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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 No. TBD
`U.S. Patent No. 6,462,905
`(Claims 1-4)
`_____________
`
`DECLARATION OF THOMAS W. VON ALTEN
`
`
`
`
`
`SONY Exhibit 1004
`SONY v. FUJI
`
`

`

`
`
`TABLE OF CONTENTS
`
`B.
`
`I.
`PERSONAL AND PROFESSIONAL BACKGROUND ............................... 1
`II. MATERIALS CONSIDERED ........................................................................ 3
`III. RELEVANT LEGAL STANDARDS ............................................................. 5
`A. Anticipation ........................................................................................... 6
`B.
`Obviousness ........................................................................................... 6
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART .................................... 9
`V. OVERVIEW OF THE ’905 PATENT .......................................................... 11
`A.
`Technology Overview ......................................................................... 11
`1. Magnetic Tape Cartridges ......................................................... 11
`2.
`The Purported Problems with Magnetic Tape Cartridges ........ 16
`The Three Disclosed Embodiments .................................................... 18
`1.
`The Common and Conventional Elements of the Three
`Embodiments ............................................................................ 19
`The “Improved” Design of Each Embodiment ......................... 23
`2.
`Summary of the Claims ....................................................................... 33
`C.
`Summary of the Prosecution History .................................................. 36
`D.
`VI. CLAIM CONSTRUCTION .......................................................................... 37
`A.
`“reel stopper means” (Claims 1-4) ...................................................... 38
`1.
`Claimed Function ...................................................................... 38
`2.
`Corresponding Structure ........................................................... 39
`The “member” Limitations (Claims 1-4) ............................................ 39
`1.
`“braking member” ..................................................................... 41
`2.
`“urging member”....................................................................... 43
`3.
`“releasing member”................................................................... 43
`4.
`“guide member” ........................................................................ 45
`“reel drive means” – claims 1-4 .......................................................... 46
`1.
`Claimed Function ...................................................................... 46
`2.
`Corresponding Structure ........................................................... 47
`
`B.
`
`C.
`
`
`
`- i -
`
`

`

`B.
`
`C.
`
`D.
`
`E.
`
`
`
`
`
`F.
`G.
`
`Japanese Patent Application Publication H10-90784 (“Mizutani,”
`Ex-1006) .............................................................................................. 51
`European Patent Application Publication 0926676 (“Morita-II,”
`Ex-1011) .............................................................................................. 55
`Japanese Patent Application Publication H11-288571 (“Tsuyuki,”
`Ex-1012) .............................................................................................. 59
`European Patent Application Publication 0284687 (“Laverriere,”
`Ex-1007) .............................................................................................. 63
`U.S. Patent No. 5,927,633 (“McAllister-II,” Ex-1008) ...................... 66
`Japanese Patent Application Publication S63-11776 (“Morita-I,”
`Ex-1010) .............................................................................................. 68
`International Publication WO 99/41513 (“Betzler,” Ex. 1013) ......... 70
`H.
`VIII. SUMMARY OF MY OPINIONS ................................................................. 74
`IX. VALIDITY ANALYSIS OF CLAIMS 1-4 ................................................... 76
`A.
`Claims 1 and 2 Would Have Been Obvious Over McAllister-I in
`view of Laverriere ............................................................................... 76
`1.
`Reasons for Modifying McAllister-I In view of Laverriere ..... 76
`2.
`Limitation-by-Limitation Analysis ........................................... 82
`Claim 3 Is Anticipated by McAllister-I ............................................ 106
`1.
`The McAllister-I Embodiments ..............................................106
`2.
`Limitation-by-Limitation Analysis .........................................107
`Claim 3 Would Have Been Obvious Over McAllister-I In View of
`Laverriere .......................................................................................... 117
`1.
`Reasons for Modifying McAllister-I In View of Laverriere ..117
`2.
`Limitation-By-Limitation Analysis ........................................120
`Claim 4 Is Anticipated by McAllister-I ............................................ 121
`1.
`Patent Owner’s Concessions Concerning McAllister-I ..........121
`2.
`Limitation-by-Limitation Analysis .........................................123
`Claim 4 Would Have Been Obvious Over McAllister-I in View of
`McAllister-II ...................................................................................... 127
`1.
`Reasoning for Modifying McAllister-I in view of McAllister-II
` .................................................................................................127
`Limitation-By-Limitation Analysis ........................................130
`- ii -
`
`B.
`
`C.
`
`D.
`
`E.
`
`2.
`
`

