27) actually supports the proposed combination. The criticism
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`Fujifilm identifies is Morita-II’s teaching that Morita-I’s design allowed dirt to
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`enter the cartridge through its central hole. Id. at 27. This criticism, however, is
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`precisely what would have motivated a POSA to improve the Morita-I cartridge to
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`include Morita-II’s reel stopper means which Fujifilm and its expert concede
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`addresses the known “dust and dirt” problem of Morita-I. Id. at 14. See also Ex-
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`2008 ¶¶237-239; Ex-1037 at 181:1-183:5. Far from “teaching away,” Morita-II
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`teaches a way toward the proposed combination.
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`5
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`2.
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`The Combination Would Have Worked For Its Intended
`Purpose Without Substantial Redesign
`Fujifilm argues that the proposed combination “would inhibit the proper
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`functioning” of Morita-I’s cartridge (POR at 28) and require “substantial redesign
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`and reconstruction” (id. at 29). Both arguments fail.
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`The proposed combination would not inhibit the function of Morita-I’s
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`cartridge. Fujifilm correctly notes that Morita-II’s brake release member 106 would
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`have been used in the combination and that it includes three push rods 163 that
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`extend downward. Id. at 28; Morita-II at FIG. 8. Fujifilm then argues that in the
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`combination push rods 163 would be placed “on top of sloped bevel gear 7 or guide
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`surface 17 of Morita-I” thereby “prevent[ing] the brake from properly settling on
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`brake gear 7.” POR at 28-29. In other words, the push rods would collide with
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`either brake gear 7 or guide surface 17 preventing the release member (and thus the
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`brake) from moving up or down. Fujifilm’s argument is flawed.
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`First, Fujifilm mistakenly believes that Morita-I’s brake gear 7 would have
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`been part of the proposed combination, but the Petition is clear that brake gear 7
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`would have been replaced with Morita-II’s engagement projections 127. Pet at 49,
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`60-61. As visible in Morita-II’s Figure 8, the projections are evenly distributed
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`around the reel and provide space to accommodate release member 106 and its push
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`rods 163. Whether Morita-I’s brake gear 7 would impede movement of the release
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`member is thus irrelevant as it’s not part of the combination.
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`6
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`
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`Second, Fujifilm’s argument with respect to impedance created by guide
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`surface 17 requires the Board to find that a POSA—an engineer with years of
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`cartridge design experience (Pet. at 22-23; Ex-2008 ¶¶49-51)—would not have
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`known to create holes in guide surface 17 to accommodate the push rods of the
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`release member despite Morita-II’s clear teachings of holes for that purpose.
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`Morita-II ¶32, FIG. 8 (element 126), FIG. 11 (element 126); POR at 25 (discussing
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`the holes). A POSA is not such an automaton. KSR Int’l Co. v. Teleflex Inc., 550
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`U.S. 398, 421 (2007); In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1382
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`(Fed. Cir. 2007) (“[W]e do not ignore the modifications that [POSA] would make
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`to a device borrowed from the prior art.”).
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`The Petition explained that the push rods of release member 106 would
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`“generate the upward pressure” when “a tape drive pushes up when the cartridge is
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`used.” Pet. at 59. This can only happen if the legs are exposed to the drive via
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`holes like Morita-II’s “through holes 126.” Morita-II ¶¶28; FIG. 8. As Mr. von
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`Alten explained, a POSA would have recognized the need for holes to accommodate
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`the push rods so as to allow the release member to perform its intended function.
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`Ex-2007 at 90:11-20 (“One would have to make holes in the – or interruptions in
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`that guide surface to introduce the spider.”); Ex-2001 at 264:17-265:11 (describing
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`modification as “straightforward to do”).
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`7
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`
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`Fujifilm candidly acknowledges that using holes to accommodate the push
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`rods would have been the obvious choice but contends such a design would “require
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`substantial redesign and reconstruction of the Morita-I cartridge.” POR at 29. To
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`substantiate this claim, Fujifilm relies on its expert who speculates that such holes
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`“may compromise” the cartridge (Ex-2008 ¶244), but who does not account for the
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`fact that Morita-II already shows a functioning cartridge with such holes. Morita-
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`II at FIGS. 8, 11 (element 126); In re Gorelik, 652 F. App’x. 954, 958-59 (Fed. Cir.
