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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________________
`
`
`Sony Corporation
`Petitioner
`
`v.
`
`FUJIFILM Corporation
`Patent Owner
`___________________
`
`Case IPR2018-00877
`U.S. Patent No. 6,462,905
`___________________
`
`PATENT OWNER’S SUR-REPLY
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`
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`LIST OF EXHIBITS
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`Exhibit Description
`1001 U.S. Patent No. 6,462,905
`1004 Declaration of Thomas von Alten
`1007
`European Patent Publication No. 0 284 687 A2 (“Laverriere”)
`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”)
`1037
`Transcript of Deposition of William Vanderheyden of 2018-00876 and
`2018-00877 (Feb. 27, 2019)
`Transcript of Deposition of Thomas von Alten for IPRs 2018-00876 and
`2018-00877
`2008 Declaration of William Vanderheyden for IPRs 2018-00876 and 2018-
`00877
`2013 U.S. Patent No. 5,431,356 (“Horstman”)
`2014 U.S. Patent No. 6,427,934 (“Saliba”)
`
`
`2007
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`i
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................... 1
`I.
`II. PETITIONER HAS NOT SHOWN THAT CLAIMS 1-3 OF THE ’905
`PATENT ARE UNPATENTABLE ........................................................................... 2
`A. Ground 1: Petitioner Failed to Demonstrate that Claim 1 Would Have Been
`Obvious Over Morita-I in View of Morita-II ............................................... 2
`B. Ground 2: Petitioner Failed to Demonstrate that Claim 2 Would Have Been
`Obvious in View of the Combination of Morita-I, Morita-II, and Laverriere
` ..................................................................................................................... 14
`C. Ground 3: Petitioner Failed to Demonstrate that Tsuyuki Anticipates Claim
`3 ................................................................................................................... 17
`D. Ground 4: Petitioner Failed to Demonstrate that Claim 3 Would Have Been
`Obvious in view of Tsuyuki ........................................................................ 19
`III. CONCLUSION ................................................................................................. 25
`
`
`
`
`
`ii
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`
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`
`
`TABLE OF AUTHORITIES
`
`
` Page(s)
`
`Cases
`Amgen, Inc. v. Chugai Pharm. Co.,
`927 F.2d 1200 (Fed. Cir. 1991) .......................................................................... 10
`Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus. Inc.,
`145 F.3d 1303 (Fed. Cir. 1998) .......................................................................... 13
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
`222 F.3d 951 (Fed. Cir. 2000) ............................................................................ 17
`
`In re Beattie,
`974 F.2d 1309 (Fed. Cir. 1992) ............................................................................ 8
`In re Brandt,
`886 F.3d 1171 (Fed. Cir. 2018) .......................................................................... 24
`In re Gal,
`980 F.2d 717 (Fed. Cir. 1992) ............................................................................ 16
`In re Katz Interactive Call Processing Patent Litigation,
`639 F.3d 1303 (Fed. Cir. 2011) ............................................................................ 8
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 2
`In re Ratti,
`270 F.2d 810 (CCPA 1959) ............................................................................ 9, 12
`In re Rinehart,
`531 F.2d 1048 (CCPA 1976) ................................................................................ 7
`In Touch Techs., Inc. v. VGo Comms., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ............................................................................ 8
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 15
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 14
`
`
`
`iii
`
`
`
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................................... 2, 7
`
`Wasica Fin. Gmbh v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) .......................................................................... 18
`
`BOARD DECISIONS
`Becton, Dickinson v. One StockDuq Holding,
`IPR 2013-00235, 2014 WL 4854606 (P.T.A.B. Sept. 25, 2014) ....................... 17
`Clariant Corp v. CSP Techs., Inc.,
`IPR 2014-00375, 2015 WL 3637958 (P.T.A.B. June 10, 2015) ........................ 17
`Ex parte Levy,
`17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990) ................................................ 19
`Presidio Components v. Am. Tech. Cermanics,
`IPR 2015-01331, 2015 WL 9599181 (P.T.A.B. Dec. 3, 2015) .......................... 17
`STATUTES
`35 U.S.C. § 102 .......................................................................................................... 1
`35 U.S.C. § 103 .......................................................................................................... 1
`37 C.F.R. § 42.65(A)................................................................................................ 20
`
`
`
`
`
`
`iv
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`I. INTRODUCTION
`
`The Board should confirm the patentability of claims 1-3 of U.S. Patent No.