`

`F.
`
`G.
`H.
`
`
`
`
`
`ii.
`
`b.
`
`Claim 3 Is Anticipated by Mizutani ..................................................133
`1.
`Limitation-By-Limitation Analysis ........................................133
`Claim 3 Would Have Been Obvious in view of Mizutani ................158
`Claim 1 Would Have Been Obvious Over Morita-I in view of
`Morita-II ............................................................................................160
`1.
`Reasons for Modifying Morita-I In view of Morita-II ...........160
`2.
`Limitation-by-Limitation Analysis .........................................166
`a.
`Claim 1, Preamble ........................................................166
`i.
`“a magnetic tape cartridge comprising a
`magnetic tape wound around a single reel, a
`cartridge casing in which the reel is housed
`for rotation,…” ...................................................166
`“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” ................167
`Claim 1, Limitation 1a ..................................................170
`i.
`“braking member”: function...............................170
`ii.
`“braking member”: structure ..............................171
`Claim 1, Limitation 1b ..................................................175
`i.
`“urging member”: function ................................175
`ii.
`“urging member”: structure ................................176
`Claim 1, Limitation 1c ..................................................176
`i.
`“releasing member”: function ............................176
`ii.
`“releasing member”: structure ............................178
`iii.
`“rotated integrally with the reel” ........................181
`Claim 1, Limitation 1d ..................................................181
`Claim 1, Limitation 1e ..................................................182
`i.
`“guide member”: function ..................................185
`ii.
`“guide member”: structure .................................186
`
`c.
`
`d.
`
`e.
`f.
`
`- iii -
`
`

`

`2.
`
`
`
`
`
`I.
`
`J.
`
`K.
`
`Claim 2 Would Have Been Obvious Over Morita-I in view of
`Morita-II and Laverriere ....................................................................190
`1.
`Reasons for Modifying Morita-I in view of Morita-II and
`Laverriere ................................................................................190
`Claim 2 ....................................................................................191
`a.
`“guide member”: function ............................................191
`b.
`“guide member”: structure ............................................192
`Claim 3 Is Anticipated by Tsuyuki ...................................................194
`1.
`Limitation-By-Limitation Analysis ........................................194
`a.
`Claim 3, Preamble ........................................................194
`i.
`“a magnetic tape cartridge comprising a
`magnetic tape wound around a single reel, a
`cartridge casing in which the reel is housed
`for rotation,…” ...................................................194
`“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” ................195
`Claim 3, Limitation 3a ..................................................198
`i.
`“braking member”: function...............................199
`ii.
`“braking member”: structure ..............................200
`Claim 3, Limitation 3b ..................................................204
`i.
`“urging member”: function ................................205
`ii.
`“urging member”: structure ................................205
`Claim 3, Limitation 3c ..................................................206
`i.
`“releasing member”: function ............................206
`ii.
`“releasing member”: structure ............................208
`iii.
`“rotated integrally with the reel” ........................211
`Claim 3, Limitation 3d ..................................................211
`e.
`Claim 3, Limitation 3e ..................................................212
`f.
`Claim 3 Would Have Been Obvious in view of Tsuyuki .................214
`- iv -
`
`ii.
`
`b.
`
`c.
`
`d.
`
`

`

`
`
`v.
`
`L.
`
`Claim 4 Is Anticipated by Morita-II ..................................................216
`1.
`Patent Owner’s Concessions Concerning Morita-II ...............216
`2.
`Limitation-by-Limitation Analysis .........................................218
`a.
`Claim 4, preamble .........................................................218
`iv.
`“a magnetic tape cartridge comprising a
`magnetic tape wound around a single reel, a
`cartridge casing in which the reel is housed
`for rotation,…” ...................................................219
`“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” ................220
`Claim 4, Limitations 4a to 4d .......................................220
`b.
`Claim 4, Limitation 4e ..................................................221
`c.
`M. Claim 4 Would Have Been Obvious Over Morita-II In View of
`Betzler................................................................................................223
`1.
`Reasons for Modifying Morita-II in View of Betzler .............223
`2.
`Claim 4, Limitation-by-Limitation Analysis ..........................227
`a.
`Claim 4, Preamble and Limitations 4a to 4d ................227
`b.
`Claim 4, Limitation 4e ..................................................227
`X. SIGNATURE .................................................................................................230
`
`
`
`
`
`- v -
`
`

