Canon Inc.v.Intellectual Ventures I LLC

Patent Trials and Appeals Board

Sep 24, 2014

10064265 - (D) (P.T.A.B. Sep. 24, 2014)

Trials@uspto.gov Paper 9
571-272-7822 Entered: September 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CANON INC.,
Petitioner,

v.

INTELLECTUAL VENTURES I LLC,
Patent Owner.
____________

Case IPR2014-00535
Case IPR2014-00536
Case IPR2014-00537
1

Patent 7,315,406 B2
____________

Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION
Institution of Inter Partes Review in IPR2014-00535 and
Denying Institution of Inter Partes Review in
IPR2014-00536 and IPR2014-00537
37 C.F.R. § 42.108

1
This paper address issues in the listed cases. The parties are not authorized
to use this heading style for any subsequent papers.
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2
On March 25, 2014, Canon Inc. (“Petitioner”) filed three Petitions
(Paper 1 in each of the cases identified above) pursuant to 35 U.S.C. §§ 311–
319 to institute an inter partes review of claims 1–31 of U.S. Patent No.
7,315,406 B2 (“the ’406 patent”). Intellectual Ventures I LLC (“Patent
Owner”) filed Preliminary Responses (Paper 7 in each of the cases identified
above) on July 11, 2014. Applying the standard set forth in 35 U.S.C.
§ 314(a), which requires demonstration of a reasonable likelihood that
Petitioner would prevail with respect to at least one challenged claim, we
institute an inter partes review of claims 1–31. The Board has not made a
final determination of the patentability of any claim.

I. BACKGROUND
A. The ’406 patent (Ex. 1001)
The ’406 patent describes scanning circuit structures for scanners
capable of reducing distortion during high-speed image signal transmission.
Ex. 1001, col. 2, ll. 3–7. Figure 2 of the ’406 patent is reproduced below.

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Figure 2 illustrates a circuit structure for a scanner, including main circuit
module 210 and optical sensor circuit module 220 linked together with flat
cable 230. Id. at col. 3, ll. 36–40. Communication interface 285 of the main
circuit module allows interfacing with a human being, such as over a
universal serial bus (“USB”) interface. Id. at col. 3, ll. 48–57. The
communication interface receives scanning instructions regarding image
resolution, brightness level, and scanning range, and converts such scanning
instructions into scanning control signals that are conveyed to the optical
sensor circuit module over the flat cable. Id. Timing generator 265
produces timing control signals for extracting an analog signal image from
optical sensor 240, which may be a charge-coupled device (“CCD”) or
complementary metal-oxide-semiconductor (“CMOS”) image sensor. Id. at
col. 3, ll. 58–64. After preprocessing of a collected image by analog front-
end preprocessor 250, analog/digital converter 260 (“A/D converter”)
converts the preprocessed image to digital data, which are transmitted to the
main circuit module over the flat cable.
The ’406 patent identifies two specific advantages of this
arrangement. First, a clearer image can be obtained at higher scanning
speeds because the flat cable transmits digital data instead of easily distorted
analog image signals. Id. at col. 4, ll. 23–25. Second, electromagnetic-
interference effects are mitigated because the flat cable transmits scanning
control signals rather than timing control signals. Id. at col. 4, ll. 26–29.

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B. Illustrative Claims
Claims 1 and 11 of the ’406 patent are illustrative of the claims at
issue:
1. A scanning circuit for a document scanner, comprising:
a main circuit module capable of receiving a scanning
instruction from a communication interface, converting the
scanning instruction into scan control signals, passing the scan
control signals to a connection cable as well as receiving a
digital image data captured in a document scanning operation
through the connection cable; and
an optical sensor circuit module connected to the main
circuit module through the connection cable capable of
receiving the scan control signals and converting the scan
control signals to timing control signals that control document
scanning, extraction of an analog image signal from the
document and conversion of the analog image signal into the
digital image data.

11. A scanning method, comprising:
receiving scan control signals at an optical sensor circuit
module via a connection cable; and
converting the scan control signals to timing control
signals to control document scanning.

C. Related Proceedings
Petitioner states that Patent Owner has asserted the ’406 patent against
Petitioner in Intellectual Ventures I LLC v. Canon Inc., 13-cv-473-SLR (D.
Del.). Pet. 1.
2

2
Herein, citations to “Pet.” and to “Prelim. Resp.” refer respectively to the
Petition and Preliminary Response filed in IPR2014-00535.
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D. Claim Construction
The Board interprets claims using the broadest reasonable
construction in light of the specification of the patent in which they appear.
37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,766 (Aug. 14, 2012).