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`6,462,905 (Ex. 1001, “the ’905 Patent”) over Japanese Patent Publication No. S63-
`
`11776 (“Morita-I”), European Patent Publication No. 0 926 676 A1 (“Morita-II”),
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`European Patent Publication No. 0 284 687 A2 (“Laverriere”), and Japanese Patent
`
`Publication No. H11-288571 (“Tsuyuki”).1 Patent Owner presented significant
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`evidence,
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`including
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`the detailed
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`testimony of cartridge expert William
`
`Vanderheyden, refuting the speculation and hindsight reasoning of the Petition.
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`Instead of addressing this evidence, Sony Corporation’s (“Petitioner’s”) Reply
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`sought to strike Mr. Vanderheyden’s declaration on meritless procedural grounds,
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`which effort has now been mooted by the Board’s order (Paper 22) and Petitioner’s
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`filing of corrected Ex. 2008 on April 10, 2019.
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`Petitioner’s and its expert’s changing positions and abandonment of
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`previously presented arguments reflect textbook impermissible hindsight. On the
`
`merits, Petitioner cannot prevail.
`
`
`1 Claim 4, to which Grounds 5 and 6 were directed, was previously disclaimed
`
`under 35 U.S.C. § 253(a).
`
`
`
`1
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`
`
`
`
`II. PETITIONER HAS NOT SHOWN THAT CLAIMS 1-3 OF THE ’905
`PATENT ARE UNPATENTABLE
`
`Petitioner has failed to demonstrate that any of claims 1-3 of the ’905 Patent
`
`are unpatentable under 35 U.S.C. §§ 102 or 103.
`
`A. Ground 1: Petitioner Failed to Demonstrate that Claim 1 Would
`Have Been Obvious Over Morita-I in View of Morita-II
`i)
`
`A POSA would not have been motivated to combine
`Morita-I with Morita-II in the manner claimed
`
`Petitioner argues it would have been obvious to replace the insides of a
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`3480-type cartridge described in Morita-I with an LTO-type reel lock described in
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`Morita-II. See Petition (“Pet.”), Paper No. 2 at 45-47. As explained in Patent
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`Owner’s Response, a person of ordinary skill in the art (“POSA”) would not have
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`sought to substantially redesign the 3480-type magnetic tape cartridge described in
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`Morita-I to incorporate features of the LTO-type cartridge described in Morita-II.
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`See Patent Owner’s Response (“POR”), Paper No. 17 at 22-30. Petitioner failed to
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`meet its threshold burden of providing a proper or supportable rationale for such a
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`combination. See Ex. 2008 ¶¶ 228, 244.
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`(1) Petitioner Has Not Provided a Reasonable
`Rationale for a POSA to Combine Morita-I and
`Morita-II
`To show obviousness, Petitioner must provide an articulated reason with
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`rational motivation to modify the prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 417 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner
`
`
`
`2
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`
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`has not articulated any rational motivation to combine elements of the new LTO-
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`type magnetic cartridge disclosed in Morita-II into an older 3480-type magnetic
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`cartridge disclosed in Morita-I. See Ex. 2008 ¶ 228.
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`The only reason articulated by Petitioner for modifying Morita-I with
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`Morita-II is to “address[] the known ‘dust and dirt’ problem of Morita-I.”
