IPR2018‐00876/
`IPR2018‐00877
`
`Sony Corp. v. FUJIFILM Corp.
`
`U.S. Pat. No. 6,462,905
`
`Patent Owner's Demonstratives
`
`Oral Argument
`June 21, 2019
`
`
`IPR2018‐00877
`
`Sony Corp. v. FUJIFILM Corp.
`
`U.S. Pat. No. 6,462,905
`
`Patent Owner's Demonstratives
`
`Oral Argument
`June 21, 2019
`
`
`
`I
`II
`III
`IV
`
`Table of Contents
`U.S. Pat. No. 6,462,905………...….......................................................................................................3
`A.
`Listing of Claims 1-3 …………………………………………………..…………………………....…..………..4
`B. Background …………………..………………………..………………………….…………………..……………..8
`C. Overview ………………..………………………..………………………….……………………………………13
`IPR2018-00876 …………………...…....................................................................................................20
`A. Procedural History ………………………………........………………………………………………………21
`B. Ground 1 – McAllister-I + Laverriere (claims 1 and 2) ……………………………..…..……27
`C. Ground 2 – McAllister-I (claim 3) ……….…………………..………………………….………………50
`D. Ground 3 – McAllister-I + Laverriere (claim 3) …………..…………………………..………….64
`E. Grounds 6 and 7 – Mizutani (claim 3) …………..…………………………..……………………….70
`IPR2018-00877 …………………...…....................................................................................................79
`A. Procedural History …………………………………………………………………………………………….80
`B. Ground 1 – Morita-I + Morita-II (claims 1 and 2) ………………..……………….….…..……84
`C. Ground 2 – Morita-I + Morita-II + Laverriere (claims 1 and 2) ………..……………...102
`D. Grounds 3 and 4 – Tsuyuki (claim 3)…..……………………..……………………………..……….106
`Motion to Exclude ……………...…...................................................................................................120
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`U.S. PATENT NO.
`6,462,905
`
`IPR2017‐01356 (USP 7.016,137)
`
`I
`
`Listing of Claims 1-3
`A.
`Background
`B.
`C. Overview
`
`3
`
`
`
`U.S. PAT. NO. 6,462,905 I.A
`
`IPR2017‐01356 (USP 7.016,137)
`
`|.A
`LISTING OF CLAIMS 1-3
`
`LISTING OF CLAIMS 1—3
`
`A.
`
`U.S. PAT. NO. 6,462,905
`
`A.
`
`4
`
`
`
`Claim 1
`
`1. A magnetic tape cartridge comprising a magnetic tape wound around a single reel, a
`cartridge casing in which the reel is housed for rotation and a reel stopper means which
`locks the reel not to rotate when the magnetic tape cartridge is not being used and
`releases the reel to permit rotation thereof when the magnetic tape cartridge is to be
`used, wherein the improvement comprises that
`the reel stopper means comprises a braking member which is movable between a
`locking position where it is in contact with the reel to restrict rotation of the reel and a
`releasing position where it is away from the reel to permit rotation of the same,
`
`an urging member which urges the braking member toward the locking position, and
`a releasing member which is rotated integrally with the reel and moves the braking
`member toward the releasing position in response to a reel chucking action of the reel
`drive means of a tape drive, and
`the braking member is provided with a braking gear which is adapted to be engaged, to
`restrict rotation of the reel, with an engagement gear tooth on an engagement projection
`formed on the reel
`while the reel is provided with a guide member which centers the braking member with
`respect to the reel.
`
`[P]
`
`[A]
`
`[B]
`[C]
`
`[D]
`
`[E]
`
`Ex. 1001 (‘905 Patent) at Claim 1.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`
`
`Claim 2
`
`[P]
`[A]
`
`2. A magnetic tape cartridge as defined in claim 1
`in which the guide member comprises guide ribs which are formed on the inner
`surface of the reel hub at at least three places, each having an inclined surface
`which inclines downward from the upper portion of the inner surface of the reel
`hub toward the center of the reel.
`
`‘905 Patent at Claim 2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`
`
`Claim 3
`
`3. A magnetic tape cartridge comprising a magnetic tape wound around a single reel, a
`cartridge casing in which the reel is housed for rotation and a reel stopper means which
`locks the reel not to rotate when the magnetic tape cartridge is not being used and
`releases the reel to permit rotation thereof when the magnetic tape cartridge is to be
`used, wherein the improvement comprises that
`the reel stopper means comprises a braking member which is movable between a
`locking position where it is in contact with the reel to restrict rotation of the reel and a
`releasing position where it is away from the reel to permit rotation of the same,
`an urging member which urges the braking member toward the locking position, and
`a releasing member which is rotated integrally with the reel and moves the braking
`member toward the releasing position in response to a reel chucking action of the reel
`drive means of a tape drive, and
`the braking member is provided with a braking gear which is adapted to be engaged, to
`restrict rotation of the reel, with an engagement gear on an engagement projection
`formed on the reel,
`the outer diameter of the engagement gear being larger than that of the braking gear.