1. Instructions and signals
We agree with Patent Owner that Petitioner’s proposed constructions
of “scanning instruction,” “timing control signals,” and “scan control
signals” improperly introduce extraneous terms and/or read narrowing
examples from the specification into the claims. See Prelim. Resp. 28–29.
We construe these terms in accordance with their plain meaning without
express construction at this time.

2. “converting”
Petitioner proposes that “converting” as used in the claims be
construed to mean “changing an instruction or signal from one form to
another.” Pet. 5–6. Patent Owner proposes that the specific phrases
“converting the scanning instruction into scan control signals” and
“converting the scan control signals to timing control signals [that or to]
control document scanning” be construed with a requirement that the scan
control signals not include timing control signals. Prelim. Resp. 30–33. We
disagree with Patent Owner’s proposed constructions because they
improperly read narrowing examples into the claims.
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The ’406 patent describes conversion of scanning instructions into
scan control signals is effected by the main control logic unit (Ex. 1001,
col. 2, ll. 32–34), and conversion of scan control signals to timing control
signals is effected by timing generator 265 (id. at col. 2, ll. 46–51).
Accordingly, we construe phrases of the form “converting [X] into [Y]
signals” as generating Y signals from X.

3. “optical sensor circuit module”
The recitation in claim 1 of “an optical sensor circuit module . . .
capable of receiving the scan control signals and converting the scan control
signals to timing control signals that control document scanning, extraction
of an analog image signal . . . and conversion of the analog image signal into
digital image data” (emphases added) is grammatically ambiguous.
Specifically, the relative scopes of what the optical sensor circuit module is
“capable of” and what the timing control signals “control” is unclear. Under
a first possible construction, the “receiving,” “converting,” “extraction,” and
“conversion” recited in the claim are all capabilities of the optical sensor
circuit module. Under a second possible construction, only the “receiving”
and “converting” recitations are within the grammatical scope of the phrase
“capable of,” with the “extraction” and “conversion” being expressly
controlled by the timing control signals.
Petitioner notes the ambiguity, but does not advocate clearly for one
construction over the other. Pet. 6–7. Patent Owner also does not advocate
clearly for one construction over the other, asserting that “the words of the
claim are facially unambiguous.” Prelim. Resp. 33. We disagree that there
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is no ambiguity. Although both constructions are supported by the
specification, the first construction is broader than the second. Even under
the second construction, the optical sensor circuit module is “capable of” the
recited extraction and conversion, but this capability is limited to being
effected through the control of the timing control signals.
Applying the broadest reasonable construction in light of the
specification, we accordingly adopt the first construction, in which the
recited “receiving,” “converting,” “extraction,” and “conversion” are all
capabilities of the optical sensor circuit module, without the further
requirement that the extraction and conversion be controlled by the timing
control signals.

4. Means-plus-function Limitations
Claims 21–25 include several terms recited as “means for” performing
identified functions, which are presumptively construed under 35 U.S.C. §
112, ¶ 6.
3
Both parties identify structure disclosed in the ’406 patent for
performing the recited functions, implicitly acknowledging that construction
under § 112, ¶ 6, is appropriate. Pet. 7–8; Prelim. Resp. 34–39. In most
instances, the parties agree in their identifications of structure, although we
agree with Patent Owner’s contention that Petitioner’s identification is
overly narrow for certain terms. See Prelim. Resp. 34–38. Accordingly, we

3
Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112-29,
125 Stat. 284, 296 (2011). Because the ’406 patent has a filing date before
September 16, 2012 (effective date), we refer to the pre-AIA version of
§ 112.
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construe the various means-plus-function limitations with the following
correspondence of structure disclosed in the ’406 patent.