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`Petitioner’s Reply (“PR”), Paper No. 21 at 5. Being a 3480-type cartridge, Morita-
`
`I includes a center opening that allows the tape drive to push up against the brake
`
`button. See Ex. 1010 at 7. According to Petitioner, this center opening in the
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`cartridge allows the “dust and dirt” problem exhibited by Morita-I to occur. Pet. at
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`43-45. To solve this alleged problem, Petitioner suggests using the cartridge of
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`Morita-I, removing its internal components, and adding the components, including
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`the reel stopper means from Morita-II, to the Morita-I cartridge. See Pet. at 48-49.
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`However, as Mr. Vanderheyden testified, a POSA would have understood that
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`merely combining the Morita-I cartridge having the center opening with the reel
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`stopper means of Morita-II would not have solved the alleged problem. Ex. 2008
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`¶¶ 238-40. Thus, Petitioner’s proposed combination would not prevent or improve
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`the “dust and dirt” problem.
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`
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`3
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`
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`Acknowledging that Petitioner’s proposed modification would not have
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`solved the purported problem, for the first time in its Reply,2 Petitioner argues that
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`its proposed modification would also include closing the hole in the bottom of the
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`Morita-I cartridge. PR at 5. Yet, “eliminating” the central hole of Morita-I’s
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`cartridge creates a variety of new problems. For example, the cartridge would not
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`be able to work in the 3480 tape drive described in Morita-I, which requires access
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`to the internal cartridge via a hole in the bottom of the casing. Ex. 2008 ¶ 60-61.
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`Further, even assuming the hole in the bottom casing could be closed, the
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`proposed combination would still need some other permanent opening or openings
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`in the bottom casing to account for the push rods in the Morita-II reel stopper
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`means. Ex. 2008 ¶ 241. These openings would exacerbate the dust and dirt
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`problem Petitioner purports to cure. Id. This can be seen from Petitioner’s
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`expert’s own annotated drawings of Morita-I and Morita-II, as shown below.
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`Specifically, Mr. von Alten testified that this combined cartridge would include
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`everything highlighted in green below from Morita-I. Ex. 2007 at 90:2-10.
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`2 This elimination of the central hole in the Morita-I casing is first introduced in
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`Petitioner’s Reply, and is not explained or argued in the petition. See Pet. at 48
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`(Petitioner annotated Morita-I’s cartridge casing in red (including the hole in the
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`bottom) which Petitioner intended to be part of its combined cartridge).
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`
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`4
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`
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`Ex. 1010 at Fig. 1 (annotated by Petitioner). Mr. von Alten also testified that he
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`would replace the internal components of the cartridge above, with the reel stopper
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`means of Morita-II shown below. According to Petitioner’s reply, this would also
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`include replacing brake gear 7 of Morita-I (above) with engagement projections
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`127 of Morita-II (shown below).3
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`3 Petitioner argues that “Fujifilm mistakenly believes that Morita-I’s brake gear 7
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`would have been part of the proposed combination, but the Petition is clear that
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`brake gear 7 would have been replaced with Morita-II’s engagement projections
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`127.” PR at 6. This was far from clear in the Petition and is being articulated for
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`the first time in Petitioner’s Reply. Nevertheless, Petitioner proposes to retain the
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`inclined surface in green above, located below brake gear 7 in the combined
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`cartridge. Ex. 2007 at 90:2-10.
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`
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`5
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`
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`Ex. 1011 at FIG. 7 (annotated by Petitioner). Although significant details regarding
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`the proposed combination remain unclear, it appears Petitioner would place push
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`rods 163 from Morita-II somewhere through the inclined surface (shown in green)
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`in Morita-I above. Such a modification would not only be inoperable as discussed
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`below, but it would also leave a large hole or holes for dirt to penetrate through the
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`bottom of the Morita-I cartridge. See Ex. 2008 ¶ 241. This would exacerbate the
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`purported dust and dirt problem. Id.
