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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00877
`Patent 6,462,905 B1
`____________
`
`Record of Oral Hearing
`Held: June 21, 2019
`____________
`
`
`
`Before SALLY C. MEDLEY, GREGG I. ANDERSON, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`
`
`Case IPR2018-00877
`Patent 6,462,905 B1
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`RICHARD F. GIUNTA, ESQUIRE
`NATHAN R. SPEED, ESQUIRE
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, Massachusetts 02210
`617-646-8000
`rich.giunta@wolfgreenfield.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ELIOT D. WILLIAMS, ESQUIRE
`Baker Botts, LLP
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`650-739-7511
`eliot.williams@bakerbotts.com
`
`MARGARET M. WELSH, ESQUIRE
`Baker Botts, LLP
`30 Rockefeller Plaza
`New York, New York 10112-4498
`212-408-2541
`margaretwelsh@bakerbotts.com
`
`
`
`
`The above-entitled matter came on for hearing on Friday, June 21,
`
`2019, commencing at 2:39 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`Case IPR2018-00877
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`P R O C E E D I N G S
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`JUDGE MEDLEY: Okay. Good afternoon. This is the Hearing for
`IPR 2018-00877; Sony Corporation v. Fujifilm Corporation, involving U.S.
`Patent Number 6,462,905.
`At this time we'd like the parties to please introduce Counsel for the
`record, since this is a separate transcript we need to go through this again.
`So, please, Petitioner?
`MR. SPEED: Nathan Speed on behalf of the Petitioner, Sony
`Corporation; with Richard Giunta, both from Wolf, Greenfield and Sacks.
`JUDGE MEDLEY: Thank you.
`MR. WILLIAMS: Your Honor, Eliot Williams of Baker Botts for the
`Patent Owner, and with me today is Margaret Welsh, also of Baker Botts.
`JUDGE MEDLEY: Thank you. Each party has 45 minutes total time
`to present arguments. Petitioner will proceed first to present its case with
`respect to the challenge claims and grounds for which the Board instituted a
`trial, and may reserve some of its argument time to respond to arguments
`presented by Patent Owner. Thereafter, Patent Owner will respond to
`Petitioner's presentation and may reserve argument time for surrebuttal.
`Petitioner, would you like to reserve time?
`MR. SPEED: I'd like to reserve 10 minutes.
`JUDGE MEDLEY: Ten minutes, okay. And Patent Owner, would
`you like to reserve time?
`MR. WILLIAMS: Two minutes, Your Honor.
`JUDGE MEDLEY: Okay. Thank you. All right. We'd like to
`remind the parties that this hearing is open to the public and the transcript
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`will be entered into the public record of the proceeding. Petitioner, you may
`begin.
`MR. SPEED: Thank you, Your Honors. Beginning on slide 61, for
`this trial there are four grounds in the 877 Trial, challenging the same
`claims, claims 1 and 2, and claim 3. The first grounds relate to the Morita I
`and Morita II obvious combinations, and grounds 3 and 4 relate to the
`primary reference, Tsuyuki, either as an anticipatory reference in ground 3,
`or as a single of obviousness combination in ground 4.
`So, starting with ground 1, Morita I plus Morita II, if we turn to slide
`62, we'll see what should be familiar at this point to the Board, an image of a
`brake button type cartridge. This is the Morita I cartridge, it has the brake
`button which we've highlighted in yellow on slide 62, and this is from our
`petition 44, you could see the brake in Figure 1 is in the disengaged state, so
`that the reel can rotate, and in Figure 2 it's in the engaged state, so the brake
`has come down and it's engaged a gear on the reel that restricts the cartridge
`from rotating.
`Now, Morita I, if we turn to slide 63, Morita 1 identifies a problem in
`the art which is that the engagement between the projecting -- the meeting
`projections of this cartridge which we've highlighted on slide 63, the top left
`from our petition at page 63 as well. There's a looseness of engagement
`between those projections, which, Morita I, at pages 7 and 8, explains that
`looseness of engagement causes the brake button to misalign, or tilt and be
`off-centered in the cartridge.
`Morita I proposes a solution for this; and Morita I, I should point out,
`is issued a decade before 905 Patent was published -- or applied for. The
`Morita I solution is what they call a Guide Surface 17, it guides the beveled
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`gear of the brake button into the center of the reel, and so the guide surface
`guides the brake to the center of the reel, and in doing so it resolves the
`problem that Morita I identifies. It acts essentially as a funnel, very similar
`to the guide members of the 905 Patent.