`
`[P]
`
`[A]
`
`[B]
`[C]
`
`[D]
`
`[E]
`
`‘905 Patent at Claim 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
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`
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`U.S. PAT. NO. 6,462,905 I.B
`
`IPR2017‐01356 (USP 7.016,137)
`
`|.B
`
`B.
`
`U.S. PAT. NO. 6,462,905
`
`BACKGROUND
`
`BACKGROUND
`
`8
`
`
`
`PO Response
`
`Background
`
`Vanderheyden Declaration
`
`Paper 21 (POR) at 6-7;
`Ex. 2008 (Vanderheyden Declaration) ¶ 55.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`Background – 3480‐type cartridge
`Introduction of 3480‐type magnetic cartridge
`
`Vanderheyden Declaration
`
`Paper 21 (POR) at 6-7; Ex. 2010 at 27 (annotated);
`Ex. 2008 at 56.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`
`
`Background – 3480‐type cartridge
`Vanderheyden Declaration
`
`Brake Button
`
`Paper 21 (POR) at 6-7; Ex. 2010 at 27 (annotated);
`Ex. 2008 at 59-61.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`
`
`Background – LTO‐type cartridge
`Vanderheyden Declaration
`
`Braking Member
`
`Releasing Member
`
`Paper 21 (POR) at 9; ‘905 Patent at Fig. 2 (annotated);
`Ex. 2008 at 65.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`
`
`U.S. PAT. NO. 6,462,905 I.C
`
`IPR2017‐01356 (USP 7.016,137)
`
`U.S. PAT. NO. 6,462,905
`
`OVERVIEW
`
`C.
`
`OVERVIEW
`
`|.C
`
`C.
`
`13
`
`
`
`Overview of `905 Patent
`
`Vanderheyden Declaration
`
`‘905 Patent at 1:58-65 and Fig. 5; Ex. 2008 ¶ 74.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`
`
`Overview of `905 Patent
`
`Vanderheyden Declaration
`
`‘905 Patent at 2:40-45; Ex. 2008 ¶ 78.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`15
`
`
`
`Overview of `905 Patent – Claim 1
`
`Guide Member
`
`Braking Member
`
`Vanderheyden Declaration
`
`a guide member which centers the
`braking member with respect to the reel.
`
`‘905 Patent at claim 1 and FIG. 2; Ex. 2008 ¶ 79.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`
`
`Overview of `905 Patent – Claim 2
`
`Reel Hub
`
`Guide Rib
`
`guide ribs … having an inclined surface
`which inclines downward from the upper
`portion of the inner surface of the reel
`hub toward the center of the reel.
`
`Guide Rib
`
`Vanderheyden Declaration
`
`‘905 Patent at claim 2 and FIGs. 2 & 3; Ex. 2008 ¶ 82, 83.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`
`
`Overview of `905 Patent – Claim 3
`Diameter of Braking Gear
`
`Diameter of Engagement Gear
`
`an engagement gear on an engagement
`projection formed on the reel, the
`outer diameter of the engagement gear
`being larger than that of the braking
`gear.
`
`‘905 Patent at 2:40-45, FIGs. 2 & 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`
`
`Overview of `905 Patent – Claim 3
``905 Patent
`
`Vanderheyden Declaration
`
`‘905 Patent at 8:44-55; Ex. 2008 (Vanderheyen) ¶ 86, 87.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`
`
`IPR2018-00876
`CLAIMS 1-3 ARE VALID
`
`IPR2017‐01356 (USP 7.016,137)
`
`II
`
`Procedural History
`A.
`Ground 1 – McAllister-I + Laverriere (claims 1 & 2)
`B.
`Ground 2 – McAllister-I (claim 3)
`C.
`D. Ground 3 – McAllister-I + Laverriere (claim 3)
`E.
`Grounds 6 and 7 – Mizutani (claim 3)
`
`20
`
`
`
`IPR2018-00876
`CLAIMS 1-3 ARE VALID II.A
`
`IPR2017‐01356 (USP 7.016,137)
`
`I .A
`
`IPR2018-00876
`I
`PROCEDURAL HISTORY
`
`PROCEDURAL HISTORY
`
`A.