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`Petitioner also now argues Patent Owner conceded that modifying Morita-I
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`to have a closed LTO-type cartridge would have been “the only logical
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`conclusion.” PR at 4. To the contrary, the evidence shows there would have been
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`no reason to combine Morita-I and Morita-II because a POSA would have simply
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`used the LTO-type cartridge (with a closed bottom) described in Morita-II. See
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`6
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`POR at 27-28; see Ex. 2008 ¶¶ 238-39. In other words, if a POSA wanted to
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`address the alleged dust and dirt problem, one would have used an LTO cartridge.
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`Ex. 2008 ¶ 237. One would not have looked to an older 3480-type cartridge,
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`gutted its internal components, and replaced its external casing. Id.
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`In view of the above, Petitioner has provided no reasonable rationale for a
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`POSA to have modified the Morita-I cartridge with the reel stopper means of
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`Morita-II. Ex. 2008 ¶¶ 238-40. Indeed, Petitioner’s own expert, Mr. von Alten,
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`who worked for HPE at the time of the invention, agreed that HPE would not have
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`used a 3480-type cartridge shell when developing the LTO cartridge. Ex. 2007 at
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`86:23-87:3. Further, Mr. von Alten acknowledged that “his idea to improve 3480-
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`type cartridges by replacing their brake buttons with an LTO-type brake was not
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`‘predictable’.” PR at 10 (citing Ex. 2007 at 87:4-88:3). Thus, if it was not obvious
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`or predicable to use a 3480 cartridge shell to Mr. von Alten when he was working
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`on LTO cartridges in 1998, it would not have been obvious to a POSA shortly
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`thereafter in 1999 when the foreign applications corresponding to the ’905 Patent
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`were filed. KSR, 550 U.S. at 421 (the fact finder must be aware “of the distortion
`
`caused by hindsight bias and must be cautious of arguments reliant upon ex post
`
`reasoning”); In re Rinehart, 531 F.2d 1048, 1053 (CCPA 1976) (obviousness
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`requires at least some degree of predictability). Petitioner does not provide a
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`rebuttal to this argument.
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`
`
`7
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`
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`Further, Petitioner proposes combining Morita-I and Morita-II because
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`Morita-II does not disclose the claimed guide member. Yet, Petitioner does not
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`suggest why one would retain the alleged guide surface 17 of Morita-I for use with
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`a different reel stopper from Morita-I. Ex. 2008 ¶ 239-42. Petitioner has merely
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`used the claims of the ’905 Patent as a roadmap to piece together a cartridge,
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`which incorporates divergent features of the 3480-type cartridge described in
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`Morita-I with the LTO-type cartridge described in Morita-II. Doing so is clearly
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`improper hindsight. In Touch Techs., Inc. , v. VGo Comms., Inc.,751 F.3d 1327,
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`1351-52 (Fed. Cir. 2014) (it is improper to use the claimed invention “as [a]
`
`roadmap for putting. . . pieces of a ‘jigsaw puzzle’ together”).
`
`In an attempt to circumvent the divergent teachings of Morita-I and Morita-
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`II, Petitioner argues that as a matter of law Morita-II can distinguish over Morita-I
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`without teaching away from its combination. PR at 3-4 (citing to In re Katz
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`Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1321 (Fed. Cir.
`
`2011); In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992)). These citations are
`
`inapplicable here. Katz and Beattie address prior art references that could be
`
`combined or could coexist together. See Katz, 639 F.3d at 1321 (a reference
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`“explicitly states that its invention can be applied to” a compatible system
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`disclosed in another reference); see Beattie, 974 F.2d at 1312-13 (recommending a
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`new system that can coexist with and “does not require obliteration of another”
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`
`
`8
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`
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`
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`system). As discussed above, the LTO-type cartridge described in Morita-II is
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`incompatible with the 3480-type cartridge described in Morita-I. Ex. 2008 ¶¶ 234-
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`46. Accordingly, there is no motivation to combine Morita-I with Morita-II.