`

`
`
`I, Thomas von Alten, declare:
`
`1.
`
`I have been retained by Wolf, Greenfield & Sacks, P.C., counsel for
`
`Petitioner Sony Corporation (“Petitioner” or “Sony”), to submit this declaration in
`
`connection with Sony’s Petition for Inter Partes Review of Claims 1-4 of U.S.
`
`Patent No. 6,462,905 (“the ’905 patent”).
`
`2.
`
`I am being compensated for my time at a rate of $250.00 per hour,
`
`plus actual expenses. My compensation is not dependent in any way upon the
`
`outcome of this proceeding.
`
`I.
`
`PERSONAL AND PROFESSIONAL BACKGROUND
`
`3.
`
`I received undergraduate degrees in General Studies and Mechanical
`
`Engineering from the University of Idaho in 1978 and 1982, respectively. I
`
`received a master’s degree in Manufacturing Systems Engineering from Stanford
`
`University in 1990.
`
`4.
`
`From 1986 to 1989, I worked as a manufacturing engineer for
`
`assembly and testing of magnetic disk drives at Hewlett Packard (“HP”).
`
`5.
`
`From 1990 to 1996, I worked as a product development engineer in
`
`the Disk Memory Division for HP. In that role, I worked on mechanical design
`
`and research development teams focused on disk drive systems.
`
`6.
`
`From 1996 to 1999, I worked in HP’s Computer Peripherals Division.
`
`In that role, I designed new magnetic tape cartridges and tape drive systems. I was
`
`
`
`- 1 -
`
`

`

`
`
`involved with the three-company team of HP, Seagate, and IBM, Linear-Tape
`
`Open (LTO) effort to design and introduce the “Ultrium” tape format. These are
`
`the tapes that became widely known as LTO magnetic tape cartridges.
`
`7.
`
`From 1999-2003, I worked as part of the HP Labs “Atomic Resolution
`
`Storage” project, with responsibility for a nanopositioning, ultrahigh vacuum test
`
`platform for microelectromechanical systems (MEMS) product development.
`
`Since 2004, I have been self-employed as a web application developer.
`
`8.
`
`I am a named inventor on a number of patents, including patents
`
`relating to magnetic tape cartridges, such as U.S. Patent No. 6,717,771 (“Magnetic
`
`Tape Cartridge Having Projections”); U.S. Patent No. 6,449,684 (“Tape Leader Pin
`
`Assembly and Method for Making the Same”); U.S. Patent No. 6,003,802 (“Tape
`
`Leader Pin Assembly and Method for Making the Same”); U.S. Patent No.
`
`5,901,916 (“Tape Cartridge Reel Lock”); and U.S. Patent No. 5,813,622 (“Tape
`
`Cartridge Reel Lock”).
`
`9. My employment background, professional experience, and list of
`
`patents are contained in my CV, attached as Exhibit 1004.
`
`
`
`
`
`
`
`- 2 -
`
`

`

`
`
`II. MATERIALS CONSIDERED
`
`10.
`
`In connection with my work on this matter, I have reviewed the ’905
`
`patent (Ex-1001), as well as the other documents listed on the following list:
`
`Exhibit Description
`
`1001 U.S. Patent No. 6,462,905
`
`1002
`
`File History for U.S. Patent No. 6,462,905
`
`1003 CV of Mr. Thomas W. von Alten
`
`1004 Declaration of Mr. Thomas W. von Alten (this document)
`
`1005 U.S. Patent No. 5,901,916 (“McAllister-I”)
`
`1006
`
`Japanese Patent Publication No. H11-273307 (“Mizutani”)
`
`1007
`
`European Patent Publication No. 0 284 687 A2 (“Laverriere”)
`
`1008 U.S. Patent No. 5,927,633 (“McAllister-II”)
`
`
`
`1009
`
`File History for European Patent No. 1 098 320 B1
`
`1010
`
`Japanese Patent Publication No. S63-11776 (“Morita-I”)
`
`1011
`
`European Patent Publication No. 0 926 676 A1 (“Morita-II”)
`
`1012
`
`Japanese Patent Application H11-288571 (“Tsuyuki”)
`
`1013
`
`International Patent Publication No. WO 99/41513 (“Betzler”)
`
`1014
`
`Fujifilm Corp. and Fujifilm Recording Media U.S.A., Inc.’s Proposed
`Constructions in Certain Magnetic Data Storage Tapes and Cartridges
`Containing the Same, 337-TA-1076 (dated Jan. 18, 2018)
`
`1015
`
`Summary of Petitioner’s Proposed Claim Constructions
`
`1016 Redline Comparison of Issued Claim 4 of U.S. Patent No. 6,462,905 and
`Original Claim 4 of EP 1 098 320 B1
`
`1017 U.S. Patent No. 2,778,636
`
`1018
`
`1019
`
`
`
`Excerpt from FUNK & WAGNALLS NEW INTERNATIONAL DICTIONARY OF
`THE ENGLISH LANGUAGE (2000)
`
`Excerpt from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
`LANGUAGE (2011)
`
`- 3 -
`
`