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`2016) (rejecting contention that combination would have been “impractical” where
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`patentee “fail[ed] to submit any evidence beyond conjecture to support its
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`contention”).
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`Fujifilm’s other
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`identified “substantial” redesigns required for
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`the
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`combination suffer from the same flaw—they rely on speculation from Mr.
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`Vanderheyden and ignore the prior art. For example, Fujifilm contends “removal
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`of the hole in the bottom of the [Morita-I] reel” would require a substantial redesign
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`(POR at 30), but Fujifilm agrees Morita-II already taught this precise change (id.
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`at 14). See also Morita-II at FIG. 9; Ex-1037 at 188:7-189:9. Indeed, Mr.
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`Vanderheyden admitted that all the redesigns he identified as necessary for the
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`proposed combination had already been achieved in the art through the LTO
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`development process (1037 at 189:21-190:24)—a prior art process reflected in
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`Morita-II (id. at 56:16-20). The prior art thus confirms that, as Mr. von Alten
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`8
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`
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`explained, the modifications needed to accomplish the proposed combination are
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`“relatively straightforward” and a POSA would have “the expectation of success”
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`in making the combination. Ex-2007 at 169:4-170:13; id. at 91:16-24 (“It’s
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`reasonable to see that the parts could be modified to fit…and still provide the
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`existing function.”), 93:9-14.
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`At their core, Fujifilm’s “substantial redesign” arguments treat obviousness
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`as a question of physical combinability. “[T]he test for obviousness,” however, “is
`
`not whether the features of a secondary reference may be bodily incorporated into
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`the structure of the primary reference.” MCM Portfolio LLC v. Hewlett-Packard
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`Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015). See also Elbrus Int’l. Ltd. v. Samsung
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`Elecs. Co., 783 F. App’x. 694, 698 (Fed. Cir. 2018) (rejecting as “basically
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`irrelevant” an argument that combination would require “significant additional
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`design work”); ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016)
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`(rejecting argument that a POSA “can only perform combinations of a puzzle
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`element A with a perfectly fitting puzzle element B”); In re Mouttet, 686 F.3d 1322,
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`1332 (Fed. Cir. 2012) (obviousness “does not require an actual, physical
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`substitution of elements”).
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`Finally, Fujifilm wrongly contends that the proposed combination would not
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`have been obvious because when HP developed the original LTO brake system it
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`did not put that system directly “into the older 3480-type cartridge shell and reel.”
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`9
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`
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`POR at 30. That HP—which Mr. von Alten explained never even manufactured
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`3480-type cartridges (2007 at 86:15-20)—did not undertake the precise proposed
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`combination says nothing about whether it would have been objectively obvious to
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`a hypothetical POSA. Moreover, Mr. von Alten’s statement that his idea to improve
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`3480-type cartridges by replacing their brake buttons with an LTO-type brake was
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`not “predictable” (id. at 87:4-88:3) is irrelevant to the proposed combination
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`because his novel idea—reflected in McAllister-I—was known at the time the ’905
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`Patent was filed. It was novel at some point to replace brake buttons with an LTO-
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`type brakes, but it was not novel at the time of the invention.
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`3. Morita-I’s “Guide Surface” and the Claimed “Guide
`Member” Are Equivalents
`Sony proposed to construe “guide member” as a means-plus-function term
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`with corresponding structure including “at least three ribs.” Pet. at 41-42. Morita-
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`I’s single continuous guide surface 17 is not a literal “guide member” under Sony’s
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`construction, but Sony explained it was “equivalent” to one. Id. at 64-65. Fujifilm
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`incorrectly disagrees.
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`Fujifilm first argues that Sony did not prove guide surface 17 was an
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`equivalent to a “guide member” because Sony purportedly only said that the “prior
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`art confirms that the two structures were known to be interchangeable and thus
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`equivalent.” POR at 31. Sony’s analysis was neither so limited nor so conclusory.
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`Sony, citing Mr. von Alten, first established that guide surface 17 performs the same
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`10
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`
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`function (centering a brake), the same way (guiding the brake toward the center of
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`the reel), to accomplish the same result (a centered brake) as the claimed “guide
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`member.” Pet. at 64-65 (citing Ex-1004 ¶¶421-425). Sony then explained that
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`Laverriere reinforced this equivalence because it taught that either a “single,
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`continuous annular ring 70,” like Morita-I’s guide surface, or multiple separate
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`“ribs,” like the claimed “guide member,” could be used to center a brake. Pet. at
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`65 (citing Laverriere at 4:38-43 and Caterpillar Inc. v. Deere & Co., 224 F.3d 1374,
`
`1380 (Fed. Cir. 2000)). Fujifilm has no real response to Sony’s actual analysis.