`
`(2) Petitioner’s Proposed Modification Would Require
`a Substantial Redesign that Would Change the Basic
`Operation of Morita-I
`Even if one were motivated to combine Morita-I and Morita-II, such a
`
`combination would require a substantial redesign which would inevitably change
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`the basic function and operation of the Morita-I cartridge. See In re Ratti, 270 F.2d
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`810, 813 (CCPA 1959) (reversing rejection because the “suggested combination of
`
`references would require a substantial reconstruction and redesign of the elements
`
`shown in [the primary reference] as well as a change in the basic principle under
`
`which the [primary reference] construction was designed to operate.”). As
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`mentioned above, Petitioner’s combination requires removing nearly the entire
`
`interior of Morita-I and replacing that with the interior of Morita-II. See Ex. 1004
`
`¶ 414. Specifically, Petitioner’s combination would require gutting the 3480-type
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`cartridge of Morita-I, adding the entire reel stopper means of the LTO-type
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`cartridge described in Morita-II into the 3480-type cartridge, and then making
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`additional changes to the combined cartridge. See Ex. 1004 ¶¶ 367-417; see PR at
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`5.
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`
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`9
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`
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`Since there are substantial differences between the 3480 cartridge and the
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`LTO cartridge, this combination would require significant redesign without a
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`reasonable expectation of success. See POR at 28-30; see also Ex. 2008 ¶ 243;
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`Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1207-08 (Fed. Cir. 1991)
`
`(finding a proposed combination nonobvious based on expert testimony on lack of
`
`reasonable expectation of success). Petitioner fails to rebut any of these
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`differences or design changes, and instead tries to limit these differences to the
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`“presence of a central hole in the reel of Morita-I to accommodate the brake
`
`button.” PR at 4. However, Petitioner’s own expert acknowledged numerous
`
`other design changes that would need to be undertaken. See Ex. 2007 at 90:11-20,
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`92:8-93:2, 94:10-13, 95:22-96:10. These substantial changes outlined by both
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`Patent Owner’s and Petitioner’s experts are indicative of the reconstruction and
`
`redesign required for this combination.
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`In an attempt to trivialize the amount of redesign needed for this
`
`combination, Petitioner argues that the redesign is within the ordinary skill of one
`
`in the art. For example, Petitioner argues that a POSA would have known to create
`
`holes in guide surface 17 of Morita-I to accommodate the push rods of the release
`
`member in Morita-II. See PR at 7. However, as explained by Patent Owner’s
`
`expert, Mr. Vanderheyden, cutting holes into guide surface 17 of Morita-I would
`
`
`
`10
`
`
`
`
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`create structural weaknesses and require significant engineering with no
`
`expectation of success. Ex. 2008 ¶ 244.
`
`Further, even if one were to undertake the substantial redesign of combining
`
`Morita-I and Morita-II, the suggested combination would have drastically changed
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`the operation of the 3480-type magnetic tape cartridge described in Morita-I.
`
`When the 3480 cartridge disclosed in Morita-I is in use, the brake release member
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`10 of a tape drive directly abuts brake button 4 of the Morita-I cartridge. Ex. 1010
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`at FIG. 1. When stored, brake button 4 rests directly on brake gear 7, which
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`prevents unexpected rotation of reel 3. Ex. 1010 at 7, FIG. 2.
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`In Petitioner’s proposed combination, brake button 4 and brake 7 would be
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`removed and replaced with a locking gear, spider, and engagement gear of Morita-
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`II, completely subverting the basic principle of operation of the 3480-type
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`cartridge. Ex. 1004 ¶¶ 414-15. Accordingly, in the new design, the tape drive
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`would no longer contact brake button 4 since locking gear would rest on the spider
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`and push rods 163. This would drastically change the basic operation of the 3480-
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`type cartridge and render the combined cartridge inoperable in a 3480-type tape
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`drive. Ex. 2008 ¶ 244. Further, it is not clear from the references or Petitioner’s
`
`arguments that guide surface 17 of Morita-I would not interfere with the reel
`
`stopper of Morita-II. Id.