`

`
`
`
`
`
`
`
`1020
`
`Excerpt from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
`LANGUAGE (2011)
`
`1021 Works, G., “CURVIC COUPLING DESIGN,” Gear Technology
`(November/December 1986)
`
`1022
`
`Excerpt from WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY OF
`THE ENGLISH LANGUAGE (1989)
`
`1023
`
`Excerpt from RANDOM HOUSE UNABRIDGED DICTIONARY (1993)
`
`1024 U.S. Patent No. 1,660,792
`
`1025 Claim Comparison of Original Claim 4 of EP 1 098 320 B1and
`Amended Claim 1 of EP 1 098 320 B1
`
`1026 Claim Element Comparison of Primary References
`
`1027
`
`Standard ECMA-120 (Dec. 1993)
`
`1028
`
`Standard ECMA-196 (Dec. 1993)
`
`1029
`
`European Patent No. 1 098 320 B1
`
`
`
`- 4 -
`
`

`

`
`
`III. RELEVANT LEGAL STANDARDS
`
`11.
`
`I understand that there are a number of legal principles involved in
`
`assessing the validity of a patent in connection with an inter partes review (IPR)
`
`proceeding. In expressing my opinions and considering the subject matter of the
`
`challenged claims of the ’905 patent, I am relying on legal principles that Sony’s
`
`attorneys have provided and/or explained to me.
`
`12.
`
`I understand that in this proceeding, Sony has the burden of proving
`
`that claims 1-4 of the ’905 patent are unpatentable by a preponderance of the
`
`evidence. I understand that under “a preponderance of the evidence” standard,
`
`Sony must show that a fact is more likely true than not true.
`
`13.
`
`I understand that for an invention claimed in a patent to be patentable,
`
`it must be, among other things, new (novel) and not obvious from the prior art that
`
`preceded the invention.
`
`14.
`
`I understand the information that is used to evaluate whether a
`
`claimed invention is patentable is generally referred to as “prior art” and includes
`
`patents and printed publications (e.g., books, journal publications, articles on
`
`websites, product manuals, etc.).
`
`15.
`
`I understand that inter partes review is a proceeding before the United
`
`States Patent & Trademark Office (“Patent Office”) for evaluating the patentability
`
`of issued patent claims based on prior art patents and printed publications.
`
`
`
`- 5 -
`
`

`

`
`
`16.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, I understand that prior art may “anticipate” the
`
`claim. Second, I understand the prior art may have made the claim “obvious” to a
`
`person of ordinary skill in the art (“POSA”) at the time the invention was made.
`
`My understanding of the two legal standards is set forth below.
`
`A.
`
`Anticipation
`
`17.
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`18.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every limitation of the claim must be found, expressly or inherently,
`
`in a single prior art reference.
`
`19.
`
`I understand that a claim limitation is inherent in a prior art reference
`
`if that limitation is necessarily present when practicing the teachings of the
`
`reference, regardless of whether a POSA recognized the presence of that limitation
`
`in the prior art.
`
`B. Obviousness
`
`20.
`
`I understand that a patent claim may be unpatentable if it would have
`
`been obvious in view of a single prior art reference or a combination of prior art
`
`references.
`
`
`
`- 6 -
`
`