`
`CLAIMS 1-3 ARE VALID
`
`A.
`
`21
`
`
`
`Procedural History
`• Petitioner challenged validity of claims 1‐4 under §§ 102 and 103
`• Trial instituted for claims 1‐4 based on seven grounds:
`1. McAllister‐I and Laverriere (§ 103, Claims 1‐2);
`2. McAllister‐I (§ 102, Claim 3);
`3. McAllister‐I and Laverriere (§ 103, Claim 3);
`4. McAllister‐I (§ 102, Claim 4);
`5. McAllister‐I and McAllister‐II (§ 103, Claim 4);
`6. Mizutani (§ 102, Claim 3); and
`7. Mizutani (§ 103, Claim 3).
`• Claim 4 disclaimed under 35 U.S.C. 253(a) – Grounds 4 and 5 are
`moot
`
`See Institution Decision, Paper 13; Exhibit 2016.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`
`
`References Already Considered by PTO
`
`McAllister-I
`
`Laverriere
`
`See Preliminary PO Response, Paper 8 at 13‐14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`
`
`Related Proceeding
`
`•
`
`Initial Determination at ITC, Inv. No. 337‐TA‐1076:
`
`PO Response, Paper 21 at 4‐6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`
`
`Related Proceeding
`With regards to claim 1:
`
`With regards to claim 2:
`
`“without the benefit of hindsight”
`
`See Ex. 2009 at 135-36.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`“has not established . . . a POSA
`would be motivated to combine”
`
`
`
`Related Proceeding
`With regards to claim 3:
`
`“the drawings . . . do not
`disclose a difference in the
`relative sizes of the
`engagement and braking gear”
`
`See Ex. 2009 at 140-42.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`
`
`IPR2018-00876
`CLAIMS 1 AND 2 ARE VALID II.B
`
`IPR2017‐01356 (USP 7.016,137)
`
`B.
`
`Ground 1 – McAllister-I + Laverriere (§ 103)
`
`27
`
`
`
`Summary of Cited Art – McAllister‐I
`
`Locking Post
`
`Locking Gear
`
`Ex. 1005 at 1:34-48, 3:14, Fig. 2B; Ex. 2010 at 27.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`
`
`Summary of Cited Art – Laverriere
`
`Projecting Means
`
`Brake Button
`
`Ex. 1007 at 4:55 – 5:5 and Fig. 3 (annotated); Ex. 2008 ¶ 152. DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`McAllister‐I
`• McAllister-I explicitly teaches away from Laverriere
`Vanderheyden Declaration
`
`IBM 3480
`
`Laverriere
`
`Ex. 2008 ¶ 129; Ex. 1005 at 1:1-49.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Petitioner’s expert acknowledged McAllister-I teaches away from Laverriere
`Deposition of von Alten
`
`Ex. 2007 at 42:6-14, 45:25 – 46:5, 46:12-15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`
`“teaching away” occurs when the prior art “criticize[s], discredit[s], or…
`discourage[s]” the claimed invention.
`
`In re Fulton, 391 F.3d 1195, 2012 (Fed. Cir. 2004)
`
`“statements [in the prior art] regarding users preferring other forms of
`switches are relevant to a finding regarding whether a skilled artisan would
`be motivated to combine.”
`Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1052 (Fed. Cir. 2016)
`
`POR at 30-31.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Proposed combination of McAllister-I and Laverriere would change the
`principle of operation and inhibit intended purpose of McAllister-I
`Laverriere
`Vanderheyden Declaration
`
`Projecting Means
`
`Brake Button
`
`Ex. 1007 at 4:55 - 52:2, 5:49-54, and Fig. 3;
`Ex. 2008 at 156-157.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`
`
`•
`
`Ground 1 – McAllister‐I + Laverriere
`“Other publications filed around the priority date of McAllister-I . . . further
`show that a POSA would not look to combine the projecting means 70 of
`Laverriere with an LTO-type cartridge described in McAllister-I” (Ex. 2008
`(Vanderheyden) ¶ 158)
`
`Vanderheyden
`Declaration
`
`Ex. 2002 at 1:60-67; Ex. 2008 at 156-157.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Third Party Patent (Shima, Ex. 2002) discloses “smooth release of the brake
`is sometimes impossible because . . . brake lock 5 catches a sloped rib 72”
`
`Shima, Ex. 2002
`
`Projecting Means
`
`Brake Lock
`
`Ex. 2002 at 1:60-67.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Adding projecting means 70 of Laverriere would require substantial
`reconstruction and redesign of the McAllister-I cartridge
`Vanderheyden Declaration
`
`Deposition of von Alten
`
`Ex. 2008 ¶ 163; Ex. 2007 at 83:1-7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`
`Rationale to support a conclusion that the claim would have been obvious is
`that “a person of ordinary skill
`in the art would have been motivated to
`combine the prior art to achieve the claimed invention and whether there
`would have been a reasonable expectation of success in doing so.”