“means for . . .” Corresponding structure
“. . . extracting an analog image
signal”
optical sensor circuit module 220 and
optical sensor 240
“. . . converting the analog image
signal into a digital image data”
analog/digital converter 260
“. . . receiving the digital image data” main circuit module 210 and main
control logic unit 270
“. . . generating timing control
signals”
timing signal generator 265
“. . . receiving a scanning
instruction”
main control logic unit 270
“. . . converting the scanning
instruction into scan control signals”
main control logic unit 270 and
communication interface 285
“. . . passing the scan control signals
to said connection table”
main circuit module 210
“. . . receiving the scan control
signals”
optical sensor circuit module 220
“. . . converting the scan control
signals to timing control signals”
optical sensor module 220 and
timing signal generator 265
“. . . holding the digital image data” memory unit 280
“. . . controlling the access of the
digital image data”
memory controller 275
“. . . compensating and adjusting the
digital image data”
main control logic unit 270
“. . . preprocessing the analog image
signal”
analog front-end preprocessor 250
“. . . converting the pre-processed
analog image signal into the digital
image data”
analog/digital converter 260
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E. References Relied Upon
Petitioner relies on the following references.
Kono US 6,958,830 B2 Oct. 25, 2005 Ex. 1006
Chizawa US 7,391,532 June 24, 2008 Ex. 1007
Ochiai US 5,457,544 Oct. 10, 1995 Ex. 1009
Koshimizu US 2001/0030278 A1 Oct. 18, 2001 Ex. 1012
Kaneko EP 0 886 429 2 Dec. 23, 1998 Ex. 1013
Tsuboi JP H11-046302 Feb. 16, 1999 Ex. 1015
Hayashi JP H11-041389 Feb. 12, 1999 Ex. 1016
Takegawa JP H10-215353 Aug 11, 1998 Ex. 1017
Nakamura JP H11-353471 Dec. 24, 1999 Ex. 1018

II. ANALYSIS OF GROUNDS ASSERTED IN IPR2014-00535
A. Asserted Grounds of Unpatentability in IPR2014-00535
Petitioner challenges claims 1–31 of the ’406 patent on the following
grounds in IPR2014-00535.
Reference(s) Basis Claim(s) Challenged
Tsuboi § 102(b) 1–3, 5, 6, and 10–31
Tsuboi § 103(a) 1–3, 5, 6, and 10–31
Tsuboi and Takegawa § 103(a) 4
Tsuboi and Koshimizu § 103(a) 7
Tsuboi and Nakamura § 103(a) 9
Tsuboi and Kono § 103(a) 5, 6, 8, 16–25, 29, and 31
Tsuboi, Kono, and
Koshimizu
§ 103(a) 7
Tsuboi and Ochiai § 103(a) 2, 3, 14, 15, 18, 19, 23, 27, and 28
Tsuboi, Ochiai, and
Takegawa
§ 103(a) 4
Tsuboi, Ochiai, and Kono § 103(a) 18, 19, and 23
Kono § 103(a) 1, 5, 6, 8, 10–13, 16, 17, 20–22,
24–26, and 29–31
Kono and Kaneko § 103(a) 2, 3, 14, 15, 18, 19, 23, 27, and 28
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Reference(s) Basis Claim(s) Challenged
Kono, Kaneko, and
Takegawa
§ 103(a) 4
Kono and Koshimizu § 103(a) 7
Kono and Nakamura § 103(a) 9
Kono, Kaneko, and Ochiai § 103(a) 2, 3, 14, 15, 18, 19, 23, 27, and 28
Kono, Kaneko, Ochiai, and
Takegawa
§ 103(a) 4

1. Asserted Grounds Based on Tsuboi
a. Anticipation of Claims 1, 3, 5, 6, and 10–31 by Tsuboi
Tsuboi describes an image-reading device that uses a CCD to collect
image data. Ex. 1015 ¶ 1. Figure 4 of Tsuboi is reproduced below.