`

`
`
`21.
`
`I understand that a patent claim would have been obvious if the
`
`differences between the subject matter of the claim and the prior art are such that
`
`the subject matter as a whole would have been obvious at the time the invention
`
`was made to a POSA in the relevant field. Specifically, I understand that the
`
`obviousness question involves a consideration of:
`
` the scope and content of the prior art;
`
` the differences between the prior art and the claims at issue;
`
` the knowledge of a person of ordinary skill in the pertinent art; and
`
` if present, objective factors indicative of non-obviousness, sometimes
`
`referred to as “secondary considerations.”
`
`22.
`
`I understand that in order for a claimed invention to be considered
`
`obvious, a POSA must have had a reason for combining teachings from multiple
`
`prior art references (or for altering a single prior art reference, in the case of single-
`
`reference obviousness) in the fashion proposed.
`
`23.
`
`I further understand that in determining whether a prior art reference
`
`would have been combined with other prior art or with other information within
`
`the knowledge of a POSA, the following are examples of approaches and
`
`rationales that may be considered:
`
` combining prior art elements according to known methods to yield
`
`predictable results;
`
`
`
`- 7 -
`
`

`

`
`
`
`
` simple substitution of one known element for another to obtain
`
`predictable results;
`
` use of a known technique to improve similar devices in the same way;
`
` applying a known
`
`technique
`
`to a known device ready for
`
`improvement to yield predictable results;
`
` applying a technique or approach that would have been “obvious to
`
`try,” i.e., choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success;
`
` known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design
`
`incentives or other market forces if the variations would have been
`
`predictable to one of ordinary skill in the art; or
`
` some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior art reference or to
`
`combine prior art reference teachings to arrive at the claimed
`
`invention. I understand that this teaching, suggestion, or motivation
`
`may come from a prior art reference or from the knowledge or
`
`common sense of one of ordinary skill in the art.
`
`- 8 -
`
`

`

`
`
`24.
`
`I understand that for a single reference or a combination of references
`
`to render the claimed invention obvious, a POSA must have been able to arrive at
`
`the claims by altering or combining the applied references.
`
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
`
`25.
`
`I understand that prior art references should be understood from the
`
`perspective of a person of skill in the art of the applicable field as of the time the
`
`invention was made.
`
`26. Here, the ’905 patent addresses the “Field of the Invention” by
`
`explaining:
`
`This invention relates to a magnetic tape cartridge comprising a
`cartridge casing and a single reel which is housed in the cartridge
`casing for rotation and around which a magnetic tape is wound, and
`more particularly to a structure of a reel stopper means for preventing
`rotation of the reel when the magnetic tape cartridge is not being used.
`
`’905 Patent at 1:6-11. In other words, the invention relates to the design of a “reel
`
`stopper means” that prevents the reel in a magnetic tape cartridge from rotating.
`
`27. As for the time the invention was made, the ’905 patent claims
`
`priority to two Japanese patent applications filed on November 8, 1999 and
`
`November 9, 1999, respectively. Therefore, I have been asked to consider the
`
`level of ordinary skill in the art as of November 1999.
`
`28.
`
`In my opinion, a POSA in the November 1999 time frame would have
`
`had a bachelor’s degree in mechanical engineering or related field with two years
`
`
`
`- 9 -
`
`

`

`
`
`of experience designing magnetic tape cartridges or similar advanced post-graduate
`
`education in this area. A person with less education but more design experience
`
`may also meet this standard as would a person with less design experience and
`
`more education.
`
`29.
`
`I understand that a POSA is presumed to be aware of all pertinent
`
`prior art and is a person of ordinary creativity. I have applied this standard
`
`throughout my declaration.
`
`30. As of November 1999, I exceeded the above-described qualifications
`
`of a POSA as I had been working specifically on magnetic tape cartridge design
`
`for more than three years and had worked on related precision machine design (i.e.,
`
`hard disk drives) for nearly a decade at Hewlett Packard.
`
`31. Though my credentials and experience exceeded those that would
`
`qualify a person as a POSA, I am (and was in 1999) familiar with the knowledge
`
`and skills of those who would have qualified as a POSA under the standard set
`
`forth above. For example, as of November 1999, I had been actively involved in
`
`the design of new magnetic tape cartridges at HP. In that role, I lead various task
`
`forces and teams which included junior engineers and technicians who satisfied the
`
`above-described qualifications for a POSA.
`
`
`
`
`
`
`
`- 10 -
`
`