`
`Fujifilm next argues that guide surface 17 “fail[s] to perform the recited
`
`function of the guide member,” i.e., “centers the braking member with respect to
`
`the reel” (Pet. at 41), because it “merely guides brake gear 8 to brake gear 7.” POR
`
`at 33. But, as the Petition explained (Pet. at 64), Morita-I is explicit that its guide
`
`surface guides the brake “to the center of the reel.” Morita-I at 8. See also id. at
`
`11 (“brake button is centered by…the guide surface”). Fujifilm does not address
`
`Morita-I’s explicit disclosures.
`
`B. Ground 2: Claim 2 Would Have Been Obvious Over Morita-
`I, Morita-II and Laverriere
`
`1.
`
`A POSA Had Reason to Substitute a Single Guide Surface
`with Multiple Centering Ribs
`Building off Ground 1, Ground 2 established that it would have been a
`
`“design choice” to use Laverriere’s multiple centering ribs rather than Morita-I’s
`
`11
`
`
`
`single guide surface in the Morita-I/Morita-II combination because Laverriere
`
`identified the two designs as interchangeable and characterized multiple ribs as
`
`“preferable.” Pet. at 66 (citing Laverriere at 4:37).
`
`Fujifilm argues a POSA would not have made this design choice because
`
`Morita-I’s guide surface and Laverriere’s centering ribs are “structurally
`
`inconsistent with each other and perform different functions.” POR at 34. This is
`
`incorrect. Both references are clear that while they are different structures, the
`
`functions each performs is centering a brake with respect to a reel. E.g., Laverriere
`
`at Abstract; Morita-I at 8. They perform the same function.
`
`Fujifilm’s argument appears premised on the fact that guide surface 17
`
`centers a beveled braking gear while Laverriere’s centering ribs center a face gear
`
`with a vertical side surface. POR at 35. If relevant, this difference further supports
`
`using the Laverriere centering ribs in the proposed combination because the brake
`
`used in the combination—Morita-II’s brake 106—is a face gear with a vertical side
`
`surface like Laverriere’s brake. Compare Morita-II at FIG. 8 (element 104) with
`
`Laverriere at FIGS. 3-4 (element 61); Ex-1037 at 191:6-193:15.
`
`Fujifilm also argues that replacing guide surface 17 with multiple centering
`
`ribs would “not be simple.” POR at 36. While Fujifilm’s expert states, without
`
`evidentiary support, that the change from a single surface to multiple ribs “could
`
`take months” (Ex-2008 ¶260), Laverriere teaches that incorporating centering ribs
`
`12
`
`
`
`“requires only minimal modifications to the structure of the hub.” Laverriere at
`
`5:23-27. As Mr. von Alten explained, this disclosure confirmed that the “design
`
`choice would have been within the skill of a POSA.” Ex-1004 ¶431. Fujifilm
`
`criticizes Mr. von Alten for not further explaining “what this disclosure of
`
`Laverriere means” (POR at 36), but the disclosure is self-explanatory: adding ribs
`
`to the hub shown in Laverriere, which is similar to Morita-I’s hub, requires only
`
`“minimal modification,” not “months” of design work. Compare Laverriere at FIG.
`
`2 (depicting reel hub) with Morita-I at FIG. 1 (depicting similar reel hub).
`
`Finally, in addition to being factually incorrect, Fujifilm’s “not be simple”
`
`argument is legally erroneous as it impermissibly treat obviousness as a question of
`
`physical combinability. Supra p. 9.
`
`Laverriere’s “Centering Ribs” Are “Guide Members”
`2.
`Fujifilm argues that Laverriere’s “centering ribs” do not satisfy the structural
`
`aspect of Sony’s proposed “guide member” construction because the ribs’ “inclined
`
`surface” is purportedly at the bottom portion of the hub and thus cannot “incline[]
`
`downward from the upper portion of the inner surface of the reel hub.” POR at 37-
`
`39. Fujifilm is wrong.
`
`The Petition explained that Laverriere’s “centering ribs” create “angled,
`
`contoured steps” that satisfy the structural part of the “guide member” construction.