`Turning to slide 64, Morita II issued, and identified a problem with
`the Morita I design, which is namely that when the spindle on the drive
`pushes up on the Morita I brake button, it creates a gap in that central
`opening that allows dust and debris to enter inside the cartridge, and that's
`bad. And we've made an annotation of that from our petition at page 45, and
`it's shown on slide 64.
`At slide 65, we see the solution that Morita II teaches. Morita II says:
`the solution to this problem of the older Morita I design, is to remove its
`locking mechanism and use a new style locking mechanism which is the
`LTO type design, that's shown in Figure 7 on slide 65, and we've annotated
`it, and it's from our petition at 46.
`Their expert agrees that it was known in the art that to avoid the
`problem of getting dirt into the cartridge that was in present in Morita I, you
`would replace the locking mechanism of Morita -- you would replace the
`older locking mechanism with the new LTO type design.
`The advantage there is that it removes the hole of the center of the
`reel. Rather than have a large central hole that needs to be pressed through
`which a spindle, the tape drive needs to enter, you have three smaller holes
`around the reel where the legs of the spider washer, that we discussed
`earlier, can extend into those holes, and they are pushed up by the gear teeth,
`but at all times a portion of the leg remains in the hole so it effectively
`blocks it.
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`So, you’ve gone from a brake design in which there is a potential for
`dust to go in because there's opening to one in which that potentially has
`disappeared, or have been eliminated, because of the use of this release --
`spider washer or triangular release member, which we've highlighted in
`orange on the annotated Figure on slide 65.
`Based on that, at pages 47 to 48 of our petition, we set forth various
`reasons why a person of skill in the art would have taken the Morita II
`locking mechanism, which they call "reel stopper means" and put that into
`the Morita I cartridge to substitute out of the Morita I cartridge, its locking
`mechanism with the locking mechanism of Morita II.
`First, there's and explicit teaching of Morita II, Morita II is explicitly
`saying: the mechanism -- the locking mechanism in Morita I is problematic,
`we've come up with a new solution which is our blocking mechanism. And
`so, it's giving explicit motivation to a person of skill in the art, an engineer
`with years designing these cartridges, to take the new locking mechanism
`and locking mechanism and placing it in Morita I.
`Second, using the Morita II reel stop mechanism is simply a point of
`known technique, a means for locking a reel to a known device, a known
`cartridge to yield a predictable result, a cartridge in which the entrance of
`dirt is prevented.
`And third, using the locking mechanism, is nothing more than a
`known technique, again, a means for locking a reel that the improved one
`device, Morita II, to improve another device, Morita I, in the same way.
`Those are the rationales that we identified in the petition.
`On slide 67, in the Patent Owner response, at 26, and at paragraph 237
`of their expert declaration, they agreed that a person of skill in the art
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`reading Morita I, or reading Morita II, would come to one, what they call the
`only logical conclusion, which would be to use a closed LTO-type cartridge.
`What makes an LTO type cartridge closed is its use of the reel stopper
`means of Morita II.
`So, that's the only logical conclusion. Respectfully, we submit that is
`-- that's what we're saying, with Morita II, the only conclusion is to use its
`locking mechanism in the cartridge of Morita I.
`If we turn to slide 68, we can see there's no dispute between the
`parties that Morita II's locking mechanism discloses all of the conventional
`elements of the claims, the braking member, the urging member, releasing
`member and engagement projection.
`Indeed, Morita II actually uses the exact same terminology, and we
`have that annotated image from our petition at 14. So, the question
`becomes, well, is there a guide member in this combination, and there is, it's
`the guide surface.
`Again, turning to slide 69, you could see a paragraph from our expert
`declaration, paragraphs 416 to 418, he explained that the function of the
`guide member on the route proposed construction, it centers the braking
`member with respect to the reel, he points out numerous disclosures in 417
`of Morita I which describes the function of the guide surface as being
`exactly that.
`We've highlighted here at page 8, it states that the guide surface
`guides the beveled gear portion in line with the brake button to the center of
`the reel. That is the claim function of the guide member.
`Turning to slide 70: as to structure we admit that the guide surface in
`Morita I is a singular surface, it is not multiple ribs with an inclined surface
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`extending down from the upper portion of the reel hub, which is a well
`proposed construction.