`

`
`
`V. OVERVIEW OF THE ’905 PATENT
`
`A.
`
`Technology Overview
`
`1. Magnetic Tape Cartridges
`
`32. The ’905 patent relates to the design of magnetic tape cartridges. The
`
`patent concedes that such cartridges were known by November 1999 (Ex. 1001 at
`
`1:12-17), an unsurprising concession given that magnetic tape cartridges date back
`
`to at least the 1950s (e.g., Ex-1017) and were ubiquitous by the 1990s (e.g., Exs.
`
`1005-1008, 1010-1012). An audio cassette used with the Sony Walkman from the
`
`1980s is an example of a well-known magnetic tape cartridge.
`
`33. Magnetic tape cartridges conventionally wrapped magnetic tape
`
`around either two reels, like the audio cassettes used with Sony’s Walkman, or a
`
`single reel, a design common for cartridges designed for archival storage of
`
`computer data. McAllister-I at 1:11-20; Mizutani ¶2. The ’905 patent relates to
`
`the latter form of cartridges.
`
`34. As of November 1999, conventional single-reel magnetic tape
`
`cartridges included a box-like cartridge that housed a reel around which tape was
`
`wound. Below are four examples of a conventional cartridge with a casing (red)
`
`and a single reel (green):
`
`
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`- 11 -
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`

`

`McAllister-I at FIG. 2B
`
`Mizutani at FIG. 3
`
`Morita-II at FIG. 7
`
`Tsuyuki at FIG. 1
`
`35. Using McAllister-I as an example, its reel includes top and bottom
`
`flanges 28 and 30 an annular hub 32. McAllister-I at 3:3-5. Within the annular
`
`reel hub 32 is a set of cooperating structures that lock and unlock the reel for
`
`rotation within the casing. Those structures, illustrated below, include a brake
`
`(yellow) that is rotationally fixed relative to the casing, a projection (blue) on the
`
`base of the reel, a spring (purple) and a plate (orange) with three legs that extend
`
`through the reel base:
`
`- 12 -
`
`

`

`
`
`McAllister-I at FIG. 3
`
`
`
`36. When not in use, the spring forces the brake (downwardly in the
`
`Figure 3 of McAllister-I above) into engagement with the reel projection, thus
`
`locking the reel in place. When the cartridge is installed in a tape drive, drive teeth
`
`in the tape drive push against the plate’s legs, overcoming the spring’s force and
`
`causing the brake to move (upwardly in the figures) away from engagement with
`
`the projection. The locked and unlocked states are depicted in Figures 2A and 2B
`
`of McAllister-I:
`
`
`
`- 13 -
`
`

`

`
`
`Locked
`
`Unlocked
`
`Brake engaged with reel projection
`
`
`
`Brake disengaged from
`reel projection
`
`
`37. As seen below, Mizutani, Tsuyuki and Morita-II all utilize the same
`
`basic components to lock a reel to the cartridge:
`
`
`
`- 14 -
`
`

`

`
`
`
`
`, Y
`
`Mizutan
`Mizutan
`i
`i
`
`Tsuyuki
`
`Figure 3
`
`{e
`NJhs a
`Roo SSSSipe
`
`OFFPETTE wtLA
`
`-15-
`- 15 -
`
`

`

`Morita-
`II
`
`2.
`
`The Purported Problems with Magnetic Tape Cartridges
`
`38.
`
`The ’905 patent identifies two purported problems with the type of
`
`cartridge design depicted in McAllister-I, Mizutani, Tsuyuki and Morita-II: (1)
`
`misalignment and (2) over-winding.
`
`a.
`
`The Misalignment Problem
`
`39. According to the ’905 patent, during the assembly process or when the
`
`cartridge is used, the brake can become “inclined” in the conventional design.
`
`’905 Patent at 1:58-61, 2:5-9, Fig. 5. This is problematic because gear teeth on an
`
`inclined brake can contact gear teeth on the reel even after the brake has
`
`purportedly been disengaged, resulting in “noise, obstruction of rotation of the reel
`
`and unstable magnetic tape loading/unloading action.” ’905 Patent at 1:61-65. A
`
`misaligned brake is shown in Figure 5 of the ’905 patent reproduced below. Given
`
`- 16 -
`
`