`DyStar Textilfarben GmbH & Co. Deutschland KG v.
`C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)
`
`the elements shown in [the
`“substantial reconstruction and redesign of
`primary reference] as well as a change in the basic principle under which the
`[primary reference] construction was designed to operate” would not have
`been obvious.
`
`In re Ratti, 270 F.2d 810, 813 (CCPA 1959)
`
`POR at 36-37.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Projecting means of Laverriere are not “guide members” under Petitioner’s
`proposed construction
`Petition
`
`Projecting Means
`
`Inner surface of hub
`
`POR at 38; 1007 at 4:55 - 52:2, 5:49-54, and Fig. 3;
`Petition at 38-39.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Projecting means of Laverriere are not “guide members” under Petitioner’s
`proposed construction
`
`Vanderheyden Declaration
`
`Ex. POR at 38; 1007 at 4:55 - 52:2, 5:49-54, and Fig. 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Petitioner infers a misalignment problem in McAllister-I and suggests
`adding projecting means of Laverriere “to reduce likelihood” of
`misalignment
`
`Petition
`
`Petition (Paper 2) at 42.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`Interlocking structures 58 and 60 of McAllister-I prevent alleged misalignment
`
`•
`
`McAllister‐I
`
`Male Key Shaped
`Structure
`
`Female Key
`Shaped Structure
`
`Deposition of von Alten
`
`Ex. 1005 at 3:44-51 and Fig. 3 (annotated);
`Ex. 2007 at 53:6-15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Petitioner infers a misalignment problem based on two underlying theories
`
`Deposition of von Alten
`
`POR at 22; Ex. 2007 at 52:11-20, 58:2-16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Petitioner fails to present a consistent theory that clearance in McAllister-I
`causes misalignment
`von Alten Declaration
`
`Deposition of von Alten
`
`Ex. 1004 ¶ 160; Ex. 2007 at 52:11-20; PO Sur-reply at 8-9.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`
`
`•
`
`Ground 1 – McAllister‐I + Laverriere
`“A POSA would not assume that clearance exists between elements, if such a
`clearance or spacing is not explicitly shown in the figures.” (Ex. 2008
`(Vanderheyden) ¶ 133).
`Vanderheyden Declaration
`
`Ex. 2008 at 132-133.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Position of biasing spring further limits McAllister-I to one directional movement
`
`Vanderheyden Declaration
`
`POR at 26; Ex. 2008 at 141-142.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Petitioner responds by providing the following schematic, arguing that the
`spring of McAllister-I increases the risk of misalignment:
`POR Sur‐reply
`
`Vanderheyden Declaration
`
`Petitioner’s Reply at 7; Ex. 1034 ¶ 33; PO Sur-reply at 7-8;
`Ex. 2008 at 142.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`46
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Petitioner presents new argument in its Reply that FIG. 3 of McAllister-I depicts
`clearance and causes misalignment
`Petitioner Reply
`
`PO Sur‐reply
`
`PO Sur-reply at 9-10; Petition at 53; Petitioner Reply at 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• Petitioner responds that its own expert’s admission of a “tight fit” was
`hypothetical
`Petitioner Reply
`
`PO Sur‐reply
`
`Pet. Reply, Paper 25 at 4; PO Sur-reply, Paper 29 at 5-6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`
`
`Ground 1 – McAllister‐I + Laverriere
`• McAllister-I does not disclose any misalignment during assembly or use
`PO Sur‐reply
`
`McAllister‐I
`
`Deposition of Vanderheyden
`
`PO Sur-reply at 11; Ex. 1005 at 3:44-51; Ex. 1037 at 80:4-12. DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
`
`IPR2018-00876
`CLAIM 3 IS VALID II.C
`
`IPR2017‐01356 (USP 7.016,137)
`
`C.