`However, as Mr. von Alten explains at paragraph 423, 424, 425 and
`426 of his declaration, the single guide surface of Morita I is an equivalent
`of the structure that we've proposed in our claim construction. First, it
`performs --
`JUDGE ANDERSON: So, what's your view of the claim
`construction? I must have asked you this in the other case.
`MR. SPEED: Yes.
`JUDGE ANDERSON: You know, I've got one more opportunity, so
`here we go, what's the --
`MR. SPEED: So I --
`JUDGE ANDERSON: Go ahead.
`MR. SPEED: Okay. So, my view that the -- we have to kind of take
`ourselves back in time. When the petition was filed the claim construction
`was arguably in dispute between the parties and the ITC, and so we put forth
`the proposed constructions that the parties had either agreed upon, or that the
`Patent Owner in advance of the ITC, at this point there isn't any dispute over
`those terms.
`If the Board were to -- and the critical issue at the time was: are these
`means-plus-function terms, because under the Board regulations if they're
`means-plus-function terms we need to go through and show where the
`structure and the function is of all the prior art.
`And so there is a risk if these -- if we just argued that these are plain
`and ordinary meaning, that the Board could find these to being plus
`functions and we would be found of not met our burden at the petition stage.
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`So we walked through, for release member, or urging member, all the
`different member terms why they could potentially be means-plus-function.
`If the Board were to construe these terms just on their plain and
`ordinary meaning, then we wouldn't need to go through this equivalent
`analysis, because we would submit both in the prior proceeding and in this
`trial that structures that we've identified are a guide member, at a minimum
`they guide a brake towards the center of the reel.
`So, if the Board wanted to go with that, that might be an easier route,
`that's fine, but under our proposed construction, which they haven't
`disagreed with, we also think that the guide surface is at least the equivalent
`structure, because, if I may, it performs the identical function, which I talked
`about, and it does it in substantially the same say, and this is at paragraph
`424 of Mr. von Alten's opening declaration, they both act as a funnel, where
`they have an inclined surface, the brake touches it, and the brake gets moved
`to the center like a funnel.
`And at paragraph 425 he explains that they do -- they have the same
`result which is brake that's centered, so it's the same structure.
`And just to kind of put -- to wrap this up, we moved on -- and we can
`see on slide 71, we pointed out that Laverriere, just prior art, Laverriere at
`column 4 lines 38 to 43, Laverriere explains that in this context when you
`have to center a brake you can use ribs, or you can use a single annular wall,
`yeah, a single surface -- sorry -- a continuous ring.
`So, Laverriere prior art, a person of skill in the art would be aware of
`this, Laverriere is saying that these are interchangeable, and under
`Caterpillar v. Deere, the Federal Circuit is clear that when you have
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`interchangeable structures in the prior art that's irrelevant to the equivalence
`theory.
`So, we have our expert analysis on the equivalence of the two
`structures, and we have Laverriere from -- explaining that those are the two
`types of -- those are equivalent structures.
`Moving to slide 72, there was some suggestion in the Patent Owner
`response, in the surreply that we -- we didn’t explain why a person of skill in
`the art would keep the guide surface in the proposed combination, we did, at
`the petition on page 63, we highlighted the fact that the same type of
`meeting projections that caused a problem in Morita I are present in Morita
`II, it has an annotated image at 63. And I believe the Board actually cited
`this in its institution decision, when explaining why the guide surface would
`remain in the proposed combination.
`As Mr. von Alten explains, at paragraph 414 and 415 of his
`declaration, because the same meeting projections are used, there would be a
`benefit at keeping the guide surface in to makes sure that the brake remains
`centered. I think chiefly because they argue we never made this -- or never
`took this position in the petition, they don't have a response to this. So, there
`is no response here that Morita II somehow has tightly made the projections
`and it's -- and the misalignment that -- the misalignment is not a problem
`with Morita II, there is no argument there.
`We have, Morita I says projections cause the looseness of engagement
`with the projections causing a misalignment problem, the same projection
`just known in Morita II, and that's why you would keep it in the proposed
`combination.
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`Turning to slide 73, the principal argument Fujifilm makes is, look,
`you’ve got Morita II, it's a new design, it's great. You would just use that.
`But there are many references out there, that distinguish or identify the point
`of novelty and say, we're distinguishing over the prior art, and
`unsurprisingly the Federal Circuit has been clear since for decades, that our
`records can both improve upon the prior art and be combined with it.