`
`
`
`11
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`
`
`
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`Petitioner minimizes
`
`this
`
`issue as merely “a question of physical
`
`combinability.” PR at 9. That misses the point. As Mr. Vanderheyden opined, if
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`the Morita-I and Morita-II cartridges were physically combined, the combination
`
`would change the basic principle under which the 3480-type magnetic tape
`
`cartridge described in Morita-I was designed to operate and would not function in
`
`its tape drive. Ex. 2008 ¶ 245; see In re Ratti, 270 F.2d at 813 (CCPA 1959).
`
`Therefore, Petitioner’s proposal of adding
`
`the LTO-type
`
`internal
`
`components of Morita-II to a 3480-type cartridge of Morita-I would inevitably
`
`change the basic principle of operation of Morita-I.
`
`ii)
`
`the
`that
`to demonstrate
`failed
`Petitioner
`combination of Morita-I and Morita-II discloses “a
`guide member which centers the braking member
`with respect to the reel” as recited in claim 1
`
`Petitioner acknowledged that “Morita-I’s single continuous guide surface 17
`
`is not a literal ‘guide member’ under Sony’s construction.” PR at 10.
`
`Nevertheless, Petitioner argues that “guide surface 17 performs the same function
`
`(centering a brake), the same way (guiding the brake toward the center of the reel),
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`to accomplish the same result (a centered brake) as the claimed ‘guide member.’”
`
`PR at 10-11 (citing Pet. at 64-65). As explained in Morita-I, however, guide
`
`surface 17 simply guides brake gear 8 to brake gear 7. See Ex. 1010 at 8. Brake
`
`gear 7 then receives brake gear 8 and centers brake button 4 of Morita-I. Guide
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`surface 17 of Morita-I therefore does not achieve the same result of centering the
`
`
`
`12
`
`
`
`
`
`brake as claimed. Brake gear 7, not guide surface 17, guides the brake gear. Thus,
`
`the proposed combination of Morita-I and Morita-II fails to meet Petitioner’s own
`
`construction of the “guide member” recited in claim 1 of the ’905 Patent. See
`
`Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus. Inc., 145 F.3d 1303, 1311
`
`(Fed. Cir. 1998) (doctrine of equivalents does not apply when one structure
`
`operates in a substantially different way from the claimed structure).
`
`In addition, as part of its proposed combination Petitioner now suggests
`
`completely removing brake gear 7. See PR at 6. As described in Morita-I, guide
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`surface 17 does not actually center brake button 4, but merely contacts the brake
`
`button before it passes to the brake gear 7. See Ex. 2008 ¶ 249. Given that brake
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`gear 7 is primarily responsible for centering the brake button of Morita-I, there
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`would still be no “guide member” under Petitioner’s construction which centers a
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`brake toward the center of the reel.
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`Petitioner attempts to rely on Laverriere to show equivalence between guide
`
`surface 17 of Morita-I and the claimed guide member. PR at 11. However,
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`Laverriere is not included as part of Ground 1 and is therefore not relevant here. In
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`any event, the comparison is inapt, as Laverriere’s projecting means and Morita-I’s
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`guide surface are significantly different in form and function. Ex. 2008 ¶¶ 257-58.
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`In view of the above, Petitioner failed to demonstrate that claim 1 is rendered
`
`obvious by the combination of Morita-I and Morita-II.
`
`
`
`13
`
`
`
`
`
`B. Ground 2: Petitioner Failed to Demonstrate that Claim 2 Would
`Have Been Obvious in View of the Combination of Morita-I,
`Morita-II, and Laverriere
`
`In Ground 2, Petitioner simply adds Laverriere to the proposed combination
`
`in Ground 1. Petitioner’s arguments fail at least for all the reasons stated above in
`
`response to Ground 1. Petitioner’s Reply further fails to provide any justification
`
`for why a POSA would have been motivated to perform the alleged combination
`
`beyond merely using claim 2 of the ’905 Patent as a roadmap. Petitioner’s Reply
`
`also does not rebut any of the functional or structural differences between the guide
`
`surface and the projecting means identified by the Patent Owner.