`
`Ground 2 – McAllister-I (§ 102)
`
`50
`
`
`
`Claim 3
`
`3. A magnetic tape cartridge comprising a magnetic tape wound around a single reel, a
`cartridge casing in which the reel is housed for rotation and a reel stopper means which
`locks the reel not to rotate when the magnetic tape cartridge is not being used and
`releases the reel to permit rotation thereof when the magnetic tape cartridge is to be
`used, wherein the improvement comprises that
`the reel stopper means comprises a braking member which is movable between a
`locking position where it is in contact with the reel to restrict rotation of the reel and a
`releasing position where it is away from the reel to permit rotation of the same,
`an urging member which urges the braking member toward the locking position, and
`a releasing member which is rotated integrally with the reel and moves the braking
`member toward the releasing position in response to a reel chucking action of the reel
`drive means of a tape drive, and
`the braking member is provided with a braking gear which is adapted to be engaged, to
`restrict rotation of the reel, with an engagement gear on an engagement projection
`formed on the reel,
`the outer diameter of the engagement gear being larger than that of the braking gear.
`
`[P]
`
`[A]
`
`[B]
`[C]
`
`[D]
`
`[E]
`
`‘905 Patent at Claim 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`
`
`Ground 2 – McAllister‐I
`• McAllister-I specification is silent as to the dimensions of the engagement
`gear and braking gear
`Deposition of von Alten
`
`Ex. 2007 at 106:7-22.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`
`
`Ground 2 – McAllister‐I
`
`is well established that patent drawings do not define the precise
`“[i]t
`proportions of the elements and may not be relied on to show particular sizes
`if the specification is completely silent on the issue.”
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222
`F.3d 951, 956 (Fed. Cir. 2000)
`
`“Patent drawings are not working drawings and this argument is predicated,
`moreover, on a greatly enlarged section of a small drawing obviously never
`intended to show the dimensions of anything.”
`In re Wilson, 312 F.2D 449, 454 (CCPA 1963)
`
`“[A]mbiguous references do not, as a matter of law, anticipate a claim.”
`
`Wasica Fin. GmbH v. Continental Auto. Sys.,
`Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017)
`
`POR at 3, 42.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`53
`
`
`
`Ground 2 – McAllister‐I
`
`[a] straight line segment passing through
`the center of a figure, esp. a circle or
`sphere, and terminating at the periphery
`
`POR at 41; Ex. 2006.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`
`
`Ground 2 – McAllister‐I
`• McAllister-I figures do not show an outer diameter of locking posts 44 (first
`embodiment) or gear teeth 45 (second embodiment)
`
`von Alten Original Declaration
`
`Ex. 1004 ¶ 228.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`
`
`Ground 2 – McAllister‐I
`• McAllister-I figures do not show an outer diameter of locking posts 44 or
`gear teeth 45
`
`Deposition of von Alten
`
`Ex. 2007 at 111:5-13;
`Ex. 1004 ¶ 239 (annotating Ex. 1005 at Fig. 9).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`56
`
`
`
`Ground 2 – McAllister‐I
`• McAllister-I figures do not show an outer diameter of locking posts 44 or
`gear teeth 45
`von Alten’s “Clarified” Testimony
`
`Petitioner Reply at 16, FN 7;
`Ex. 1004 ¶ 239 (annotating Ex. 1005 at Fig. 8).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`57
`
`
`
`Ground 2 – McAllister‐I
`• von Alten’s “Clarified” Testimony has the same deficiencies
`
`Vanderheyden Declaration
`
`Deposition of von Alten
`
`Ex. 2008 at ¶ 187;
`Ex. 1004 ¶ 239 (annotating Ex. 1005 at Fig. 8);
`Ex. 2007 at 116:18-25.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`58
`
`
`
`Ground 2 – McAllister‐I
`•
`In Reply, Sony relies on a different embodiment
`PO Sur‐reply
`
`Petition
`
`Deposition of von Alten
`
`PO Sur-reply at 17; Ex. 2007 at 117:13 – 118:3;
`Pet. Reply at 13 (annotating Ex. 1005 at Figs. 3 and 4A);
`Pet. at 57-58.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`
`
`Ground 2 – McAllister‐I
`von Alten Reply Declaration
`
`von Alten Reply Declaration
`
`Ex. 1033 ¶ 48, 51.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`60
`
`
`
`Ground 2 – McAllister‐I
`
`Ambiguous references do not anticipate a claim.
`Wasica Fin. GmbH v. Continental Auto. Sys., Inc, 853 F.3d 1272, 1284 (Fed. Cir. 2017)
`
`“In relying upon the theory of inherency, [Petitioner] must provide a basis in
`fact and/or technical reasoning to reasonably support the determination that
`the allegedly inherent characteristic necessarily flows from the teachings of
`the applied prior art.”