`You’ve got the Beattie case, in Beattie there was a new system for
`musical notations, which I'll confess, I don't know too much about musical
`notations, but there is a new system, it described itself as an improvement
`over the old system, and the Patent Owner took the position where you
`would never take that new system and use it in an older style system.
`Very similar to what Fujifilm's argument is here, and the Federal
`Circuit said, no, you can apply teachings from a new reference to prior art
`that it improves upon. In re Katz says a very similar -- makes a very similar
`argument, and that's cited on -- again on slide 73 of our slides.
`Turning to slide 74, Fujifilm also advances at page 29 and 30 of its
`Patent Owner's response certain design challenges, that would -- well, I
`guess I would just stop there -- certain design challenges. They don't go the
`next step and say, and these design challenges would have been beyond the
`skill of a person of -- an ordinary engineer at the time, whether that would
`take more than routine effort to resolve these challenges, and one reason
`perhaps is because Morita II already resolved these challenges.
`At paragraph -- sorry -- at page 29 of the Patent Owner response, they
`argue that creating holes in the reel for the spider watcher of the release
`member could cause problems.
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`Yet Morita II, if you look at Figure 11 on slide 74, Morita II shows
`those holes and they show it with an inclined surface. So, even when you're
`keeping in the guide surface of Morita I, it was known in the art how to put
`those holes in, in a way that allowed you to use the walking mechanism of
`Morita II without any undue challenger experimentation. It was known in
`the art.
`On 29 to 30 to the Patent Owner response they talk about needing to
`put in a hole in the bottom of the reel, or to remove the hole. Again, that's
`the whole point of Morita II. That was the invention, that's what the locking
`mechanism allowed to occur, is you’ve removed that hole.
`And so, Figure 9, for example, of Morita II, it shows that persons of
`skill in the art, before this patent was filed, knew how to resolve that
`challenge to the extent it is a design challenge.
`And if we turn to slide 75, their expert's deposition at pages 189 to
`190, he agreed that all of the design challenges that he identified, were
`design challenges that were presented to the engineers who developed the
`LTO specification, and designed the LTO cartridge, which I'll note, that's
`Mr. von Alten, our expert, he's the one involved with that design.
`All those challenges had been resolved by the time of the invention.
`And they are all reflected in LTO type prior art, such as Morita II. So, the
`design challenges, to the extent they ever were reel challenges, were
`accomplished and resolved in the prior art.
`And so a person of skill in the art would know that, and they would
`use that teaching from the prior art to implement the invention for the
`proposed combination.
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`And again, on slide 76, just to make it crystal clear, our expert said the
`exact same thing at his ITC deposition, this is Exhibit 2001, and it's page
`264 and 265. He says it will be -- when asked about the modifications that
`were needed to be accomplished, he said straightforward to do. Months later
`when he's deposed in this proceeding, at page 169 of his deposition
`transcript, he again says the exact same thing: it will be relatively
`straightforward, and a person of -- a person would have expectation of
`success, which, it makes all the sense in the world, and it's completely
`supported by the prior art such as Morita II, which shows that persons of
`skill in the art had already resolved these alleged challenges in the art.
`Moving to ground 2, unless there are any questions on ground :
`ground 2 introduces Laverriere simply because, again, with claim 2, claim 2
`recites guide member, but it then recites specific structure for the guide
`member, and so it's no -- we couldn’t deal with structural equivalent analysis
`under 112.6, so we bring in Laverriere, which we've explained earlier has --
`meets all the limitations of our proposed construction for the structure of
`guide member, which is the same as what's recited in claim 2.
`If we turn to slide 78, our argument for this proposed combination is
`that a person of skill in the art, reading Laverriere and that will -- would read
`Laverriere, and at column 4 lines 38 to 43 of Laverriere, again, it says, "You
`can use ribs, or you can use a single guide surface. Preferably you're using
`ribs."
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`And so Laverriere has taught a preference, a design preference for
`ribs, and so a person of skill in the art having made the Morita I and Morita
`II combination would understand that it's preferable to use ribs as opposed to
`an annular surface.
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`Again, we have a finite number of options. Laverriere is giving you
`two, and they're giving a reason to pursue the one we suggest in this
`proposed combination, which is that our proposed combination is the
`preferable design according to Laverriere.