`
`Petitioner specifically argues that a POSA would have used projecting
`
`means 70 of Laverriere instead of the guide surface 17 of Morita-I in the proposed
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`combination. See PR at 11-12. Petitioner argues that this would have been a mere
`
`design choice, but fails to provide any reason why a POSA would have sought to
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`replace the guide surface 17 of Morita-I with projecting means 70 of Laverriere.
`
`Id. Under Petitioner’s own theory that guide surface 17 of Morita-I is equivalent to
`
`the guide member of the ’905 Patent, there would be no need to add Laverriere’s
`
`projecting means 70 in Morita-I to center the brake member. See PR at 10-11.
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`Petitioner’s arguments are devoid of any reasoning for the proposed combination,
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`and are nothing more than hindsight reconstruction. See Kinetic Concepts, Inc. v.
`
`Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting
`
`
`
`14
`
`
`
`
`
`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008) (“We
`
`must still be careful not to allow hindsight reconstruction of the references to reach
`
`the claimed invention without any explanation as to how or why the references
`
`would be combined to produce the claimed invention.”).
`
`Without providing a rationale for the combination, Petitioner argues that
`
`adding projecting means 70 of Laverriere would have been obvious as it would
`
`only require minimal modification, citing a sentence in Laverriere that states:
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`“Laverriere teaches that incorporating centering ribs ‘requires only minimal
`
`modifications to the structure of the hub.’” PR at 12-13 (citing Ex. 1007 at 5:23-
`
`27). However, this sentence regarding “only minimal modification” is directed to
`
`the 3480 cartridge disclosed in Laverriere. Ex. 1007 at 5:23-27. This sentence is
`
`not a blanket statement for all combinations and all cartridges. Indeed, Laverriere
`
`does not contemplate incorporating projecting means 70 into a 3480-type cartridge
`
`(of Morita-I) that has been replaced internally with the LTO reel lock mechanism
`
`(of Morita-II). Such a combination would have required substantial redesign and
`
`would not have been obvious to a POSA. Ex. 2008 ¶¶ 259-61.
`
`Petitioner argues that Patent Owner’s positions are “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.” PR at 12 (citing to POR at 35).
`
`Petitioner, however, mischaracterizes and oversimplifies Patent Owner’s position.
`
`
`
`15
`
`
`
`
`
`As explained in Patent Owner’s Response, there are numerous structural and
`
`functional differences between guide surface 17 of Morita-I and projection means
`
`70 of Laverriere. See POR at 35; see In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)
`
`(finding of obvious design choice precluded when claimed structure and the
`
`function it performs are different from the prior art). Petitioner fails to address or
`
`account for any of the above differences in its equivalents analysis.
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`As presented in Patent Owner’s response, Laverriere’s projecting means are
`
`not “guide members” under Petitioner’s proposed construction. See POR at 37-39.
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`Petitioner now appears to point to curve 76, which is a small section of projecting
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`means 70, and argues that the mere presence of curve 76 satisfies the above
`
`construction of the guide rib. See PR at 13-14. Petitioner’s position regarding
`
`curve 76 is a new position presented for the first time in Petitioner’s Reply. This
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`reading of Laverriere is neither described nor explained in either the Petition or
`
`Petitioner’s expert declaration.4 Nevertheless, projecting means 70 of Laverriere,
`
`of which curve 76 is a small section, does not satisfy the “guide member”
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`construction Petitioner proposes. POR at 36-39.
`
`
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`4 The only place curve 76 appears in either the Petition or the Petitioner’s expert
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`declaration is an annotation of FIG. 3 of Laverriere that highlights projecting
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`means 70, without highlighting reference character 76.
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`
`
`16
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`
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`
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`In view of the above, Petitioner failed to demonstrate that claim 2 is
`
`rendered obvious by the combination of Morita-I, Morita-II, and Laverriere.