`
`Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)
`
`PO Sur-reply at 18.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`61
`
`
`
`Ground 2 – McAllister‐I
`“[I]t is well established that patent drawings do not define the precise
`proportions of the elements and may not be relied on to show particular sizes
`if the specification is completely silent on the issue.”
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000).
`
`PO Response
`
`PO Response at 47-48.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`62
`
`
`
`Ground 2 – McAllister‐I
`
`PO Response
`
`Presidio Components v. Am.
`Tech. Ceramics
`
`Becton, Dickinson v. One
`StockDuq Holdings
`
`Clariant Corp. v. CSP Techs., Inc
`
`PO Response at 47-48.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`63
`
`
`
`IPR2018-00876
`CLAIM 3 IS VALID II.D
`
`IPR2017‐01356 (USP 7.016,137)
`
`D.
`
`Ground 3 – McAllister-I + Laverriere (§ 103)
`
`64
`
`
`
`Claim 3
`
`3. A magnetic tape cartridge comprising a magnetic tape wound around a single reel, a
`cartridge casing in which the reel is housed for rotation and a reel stopper means which
`locks the reel not to rotate when the magnetic tape cartridge is not being used and
`releases the reel to permit rotation thereof when the magnetic tape cartridge is to be
`used, wherein the improvement comprises that
`the reel stopper means comprises a braking member which is movable between a
`locking position where it is in contact with the reel to restrict rotation of the reel and a
`releasing position where it is away from the reel to permit rotation of the same,
`an urging member which urges the braking member toward the locking position, and
`a releasing member which is rotated integrally with the reel and moves the braking
`member toward the releasing position in response to a reel chucking action of the reel
`drive means of a tape drive, and
`the braking member is provided with a braking gear which is adapted to be engaged, to
`restrict rotation of the reel, with an engagement gear on an engagement projection
`formed on the reel,
`the outer diameter of the engagement gear being larger than that of the braking gear.
`
`[P]
`
`[A]
`
`[B]
`[C]
`
`[D]
`
`[E]
`
`‘905 Patent at Claim 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`65
`
`
`
`Ground 3 – McAllister‐I + Laverriere
`• Petitioner’s motivation to combine McAllister-I and Laverriere is deficient
`for the same reasons Ground 1 is deficient
`
`Petition
`
`Pet. at 64.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`66
`
`
`
`Ground 3 – McAllister‐I + Laverriere
`• Neither McAllister-I nor Laverriere disclose or suggest the outer diameter of
`the engagement gear being larger than that of the braking gear
`
`Deposition of von Alten
`
`Ex. 2007 at 122:3-7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`67
`
`
`
`Ground 3 – McAllister‐I + Laverriere
`• McAllister-I + Laverriere would not lead a POSA to position the projections
`outside the locking posts
`
`Vanderheyden Declaration
`
`von Alten Declaration
`
`Ex. 1004 ¶ 253; Ex. 2008 ¶ 199.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`68
`
`
`
`Ground 3 – McAllister‐I + Laverriere
`Petitioner's Reply
`
`Deposition of Vanderheyden
`
`Pet. Reply at 18; Ex. 1037 at 105:1-15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`69
`
`
`
`IPR2018-00876
`CLAIM 3 IS VALID II.E
`
`IPR2017‐01356 (USP 7.016,137)
`
`E.
`
`Grounds 6 and 7 – Mizutani (§102/ §103)
`
`70
`
`
`
`Summary of Cited Art – Mizutani
`
`Lock Teeth
`
`Lock Teeth
`
`Ex. 1006 ¶ 11, Abstract, and Figs. 1 and 5 (annotated).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`71
`
`
`
`Ground 6 (§102) – Mizutani
`• Mizutani specification does not disclose or suggest the outer diameters of
`lock teeth 24 and 25
`
`Deposition of von Alten
`
`Ex. 2007 at 125:18-21.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`72
`
`
`
`Ground 6 (§102) – Mizutani
`• Petitioner relies solely on the figures of Mizutani
`Vanderheyden Declaration
`
`Deposition of von Alten
`
`Ex. 2008 ¶ 206; Ex. 2007 at 127:8-20; FIG. 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`73
`
`
`
`Ground 6 (§102) – Mizutani
`• Mizutani does not disclose an engagement gear tooth on an engagement
`projection formed on the reel
`Vanderheyden Declaration
`
`• Fig. 6 illustrates a different embodiment than Figs. 1-4 of Mizutani.