`At slide 79, the suggestions in the Patent Owner responses that it will
`be difficult to put ribs inside the hub, again, Laverriere at column 5, lines 23
`to 27, it's describing the fact that the -- it's minimal modifications, and it
`doesn’t interfere with the assembly or operation of the cartridge.
`So, Laverriere is explaining, look, put our ribs in, it's not difficult to
`do, at paragraph 431 of our expert declaration he said the same thing, this is
`all within the -- would have been within the skill of a person -- of an
`ordinary engineer at the time.
`If I could turn now to claim 3 in Tsuyuki, and we could turn right to
`slide 81: now, in the earlier trial Counsel for Patent Owner suggested that
`what you need is to be able to determine the outer diameter relationship, is a
`cross-section, and that you're facing head-on.
`That's what Mizutani showed in the early trials, also what Tsuyuki
`shows. You have a cross-section here where you can see where the gears
`begin and end. Again, in our in petition at page 81, we added annotations,
`again Fujifilm critiqued the annotations, so in our reply we removed the
`annotations to show that you could see, importantly, that inhibiting gear 27
`goes all the way to the inner surface of the reel hub, and you could see that
`inhibiting gear 41 is somewhat smaller in diameter so that it could fit inside
`that inhibiting gear 27.
`If you turn to slide 82 of our presentation, Mr. von Alten explained
`that these type of gears are somewhat different than the ones we've seen
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`before, these are beveled gears, and he explained that a common way to
`design a bevel gear is for one gear to fit inside the other, and so with that
`understanding, again, persons of skill in the art don't interpret figures in a
`vacuum, with that understanding, looking at these beveled gears, it would
`reinforce his interpretation of the figures as depicting a gear, the braking
`gear fitting inside of the engagement gear.
`And that's shown, in the image from our reply 18, this is Figure 3 I
`believe, where if you have engagement of the two gears, and you could see
`based -- with our highlighting, and if you look at the actual patent itself,
`based on the hashing, where the hashing starts on one, and where it changes
`direction for the other, the inhibiting gear 41 is inside of inhibiting gear 27,
`and thus it must have a smaller diameter by some amount than the inhibiting
`gear 27.
`Again, similar arguments to what we discussed in the prior trial, the
`contention is, because Tsuyuki doesn’t say anything specific about its
`dimensions, whatever is disclosed in the drawings is irrelevant.
`Again, that's inconsistent with Wagner and Mraz, where you have
`Mraz in particular, the limitation at issue was 15-degrees or less, and there
`was no discussion of angles in the patent itself. Yet, the Federal Circuit
`found, or the CCPA, excuse me, found that disclosure in the figures, even
`though there was nothing about angles, they found 15-degrees or less to be
`disclosed.
`That's considerably more precise than what we have here, which is
`simply that the diameter needs to be larger, that the diameter of the gear on
`the bottom needs to be larger.
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`JUDGE ANDERSON: Counsel, refresh my memory. Is there -- I
`should know this, and I probably did at one point. But is there any
`testimony from Mr. von Alten, von Alten that -- I guess he says, and I do
`understand this, that claims 3 would be obvious given what's shown in
`Tsuyuki, or for that manner in the earlier case Morita, right?
`MR. SPEED: Yes, it's so. And in this trial, there's the opinion set for
`in his expert declaration and in our petition that if you don't agree that
`Tsuyuki actually anticipates, it would have been obvious to modify the brake
`such that it was slightly smaller. And we made that same argument with
`Mizutani and the other one, and indeed we made it with McAllister I plus
`Laverriere, all of those are with the same basic engineering motivation
`which is the need to have clearance between that brake and the other
`components in the device, and chiefly the reel hub.
`JUDGE ANDERSON: Okay. So, how does that conform with or --
`well, let's talk about conformed with -- because that's what you wanted to do
`-- with the ITC decision on claim 3?
`MR. SPEED: It conforms neatly. Say, Patent Owner's Counsel was
`correct that the issue there was just McAllister by itself. At the ITC Mr. von
`Alten said -- we didn’t introduce the idea of combining Laverriere and
`having clearance between the ribs and all that -- he just said that if it's not
`shown Figures 4B and 4A, and all those annotated figures we showed you, if
`it's not shown then it would have been obvious to do that, because of -- you
`want clearance again, between the brake and the reel hub.
`The ITC's Commission opinion, roughly said, look, there are only two
`ways you can do this, they discounted it, and I think there's been no dispute
`here on this issue, the idea that you could make the engagement gear to be
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`smaller than the braking gear, no one has ever said that that makes sense.