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Figure 4 provides a schematic illustration of the image-reading device with
components distributed between an image processing circuit board and a
CCD circuit board. Id. ¶ 36. Petitioner draws a correspondence between (1)
the image processing circuit board of Tsuboi and the optical sensor circuit
module recited in the claims of the ’406 patent, and (2) the CCD circuit
board of Tsuboi and the main circuit module recited in the claims. Pet. 17.
The image processing circuit board and the optical sensor circuit module are
connected by a flexible cable. Ex. 1015 ¶ 25. Similar to the configuration
shown in Figure 2 of the ’406 patent, Tsuboi discloses that the CCD circuit
board includes CCD image sensor 31, analog processing circuit 30AN,
analog-digital converter 35, and “signal processing circuit 37 for controlling
the timing with which the CCD 31 is driven and for generating a clock.” Id.
¶ 36; see also id. ¶ 3. Signals used to generate that timing information are
received from the image processing circuit board. Id. ¶ 39. Petitioner
reasons that “the timing control signals and digital image data are generated
on the optical sensor side, and the digital image data is transmitted to the
main module via a cable, as claimed in the ’406 [p]atent.” Pet. 18.
We have reviewed Petitioner’s analysis and claim charts at pages 18–
30 of the Petition. Patent Owner provides no specific arguments countering
Petitioner’s analysis, indicating instead that it “will reserve its full arguments
and evidence . . . for its Patent Owner Response.” Prelim. Resp. 40. We
determine that Petitioner has demonstrated that there is a reasonable
likelihood it would prevail on its challenge of claims 1, 3, 5, 6, and 10–31 as
anticipated by Tsuboi, and accordingly institute an inter partes review of
those claims on that basis.
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b. Obviousness of Claims 1, 3, 5, 6, and 10–31 over Tsuboi
In addition to its challenge of claims 1, 3, 5, 6, and 10–31 as
anticipated by Tsuboi, Petitioner advances alternative grounds for
challenging those claims as obvious over Tsuboi. Specifically, limitations of
those claims (or claims from which they depend) recite “converting” an
instruction or signal to certain types of signals, and Petitioner acknowledges
that “the term ‘converting’ is not explicitly used in Tsuboi.” Pet. 31.
As Petitioner asserts, Tsuboi teaches the receipt of scanning
instructions by CPU 21 on the image recording device. Ex. 1015 ¶ 20. Such
instructions are converted to scan control signals by the CPU, such as in the
form of a primary scanning synchronization signal, a primary scanning
effective interval signal, and a secondary scanning effective interval signal.
Id. ¶ 39. These scan control signals are input from the CPU on the image
processing circuit board into the signal processing circuit on the CCD circuit
board. Id. ¶ 40. The signal processing circuit uses the scan control signals
to generate signals “for controlling the timing with which the CCD 31 is
driven and for generating a clock,” i.e., to generate timing control signals.
Id. ¶ 36. Applying our construction of “converting,” such processes thus
effect conversion of scanning instructions into scan control signals and
effect conversion of scan control signals into timing signals.
Petitioner contends that even if Tsuboi does not explicitly disclose
“converting” instructions and signals, that such conversion would be
obvious to one of ordinary skill in the art. Pet. 31 (citing Ex. 1002 ¶ 65).
Patent Owner does not respond to Petitioner’s contention.
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We determine that Petitioner has demonstrated that there is a
reasonable likelihood it would prevail on its challenge of claims 1, 3, 5, 6,
and 10–31 as obvious over Tsuboi, and accordingly institute an inter partes
review of those claims on that basis.

c. Obviousness of Claims 5, 6, 8, 16–25, 29, and 31
over Tsuboi and Kono

Kono discloses a scanner having a separate main board and carriage.
Ex. 1006, col. 3, ll. 37–41; col. 5, ll. 6–9. Figure 2 of Kono is reproduced
below.

Figure 2 shows main board 41 connected to carriage 20 with flexible flat
cable 40. Id. at col. 4, ll. 56–57. Petitioner draws a correspondence between
(1) main board 41 and the “main circuit module” recited in the claims; and
(2) the circuitry on carriage 20 and the “optical sensor circuit module”
recited in the claims. Pet. 35; see also Ex. 1002 ¶ 71. Similar to Tsuboi, the
optical sensor side of the scanner includes CCD 22, analog-digital converter
25, and control unit 24. Ex. 1006, col. 3, l. 59 – col. 4, l. 27.
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Petitioner applies Kono to address a potential deficiency in Tsuboi as
“not explicitly describ[ing] that timing control signals control both the image
sensor and the A/D converter.” Pet. 35. Petitioner specifically contends that
such an operation would have been obvious to one of ordinary skill in the art
in light of Kono’s teaching that those elements are synchronized. Id. As
Petitioner observes, Kono discloses that control unit 24 acts as a timing
generator that generates timing control signals that provide a shift pulse and
a sampling pulse. Id. (citing Ex. 1006, col. 4, ll. 13–55; col. 5, l. 29 – col. 6,
l. 10; Fig. 1). The control unit is coupled to both the CCD and A/D
converter, with the shift pulse transmitted to the CCD to control generation
of the analog image signal and the sampling pulse transmitted to the A/D
converter to control conversion to digital data. Ex. 1006, col. 4, ll. 13–55;
col. 5, l. 29 – col. 6, l. 10. Petitioner reasons that, because both Tsuboi and
Kono disclose generation of timing control signals on the optical sensor side
of a scanning circuit, one of ordinary skill in the art would have found it
obvious to send timing control signals to both the image sensor and A/D
converter in Tsuboi according to the scheme described in Kono. Pet. 35–36.
Claims 5, 6, 16–25, 29, and 31 include limitations related to such
timing coordination. We determine that Petitioner has demonstrated a
reasonable likelihood of prevailing on its challenge to those claims as
obvious over the combination of Tsuboi and Kono. Recognizing Petitioner’s
assertion that “Kono even more clearly [than Tsuboi] describes the
conversion of scan control signals into timing control signals that control
document scanning” (id. at 39), we institute an inter partes review of those
claims on that basis.
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d. Obviousness of Claims 2–4, 7, 8, 14, 15, 18, 19, 23, 27, and 28
over Tsuboi and Other Art