`
`Pet. at 67. As Mr. von Alten explained, “curves” form Laverriere’s “angled,
`
`13
`
`
`
`contoured steps.” von-Alten-¶437. See also Pet. at 67. Laverriere identifies one
`
`such “curve” as element 76. Laverriere at 4:44-55, FIG. 3.
`
`Fujifilm focuses on “abutting surface 72” (POR at 39), but ignores curve 76
`
`which, as seen below and as explained by Mr. von Alten, is at the top of the rib and
`
`inclines downward from the upper portion of the inner surface of the reel hub. Ex-
`
`2007 at 78:19-79:20 (explaining that the ribs “have two inclined surfaces” with one
`
`labeled 76 “at the very top”). Laverriere’s “centering ribs” thus satisfy the
`
`structural aspect of Sony’s construction.
`
`
`
`C. Ground 3: Tsuyuki Anticipates Claim 3
`
`Claim 3 requires that the engagement gear’s outer diameter be “larger” than
`
`the braking gear’s outer diameter, but there is no limit on how much larger. Indeed,
`
`Sony’s cartridges were found to infringe even though their engagement gears were
`
`less than 0.2 mm larger than their braking gears and that difference was due to
`
`manufacturing tolerances as the gears’ diameters were designed to be equal. Ex-
`
`14
`
`
`
`2009 at 135-136. The question for Ground 3 is thus whether a POSA would have
`
`interpreted Tsuyuki’s figures to depict an engagement gear some amount larger than
`
`a braking gear.
`
`Fujifilm first argues that Tsuyuki’s figures could only disclose the claimed
`
`diameter relationship if its specification explicitly discussed “relative dimensions”
`
`or expressed “concern[] with the size or dimension” of the components—in other
`
`words, what is plainly depicted in the figures must have been intended. POR at 41-
`
`42. This is contrary to precedent. E.g., In re Wagner, 63 F.2d 987, 986-87
`
`(C.C.P.A. 1933) (“[I]f a drawing clearly suggests to one skilled in the art the way
`
`in which the result sought is accomplished by a later applicant, it is immaterial
`
`whether the prior patentee’s showing was accidental or intentional.”); Cummins-
`
`Allison Corp. v. SBM Co., Ltd., 484 F. App’x. 499, 507 (Fed. Cir. 2012) (“[T]here
`
`is no additional requirement that the specification must explicitly disclose the
`
`precise proportions or particular size.”).
`
`Fujifilm next argues that “when a reference does not disclose that the
`
`drawings are to scale and is silent as to dimensions, arguments based on
`
`measurements of the features in the drawing are of little value.” POR at 42. Sony’s
`
`analysis, however, is not based on “measurements of the features” depicted in
`
`Tsuyuki—the analysis is based on interpreting the depicted relationship of features.
`
`The diameter limitation is a relational limitation requiring only that one
`
`15
`
`
`
`component—engagement gear—be any amount larger than another component—
`
`braking gear. Patent drawings have consistently been found to disclose such
`
`relational limitations. In re Wolfensperger, 302 F.2d 950, 959 (C.C.P.A. 1962)
`
`(figures properly relied upon to show “relative width and depth dimensions”); Koito
`
`Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1154-55 (Fed. Cir. 2004)
`
`(figures alone disclose limitation requiring a channel to be “significantly thicker
`
`and wider” than an adjacent layer); ASM IP Holding B.V. v. Hitachi Kokusai Elec.
`
`Inc., IPR2018-01523, 2019 WL 650552, *12 (P.T.A.B. Feb. 15, 2019)
`
`(“[Hockerson] do[es] not…preclude use of figures to establish that one component
`
`dimension is relatively larger (or smaller) than another.”); Hutchinson Tech. Inc.
`
`v. Nitto Denko Corp., IPR2017-01421, 2018 WL 5098867, *12 (P.T.A.B. Oct. 10,
`
`2018) (figures alone disclosed limitation and finding Koito more on point than
`
`Hockerson where the relevant limitation required a “relational relationship”
`
`between components rather than “quantitative relationship”); Telebrands Corp. v.
`
`Tinnus Enter. LLC, PGR2017-00015, 2018 WL 5084901, *10 (P.T.A.B. Oct. 10,
`
`16
`
`
`
`2018) (reliance on figure proper wh
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