`So, really you have two ways to design these gears, you make them equal,
`you make one slightly smaller than the other.
`The Commission found that it would have been a simple design
`choice for a person of skill in the art at the time, to make the braking gear in
`McAllister I slightly smaller than its engagement gear to ensure you had
`sufficient operational clearance within the device. So, it's very similar to the
`argument that we are advancing here.
`JUDGE ANDERSON: They relied on McAllister I though?
`MR. SPEED: Yeah, McAllister I all by itself. Yeah, to be clear,
`Tsuyuki, Mizutani, those were not before the ITC, and it was a different -- it
`was the McAllister I by itself at the ITC.
`JUDGE ANDERSON: Okay. Sorry to get a little bit off track, but
`that's very pertinent, I think. Go ahead.
`MR. SPEED: No. I appreciate it, Your Honor. Turning to slide 84,
`again we have the same, the kind of dialogue of the case law, we would
`respectfully submit that the cases support our position, that relational
`limitation such as larger or smaller can be disclosed in patent figures
`themselves, especially when you're given -- you have expert testimony about
`how a person of skill in the art would interpret that, and the expert testimony
`is buttressed by evidence of what a person of skill in the art would know
`about these types of gears, such as a beveled gear in this -- with the Tsuyuki
`reference.
`If we turn to slide 85, this is a -- well, we kind of got ahead of
`ourselves. This is the idea that Tsuyuki would make -- render obvious claim
`3 -- we turn to slide 86 -- again, Tsuyuki uses very similar terminology to
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`Mizutani, it says that the inhibiting gear 27, which is the one on the bottom,
`extends to the outer perimeter of the bottom wall 21-A, all right.
`So, again, outer perimeter of the bottom wall, that's what's depicted in
`Figure 3, it extends all the way, and as Mr. von Alten interpreted and
`explained at paragraph 493, based on that disclosure, based on that figure, a
`person of skill in the art would understand that the inner diameter of the reel
`hub, is the outer diameter of inhibiting gear 27.
`If we turn to slide 87, their expert, at his deposition agreed that Figure
`3 depicts the inhibiting gear as formed on the reel hub 21.
`If we turn to slide 88, the consequence of all this is set forth in the --
`Mr. von Alten's declaration at paragraph 494 and 495, specifically: if the
`inhibiting gear goes all the way to the inner surface of the reel hub, and
`you’ve got a beveled gear above it that needs to come down, that beveled
`gear is going to be somewhat smaller in diameter than the inhibiting gear
`that's below it, otherwise it won't rotate around. That's exactly what he said
`in his opening declaration at paragraphs 494 and 495.
`Again, at slide 89, in this trial, it's while they introduce the DIPS
`Theory, the idea that you can't put any type of material on the hub,
`respectfully, Figure 3, Tsuyuki does that already and has not identified any
`design challenge there at all. So, it's not that we're adding material to the
`hub, it's already there. Even in an alternate world where somehow that
`inhibiting gear 27 doesn’t actually make it all the way to the inner surface of
`the wall, there nonetheless is plenty of material on that reel hub wall.
`So, if there is a reel problem with these DIPS, you would -- it's
`remarkable to think that the prior art is completely silent on this point. And
`the reason for that silence, Mr. von Alten explains at paragraph 68 of his
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`declaration, is this was a known potential issue that could -- engineers could
`routinely resolve.
`And so the person of skill in the art is not an automaton, they're an
`engineer with at least two years of experience designing cartridges. All of
`the references we see in this case where there are material on the inner
`surface, but none of them identify the DIPS as a real concern, or identify any
`solutions to resolving the DIPS, anything of that nature, it's just their expert
`speculation that this would somehow be a challenge and that, then somehow
`persons of skill in the art could not resolve the challenge, even though the
`prior art uniformly shows that they have resolved it.
`The 905 Patent itself, again, has material on its hub, but it doesn’t say
`anything about DIPS, it doesn’t say anything about how it solved that
`potential problem. Their expert agreed that he thought the claims were
`enabled, and so a person of skill in the art reading the 905 Patent should be
`able to design it and manufacture it, but there's no description there of how
`this, the DIPS problem could be resolved.
`Again, if we turn to slide 90, Fujifilm's back-up argument for the
`obviousness says, well, you could just make the two gears equal in design,
`and if you did that, you would just have a little line-to-line fit of the
`inhibiting gear
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