Petitioner includes certain other prior art in its challenges of various
additional claims. Specifically, in challenging claim 4, Petitioner cites
Takegawa’s disclosure of a dynamic random access memory (“DRAM”) as
a substitute for Tsuboi’s random access memory 23. Pet. 31–32, 38. In
challenging claim 7, Petitioner cites Koshimizu’s disclosure of a CMOS
image sensor as a substitute for Tsuboi’s CCD image sensor. Id. at 32–33;
36–37. In challenging claim 9, Petitioner cites Nakamura’s disclosure of a
USB interface. Id. at 33–34. In challenging claim 8, Petitioner cites Kono’s
disclosure of a “flat” cable. Id. at 36. In challenging claims 2, 3, 14, 15, 18,
19, 23, 27, and 28, Petitioner cites Ochiai’s disclosure of coupling a main
control logic unit with a memory control logic unit. Id. at 37–38, 38–39.
We have reviewed Petitioner’s analysis underlying its application of
these additional references to those claims and find it sufficiently
demonstrates a reasonable likelihood of prevailing on its challenges to those
claims. Accordingly, we institute an inter partes review of: (1) claim 4 as
obvious over Tsuboi and Takegawa; (2) claim 4 as obvious over Tsuboi,
Ochiai, and Takegawa; (2) claim 7 as obvious over Tsuboi and Koshimizu;
(3) claim 7 as obvious over Tsuboi, Kono, and Koshimizu; (4) claim 9 as
obvious over Tsuboi and Nakamura; (5) claims 5, 6, 8, 16–25, 29, and 31 as
obvious over Tsuboi and Kono; (6) claims 2, 3, 14, 15, 18, 19, 23, 27, and
28 as obvious over Tsuboi and Ochiai; and (7) claims 18, 19, and 23 as
obvious over Tsuboi, Ochiai, and Kono.

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2. Grounds Based on Kono
We decline to institute an inter partes review of claims 1–31 on the
several grounds Petitioner advances based on Kono. See 37 C.F.R.
§ 42.108(a). Those grounds rely on teachings from Kono that Petitioner
already identifies as disclosed by Tsuboi. See generally Pet. 39–60. This is
reflected also in the analysis presented by Petitioner’s declarant, Dr. Carley,
which identifies discrete disclosures from various references to construct a
multiplicity of art combinations (designated “Combination A,”
“Combination B,” etc.). See generally Ex. 1002.
4
We are not convinced
that these various combinations add substantively to the grounds on which
we institute.
Specifically, Petitioner asserts that its proposed grounds based on
Kono (identified as “Combination B” by Dr. Carley) are not redundant of the
Tsuboi-based grounds (identified as “Combination A” by Dr. Carley)
because “Kono even more clearly describes the conversion of scan control
signals into timing control signals that control document scanning.” Pet. 39.
By Petitioner’s own admission, both Tsuboi and Kono provide the same
teaching of converting scan control signals into timing control signals. The
argument that Kono describes such conversion “in greater detail” (id.) is not
persuasive, as there is no showing that those details are material to
Petitioner’s analysis. In a following paragraph, moreover, Petitioner argues
that Tsuboi “provides a more detailed description of the user-level scanning
instructions . . . than Kono does.” Id. at 40. And Petitioner does not address

4
The same Carley declaration was filed in each of the proceedings. See
infra.
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the fact that some of the proposed grounds discussed above for which we
institute already combine Kono with Tsuboi. We are not persuaded that the
proposed Kono-based grounds add sufficiently to this combination.
Exercise of our discretion in declining to institute on the Kono-based
grounds is consistent with the authority granted under 35 U.S.C. § 315(d) to
manage inter partes proceedings and with the objective of “secur[ing] the
just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
§ 42.1.