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`C. Ground 3: Petitioner Failed to Demonstrate that Tsuyuki
`Anticipates Claim 3
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`It is undisputed that the specification of Tsuyuki is silent regarding the
`
`dimensions or relative dimensions of any of its components. Ex. 2007 at 138:6-10;
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`Ex. 2008 ¶ 267. Given that Petitioner’s expert acknowledged as much, Petitioner
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`appears to rely on the figures of Tsuyuki for inherent anticipation. However,
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`Petitioner fails to show that the claimed diameter relationship is necessarily shown
`
`in the figures. As Patent Owner made clear in its Response, a POSA cannot
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`comprehend relative diameters from ambiguous, unclear figures, such as those in
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`Tsuyuki, which Petitioner acknowledges are not drawn to scale. POR at 41-42
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`(citing See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956
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`(Fed. Cir. 2000)). Petitioner’s Reply fails to refute this clear application of the law
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`to the drawings of Tsuyuki.
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`First, Petitioner incorrectly argues that the limited circumstances in which
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`prior art figures can be considered are applicable here simply because Tsuyuki
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`contains cross-sectional views. PR at 17 n.2 (citing Presidio Components v. Am.
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`Tech. Cermanics, IPR 2015-01331, 2015 WL 9599181, *4 (P.T.A.B. Dec. 3,
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`2015); Becton, Dickinson v. One StockDuq Holding, IPR 2013-00235, 2014 WL
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`4854606, *12 (P.T.A.B. Sept. 25, 2014); Clariant Corp v. CSP Techs., Inc., IPR
`
`
`
`17
`
`
`
`
`
`2014-00375, 2015 WL 3637958, *13 (P.T.A.B. June 10, 2015)). Petitioner,
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`however, mischaracterizes the law. As discussed in the Patent Owner Response,
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`the cited cases “involve figures with a clear cross-sectional view that plainly
`
`depicts relative positions of components.” POR at 46. The figures of Tsuyuki are
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`far from clear and cannot satisfy this standard. Id.; Ex. 2008 ¶¶ 268-69.
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`Indeed, Petitioner’s own expert referred to FIGS. 1 and 3 of Tsuyuki as
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`being “less than perfect,” and acknowledged that the figures do not show the edges
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`of the gear components, upon which Petitioner solely relies. Ex. 2007 at 139:2-10.
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`Such ambiguity in Tsuyuki’s figures precludes Petitioner’s claim of anticipation.
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`See, e.g., Wasica Fin. GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1284
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`(Fed. Cir. 2017) (“ambiguous references do not, as a matter of law, anticipate a
`
`claim.”).
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`Second, Petitioner backpedals and tries to limit its expert’s testimony to how
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`the figures would be “pixelated” if “one hypothetically were to ‘zoom in’ on
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`Tsuyuki’s figures.” PR at 18. However, this scenario is far from hypothetical—
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`FIG. 3 of Tsuyuki is a pixelated zoomed-in version of FIG. 1. Ex. 1012 at FIGS. 1
`
`and 3. This ambiguity is evident in the flawed annotation of the Tsuyuki figures
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`provided in the Petition. See PR at 17-18; see POR at 44-45.
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`Third, acknowledging the lack of clarity of the Tsuyuki figures, Petitioner
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`now argues that “the gears [of Tsuyuki] are bevel gears and thus moving gear 41
`
`
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`18
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`
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`
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`would have been designed slightly smaller in diameter to fit within stationary gear
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`27.” PR at 18-19. In other words, because inhibiting gears 27 and 41 are beveled
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`gears, Petitioner argues that it is inherent in Tsuyuki’s figures that one of the gears
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`has a larger diameter than the other, even if the figures do not actually show such a
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`relationship. To rely on a theory of inherent anticipation, Petitioner must show that
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`the diametric relationship is necessarily present in Tsuyuki. See Ex parte Levy, 17
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`USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). Petitioner has not met this
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`burden. In fact, Petitioner’s expert acknowledged tha
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