`
`Ex. 2008 ¶ 222; Ex. 1006 ¶ 31, Fig. 6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`74
`
`
`
`Ground 7 (§103) – Mizutani
`• Petitioner fails to provide any evidence for why a person of skill in the art
`would have modified the lock teeth of Mizutani to have different diameters
`
`Vanderheyden Declaration
`
`Deposition of von Alten
`
`Ex. 2007 at 118:17-25, 119:13-18; Ex. 2008 at 213.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`75
`
`
`
`Ground 7 (§103) – Mizutani
`• Petitioner argues that motivation exists because lock teeth 25 are located
`on inner diameter of reel hub
`
`von Alten Declaration
`
`Deposition of von Alten
`
`Ex. 1004 ¶ 350; Ex. 2007 at 134:11-17.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`76
`
`
`
`Ground 7 (§103) – Mizutani
`• A POSA would not have placed lock teeth 25 on the inner diameter of the
`reel hub
`Vanderheyden Declaration
`
`Ex. 2008 ¶ 220; Ex. 1006 at Figs. 1 and 5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`77
`
`
`
`Ground 7 (§103) – Mizutani
`• Vanderheyden cites to two references confirming that thickness variation and
`non-uniform pressure distribution were well known in the industry
`
`Ex. 2013 at 1:53-60; Ex. 2014 at 1:56-2:9.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`78
`
`
`
`IPR2018-00877
`CLAIMS 1-3 ARE VALID
`
`IPR2017‐01356 (USP 7.016,137)
`
`III
`
`Procedural History
`A.
`Ground 1 – Morita-I + Morita-II (claims 1 and 2)
`B.
`Ground 2 – Morita-I + Morita-II + Laverriere (claims 1 and 2)
`C.
`D. Grounds 3 and 4 – Tsuyuki (claim 3)
`
`79
`
`
`
`IPR2018-00877
`CLAIMS 1-3 ARE VALID III.A
`
`I
`
`I .A
`
`IPR2017‐01356 (USP 7.016,137)
`
`IPR2018-00877 I
`PROCEDURAL HISTORY
`
`PROCEDURAL HISTORY
`
`A.
`
`CLAIMS 1-3 ARE VALID
`
`A.
`
`80
`
`
`
`Procedural History
`• Petitioner challenged validity of claims 1‐4 under §§ 102 and 103
`• Trial instituted for claims 1‐4 based on six grounds:
`1. Morita‐I and Morita‐II (§ 103, Claim 1);
`2. Morita‐I, Morita‐II, and Laverriere (§ 103, Claim 2);
`3. Tsuyuki (§ 102, Claim 3); and
`4. Tsuyuki (§ 103, Claim 3).
`5. Morita‐II (§ 103, Claim 4)
`6. Morita‐II and Betzler (§ 103, Claim 4)
`• Claim 4 disclaimed under 35 U.S.C. 253(a) – grounds 5 and 6 are
`moot
`
`See Paper 10 (Institution Decision); PO Response, Paper 17 at 3‐4;
`Exhibit 2016.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`81
`
`
`
`References Already Considered by PTO
`
`Morita-II
`
`Laverriere
`
`See PO Response at 18‐19.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`82
`
`
`
`Related Proceeding
`Initial Determination at ITC, Inv. No. 337-TA-1076:
`
`See Ex. 2009 at 138‐39; PO Response at 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`83
`
`
`
`IPR2018-00877
`CLAIM 1 IS VALID III.B
`
`IPR2017‐01356 (USP 7.016,137)
`
`B.
`
`Ground 1 – Morita-I + Morita-II (§103)
`
`84
`
`
`
`Summary of Cited Art – Morita‐I
`
`Morita‐I
`
`Brake Button
`
`Brake Button Gear
`
`Guide Surface
`
`Brake Gear
`
`PO Response at 23 (Ex. 1010 at Fig. 1 (annotated));
`Ex. 1010 at 8.
`
`Brake Release Member
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`85
`
`
`
`Summary of Cited Art – Morita‐II
`
`Push Rods
`
`Holes
`
`Arms
`
`Disc Portion
`
`PO Response at 25 (Ex. 1014 at Fig. 8 (annotated));
`Ex. 1010 at 8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`86
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Designs of Morita-I and Morita-II cartridges are divergent and incompatible
`
`Vanderheyden Declaration
`
`Deposition of von Alten
`
`Ex. 2008 ¶ 228; Ex. 2007 at 84:24 – 85:5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`87
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Petitioner’s proposed modification would require a substantial redesign that
`would change the basic operation of Morita-I
`PO Sur‐reply
`
`PO Sur-reply at 9; Pet. at 48 (Ex. 1010 at Fig. 1 (annotated));
`Ex. 1004 ¶ 371 (Ex. 1011 at Fig. 8 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`88
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Petitioner’s own expert acknowledged that numerous design changes to
`the Morita-I cartridge would be required
`
`Deposition of von Alten
`
`PO Sur-reply at 10; Ex. 2007 at 90:18-20, 93:9-14,
`94:10-13, and 95:22-96:15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`89
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Numerous changes would change the basic principle of operation of
`Morita-I
`
`Vanderheyden Declaration
`
`PO Sur-reply at 11; Ex. 2008 at 244-245.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`90
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`
`the elements shown in [the
`“substantial reconstruction and redesign of
`primary reference] as well as a change in the basic principle under which the
`[primary reference] construction was designed to operate” would not have
`been obvious.