III. ANALYSIS OF GROUNDS ASSERTED IN
IPR2014-00536 AND IPR2014-00537

A. Asserted Grounds of Unpatentability in IPR2014-00536
Petitioner challenges claims 1–31 of the ’406 patent on the following
grounds in IPR2014-00536.
Reference(s) Basis Claim(s) Challenged
Kaneko § 102(b) 1, 2, 5, 6, 10–14, 16–18, 20–23,
25–27, and 29–31
Kaneko § 103(a) 1, 2, 5, 6, 10–14, 16–18, 20–23,
25–27, and 29–31
Kaneko and Kono § 103(a) 3, 5, 6, 8, 15–25, 28, 29, and 31
Kaneko and Takegawa § 103(a) 4
Kaneko and Koshimizu § 103(a) 7
Kaneko and Nakamura § 103(a) 9
Kaneko, Kono, and
Koshimizu
§ 103(a) 7
Kaneko and Ochiai § 103(a) 2, 14, 18, 23, and 27
Kaneko, Ochiai, and Kono § 103(a) 3,15, 19, and 28
Kaneko, Ochiai, and
Takegawa
§ 103(a) 4
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Reference(s) Basis Claim(s) Challenged
Chizawa § 103(a) 1–3, 5, 6, and 10–31
Chizawa and Takegawa § 103(a) 4
Chizawa and Koshimizu § 103(a) 7
Chizawa and Nakamura § 103(a) 9
Chizawa and Kono § 103(a) 5, 6, 8, 16–25, 29, and 31
Chizawa, Kono, and
Koshimizu
§ 103(a) 7
Chizawa and Ochiai § 103(a) 2, 3, 14, 15, 18, 19, 23, 27, and 28
Chizawa, Ochiai, and
Takegawa
§ 103(a) 4
Chizawa, Kono, and Ochiai § 103(a) 18, 19, 23

B. Asserted Grounds of Unpatentability in IPR2014-00537
Petitioner challenges claims 1–31 of the ’406 patent on the following
grounds in IPR2014-00537.

Reference(s) Basis Claim(s) Challenged
Hayashi § 103(a) 11, 17, 20, 21, 24, 25, 30, and 31
Hayashi and Ochiai § 103(a) 18 and 19
Hayashi and Kaneko § 103(a) 1, 5, 6, 8, 10, 12, 13, 16, 22, 26,
and 29
Hayashi, Kaneko, and
Ochiai
§ 103(a) 2, 3, 14, 15, 23, 27, and 28
Hayashi, Kaneko, Ochiai,
and Takegawa
§ 103(a) 4
Hayashi, Kaneko, and
Koshimizu
§ 103(a) 7
Hayashi, Kaneko, and
Nakamura
§ 103(a) 9
Hayashi and Kono § 103(a) 17, 20, 21, 24, 25, and 31
Hayashi, Kono, and Ochiai § 103(a) 18 and 19
Hayashi, Kaneko, and
Kono
§ 103(a) 5, 6, 16, 22, and 29
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Reference(s) Basis Claim(s) Challenged
Hayashi, Kaneko, Kono
and, Koshimizu
§ 103(a) 7
Hayashi, Kono, Kaneko,
and Ochiai
§ 103(a) 23

C. Grounds Based on Kaneko, Chizawa, or Hayashi
We decline to institute an inter partes review of claims 1–31 on the
grounds Petitioner advances based on Kaneko or Chizawa in IPR2014-
00536, and Hayashi in IPR2014-00537. See 35 U.S.C. §314(a); 37 C.F.R.
§ 42.108(b). In each of IPR2014-00536, IPR2014-00537, and IPR2014-
00535, Petitioner challenges all of the claims of the ’406 patent.
Specifically, through no fewer than 49 grounds, Petitioner asserts multiple
challenges to each claim of the ’406 patent across three separate Petitions.
Claims 18 and 23, for example, are each the subject of 17 different grounds
of alleged unpatentability. Petitioner, however, does not address the
duplicative nature of its arguments across Petitions.
We note that Petitioner’s analysis does not distinguish among the
three Petitions, for Petitioner relies on the same Carley declaration in
support of all three. See Ex. 1002. The Carley declaration is generic, i.e., it
is not specific to any one of the proceedings, but instead presents five
alternative combinations of prior art, labeled A to E, corresponding to
challenges based on various groupings of Kaneko, Tsuboi, Kono, Chizawa,
and Hayashi. Id. at 24. Dr. Carley attempts to explain how each of the five
combinations renders each claim unpatentable, but he does not explain
convincingly how any one of the labeled groupings is distinguishable from,
IPR2014-00535, IPR2014-00536, IPR2014-00537
Patent 7,315,406 B2