`

`
`
`its tilt, the brake (yellow) can remain in contact with a gear tooth (blue) on the reel
`
`even though the brake has been lifted up and should have disengaged:
`
`
`
`40. Although not explained in the ’905 patent, a reason for the purported
`
`misalignment problem is self-evident: the outer diameter of the brake is smaller
`
`than the inner diameter of the reel hub, and the open space between the outer edge
`
`of the brake and the inner surface of the reel hub permits the brake to tilt or
`
`become off-center.
`
`41. This misalignment problem would have occurred even though a
`
`projection on the top of the brake (element 44) mates with an engagement
`
`projection (element 33) extending downward from the inner surface of the upper
`
`half of the cartridge case. The two projections work together to allow the brake to
`
`move up and down but not rotate. ’905 Patent at 7:6-14. Because projection 44
`
`
`
`- 17 -
`
`

`

`
`
`moves up and down within projection 33, there must be sufficient clearance
`
`between the two components to permit this movement. This clearance thus allows
`
`the brake to tilt. See, e.g., Mizutani ¶5 (recognizing that “the amount of clearance
`
`maintained” between two projections like elements 33 and 44 of the ’905 Patent “is
`
`also a factor” in a brake tilting”).
`
`42. As discussed in more detail in Section VII, the “misalignment”
`
`problem that the ’905 Patent identified in November 1999 was identified (and
`
`solved) in prior art references dating back to the late 1980s.
`
`b.
`
`The Over-Winding Problem
`
`43. According to the ‘905 patent, brakes in conventional cartridges used
`
`sawteeth-shaped gears which “surely prevented” the reel from rotating in the tape-
`
`unwinding direction during non-use. ’905 Patent at 2:9-29. If the cartridge was
`
`dropped, however, the impact could cause the reel to rotate in the tape-winding
`
`direction which could disadvantageously stretch or even break the magnetic tape,
`
`because the sawteeth design of the brake teeth prevented the tape from unwinding
`
`to release the tension on the tape. ’905 Patent at 2:29-38.
`
`B.
`
`The Three Disclosed Embodiments
`
`44. The ’905 patent describes three alterations to the conventional
`
`cartridge design. ’905 Patent at 2:40-58. Each of the “improved” designs starts
`
`
`
`- 18 -
`
`

`

`
`
`with the same above-discussed conventional cartridge components depicted in
`
`McAllister-I and Mizutani.
`
`1.
`
`The Common and Conventional Elements
`of the Three Embodiments
`
`45. Each embodiment in the ’905 patent, including the embodiment in
`
`Fig. 1 reproduced below, includes a casing 3 (red) and reel 2 (green) that includes a
`
`cylindrical reel hub 21 having a closed bottom wall 21a. ’905 Patent at 5:26-33.
`
`46. The reel hub bottom wall includes “three pairs of (six) engagement
`
`
`
`projections 27” (blue below) on its upper surface that each has an engagement gear
`
`29. ’905 Patent at 5:63-6:1. A braking member 4 (yellow) inside the reel hub
`
`
`
`- 19 -
`
`

`

`
`
`includes a disc portion 41 and annular braking gear 42 adapted to engage with
`
`engagement gear 29 on engagement projections 27. ’905 Patent at 6:6-16.
`
`47. A “coiled spring (urging member) 5” is compressed between the top
`
`
`
`of the braking member and the top of the cartridge. ’905 Patent at 7:16-18. The
`
`spring urges braking member 4 into engagement with engagement projections 27
`
`of the reel hub. ’905 Patent at 7:19-23.
`
`48. A triangular releasing member 6 (orange below) disposed in the reel
`
`hub includes three leg portions 63 that extend through holes 26 in the reel hub
`
`bottom. ’905 Patent at 7:23-35. When the releasing member is at its lowest point
`
`(Fig. 1), its leg portions extend through the reel hub base. ’905 Patent at 7:36-39.
`
`
`
`- 20 -
`
`

`

`
`
`When a drive gear 13 is brought into engagement with the reel (Figure 2), drive
`
`gear 13 pushes leg portions 63 up, causing releasing member 6 to overcome the
`
`bias of spring 5 and lift the braking gear out of engagement with the reel’s
`
`engagement gear 27, thus permitting the reel to rotate. ’905 Patent at 7:39-46. The
`
`releasing member is rotationally fixed to, and rotates together with, the reel. ’905
`
`Patent at 7:46-49.
`
`49. As seen below, the braking member, urging member, releasing
`
`
`
`member, and engagement projection in the ’905 patent correspond to the
`
`conventional reel lock components in McAllister-I, Mizutani, Morita-II and
`
`Tsuyuki:
`
`
`
`- 21 -
`
`

`

`
`
`905 Patent, FIG. 2
`
`McAllister I