`
`In re Ratti, 270 F.2d 810, 813 (CCPA 1959)
`
`PO Sur-reply at 9.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`91
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Petitioner suggests modifying the cartridge of Morita-I to incorporate the
`reel stopper means of Morita-II to prevent dirt from entering the cartridge
`Petition
`
`Pet. at 47, 48 (Ex. 1010 at Fig. 1 (annotated));
`Ex. 1004 ¶ 371 (Ex. 1011 at Fig. 8 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`92
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Morita-II explicitly teaches away from the cartridge casing of Morita-I
`
`Morita‐II
`
`Morita‐I
`
`Upper Shell (Casing)
`
`Ex. 1011 ¶ 4, 5;
`Pet. at 48 (Ex. 1010 at Fig. 1 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`93
`
`Lower Shell (Casing)
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Dust and dirt problem would not have lead a person of ordinary skill in the
`art to use Morita-I cartridge shell design, as proposed by Petitioner
`
`Deposition of von Alten
`
`Vanderheyden Declaration
`
`Lower Shell (Casing)
`
`Opening
`
`Ex. 2007 at 86:23 – 87:3; Ex. 2008 ¶ 238;
`Pet. at 48 (Ex. 1010 at Fig. 1 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`94
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Combining Morita-I and Morita-II would not have solved the dirt and dust
`problem
`
`Vanderheyden Declaration
`
`Ex. 2008 ¶ 241; Pet. at 48 (Ex. 1010 at Fig. 1 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`95
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Petitioner proposes a NEW combination in its Reply
`PO’s Sur‐reply
`
`Petitioner’s Reply
`
`PO Sur-reply, Paper 25 at 4; Pet. Reply, Paper 21 at 5;
`Pet. at 48 (Ex. 1010 at Fig. 1 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`96
`
`Lower Shell (Casing)
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`Vanderheyden Declaration
`
`Sloped Bevel Gear
`
`PO Sur-reply at 8; Ex. 2008 at 239-242;
`PO Response at 23 (Ex. 1010 at Fig. 1 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`97
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`
`Improper to use the claimed invention “as [a] roadmap for putting … pieces
`of a ‘jigsaw puzzle’ together.”
`In Touch Techs., Inc., v. Vgo Comms., Inc., 751 F.3d 1327, 1351-52 (Fed. Cir. 2014)
`
`PO Sur-reply at 8;
`Pet. at 48 (Ex. 1010 at Fig. 1 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`98
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Morita-I and Morita-II fails to disclose “a guide member which centers the
`braking member with respect to the reel,” as recited in claim 1
`PO Sur‐reply
`
`Petitioner Reply
`
`Guide Surface
`
`PO Sur-reply at 12; Pet. Reply at 10;
`PO Response at 23 (Ex. 1010 at Fig. 1 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`99
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Guide surface 17 simply guides brake gear 8 to brake gear 7
`
`Morita‐I
`
`Guide Surface
`
`Brake Gear
`
`Ex. 1010 at 8;
`PO Response at 23 (Ex. 1010 at Fig. 1 (annotated)).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`100
`
`
`
`Ground 1 – Morita‐I + Morita‐II
`• Petitioner’s proposed combination would not center the braking member
`with respect to the reel
`
`PO Sur‐reply
`
`PO Sur-reply at 13.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`101
`
`
`
`IPR2018-00877
`CLAIM 2 IS VALID III.C
`
`IPR2017‐01356 (USP 7.016,137)
`
`Ground 2 – Morita-I + Morita-II + Laverriere
`C.
`(§103)
`
`102
`
`
`
`Summary of Cited Art – Laverriere
`
`Projecting Means
`
`Brake Button
`
`Ex. 1007 at 4:55 – 5:5 and Fig. 3 (annotated); Ex. 2008 ¶ 152. DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`103
`
`
`
`
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