20
or better than, another. This failure by Petitioner’s expert to explain his
generic approach further convinces us that the three Petitions should be
considered together.
The standard for institution of an inter partes review, as set forth in
35 U.S.C. § 314(a), is written in permissive terms—identifying when the
United States Patent and Trademark Office (“the Office”) is authorized to
institute an inter partes review. Thus, Congress has given the Office
discretion whether to institute a review, or not institute a review. As
explained above, inter partes review will proceed in IPR2014-00535 for
claims 1–31 of the ’406 patent on grounds the Petitioner alleged based on
Tsuboi. Petitioner has not shown, and we are not convinced, that any of the
additional grounds based on Kaneko, Chizawa, or Hayashi add substantively
to the grounds on which we institute inter partes review. Exercise of our
discretion in declining to institute on the grounds based on Kaneko,
Chizawa, and Hayashi is consistent with the authority granted under 35
U.S.C. § 315(d) to manage inter partes proceedings and with the objective
of “secur[ing] the just, speedy, and inexpensive resolution of every
proceeding.” 37 C.F.R. § 42.1.

III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that inter partes review is instituted in IPR 2014-00535
with respect to the following grounds of unpatentability:
(1) claims 1–3, 5, 6, and 10–31 as anticipated by Tsuboi under
35 U.S.C. § 102(b);
IPR2014-00535, IPR2014-00536, IPR2014-00537
Patent 7,315,406 B2

21
(2) claims 1–3, 5, 6, and 10–31 as obvious over Tsuboi under
35 U.S.C. § 103(a);
(3) claim 4 as obvious over Tsuboi and Takegawa under
35 U.S.C. § 103(a);
(4) claim 7 as obvious over Tsuboi and Koshimizu under
35 U.S.C. § 103(a);
(5) claim 9 as obvious over Tsuboi and Nakamura under
35 U.S.C. § 103(a);
(6) claims 5, 6, 8, 16–25, 29, and 31 as obvious over Tsuboi
and Kono under 35 U.S.C. § 103(a);
(7) claim 7 as obvious over Tsuboi, Kono, and Koshimizu
under 35 U.S.C. § 103(a);
(8) claims 2, 3, 14, 15, 18, 19, 23, 27, and 28 as obvious over
Tsuboi and Ochiai under 35 U.S.C. § 103(a);
(9) claim 4 as obvious over Tsuboi, Ochiai, and Takegawa
under 35 U.S.C. § 103(a); and
(10) claims 18, 19, and 23 as obvious over Tsuboi, Ochiai, and
Kono under 35 U.S.C. § 103(a);
FURTHER ORDERED that inter partes review is not instituted in
IPR2014-00536 and IPR2014-00537;
FURTHER ORDERED that no ground other than those specifically
instituted above is authorized for the inter partes review;
FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
partes review of the ’406 patent is hereby instituted in IPR2014-00535
commencing on the entry date of this Order, and pursuant to 35 U.S.C.
IPR2014-00535, IPR2014-00536, IPR2014-00537
Patent 7,315,406 B2

22
§ 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a
trial.

IPR2014-00535, IPR2014-00536, IPR2014-00537
Patent 7,315,406 B2

23
PETITIONER:
Justin J. Oliver
Daniel S. Glueck
Canon406IPR@fchs.com
FITZPATRICK, CELLA, HARPER & SCINTO
975 F Street, NW Fourth Floor
Washington, DC 20004

PATENT OWNER
Brenton R. Babcock
Ted M. Cannon
Donald Coulman
2BRB@knobbe.com
2tmc@knobbe.com
dcoulman@intven.com
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street, Fourteenth Floor
Irvine, CA 92614