Toshiba Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Mar 9, 2016

11969190 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper 31
Tel: 571-272-7822 Entered: March 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

TOSHIBA CORPORATION,
Petitioner,

v.

OPTICAL DEVICES, LLC,
Patent Owner.
_______________

Case IPR2014-01445
Patent 7,839,729 B2
_______________

Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Toshiba Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
institute an inter partes review of claims 1–10 of Patent No. US 7,839,729
B2 (Ex. 1001, “the ’729 patent”). Optical Devices, LLC (“Patent Owner”)
filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
On March 10, 2015, we instituted an inter partes review of claims 1–
10 of the ’729 patent. Paper 7 (“Dec. Inst.”). Patent Owner filed a Patent
Owner Response to the Petition. Paper 16 (“PO Resp.”). Petitioner filed a
Reply to the Patent Owner’s Response. Paper 18 (“Pet. Reply”). In
addition, Patent Owner filed a Motion to Exclude four of Petitioner’s
exhibits. Paper 24 (“Mot.”). Petitioner filed an Opposition to the Motion to
Exclude. Paper 27 (“Opp.”). Patent Owner responded to that Opposition in
a Reply in Support of the Motion to Exclude. Paper 28 (“PO Reply”). On
January 13, 2016, the parties presented arguments at an oral hearing. Paper
30 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, we determine that Petitioner has not shown by a preponderance of
the evidence that claims 1–10 are unpatentable.
B. The Cited References and Declarations
Petitioner relies upon the following references in support of its
grounds challenging the identified claims of the ’729 patent:

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Exhibits References
1003

Patent No. US 6,204,787 B1 to Baird, filed March 31,
1999 (“Baird”)
1005

Product Preview for ST TDA7522, “Digital Servo and
Decoder,” May 19981 (the “ST Datasheet”)

Petitioner relies also upon the Declaration of Richard Zech, Ph.D. (Ex.
1006). Patent Owner relies upon the Declaration of Raymond de Callafon,
Ph.D. (Ex. 2008).
C. The Instituted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1–10 of the ’729
patent as set forth below:  
Reference(s) Basis Claims
Baird §102(e)(pre-AIA) 1–10
Baird and ST Datasheet §103 1–10

D. Related Proceedings
The parties indicate that the ’729 patent is the subject of Optical
Devices, LLC v. Toshiba Corp., Case No. 1:13-cv-10530 (D. Del. 2013).
Pet. 1; Paper 5, 2 (also identifying other related cases). In addition, the ’729
patent is the subject of an investigation before the U.S. International Trade
Commission: In the Matter of Certain Optical Disc Drives, Components
Thereof, and Products Containing the Same, Inv. No. 337-TA-897. Pet. 1;

1 “May 1998” is the date that appears on the reference. As discussed in this
Final Written Decision, that date has not been established as a “printed
publication” date so as to qualify the reference as prior art under 35 U.S.C.
§ 102.
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Paper 5, 1. Further, we instituted inter partes reviews for claims of the
following patents covering related subject matter: Patent Nos. US 7,196,979
B2 (IPR2014-01446, Paper 7) and US 8,416,651 B2 (IPR2014-01447, Paper
9).
E. The ’729 Patent
The ’729 patent describes a digital servo system in an optical disk
drive. Ex. 1001, 1:16–17. The servo system includes photodetectors for
receiving reflected light from an optical disk and providing an output signal
which is converted into a digital signal by an analog-to-digital converter. Id
at 2:30–35. The servo system includes also a digital signal processor
configured to (a) receive the digital signals, (b) determine a focus error
signal (“FES”) and a tracking error signal (“TES”) from the digital signals,
and (c) process TES and FES through servo algorithms to produce tracking
and focus control signals. Id. at 2:35–41.
The claims at issue are directed to an optical disk drive having such a
digital servo system, a method of driving an optical pick-up unit, and a servo
system comprising an optical pick-up unit. See, e.g., Ex. 1001, Claims 1, 5,
and 8.
F. Illustrative Claim
Independent claim 1 is illustrative and is reproduced below:
1. An optical disk drive, comprising:
a plurality of photodetectors for receiving reflected light from
an optical disk, each photodetector providing a photodetector
output signal;
an analog-to-digital converter for converting low-pass filtered
and gain-adjusted versions of the photodetector output signals
into digital signals; and
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a digital signal processor configured to receive the digital
signals, the digital signal processor being further configured
to determine a focus error signal (FES) and a tracking error
signal (TES) from the digital signals, the digital signal
processor being further configured to process TES and FES
through servo algorithms to produce tracking and focus
control signals.

Ex. 1001, 45:58–46:10 (emphasis added to identify disputed
limitations). Claims 1, 5, and 8 are independent. Claims 2–4 depend
directly from claim 1; claims 6 and 7 depend directly from claim 5;
and claims 9 and 10 depend directly from claim 8.
G. Claim Construction
In an inter partes review, the Board interprets claim terms in an
unexpired patent according to the broadest reasonable construction in light
of the specification of the patent in which they appear. 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed.
Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84
U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under that standard, and
absent any special definitions, we give claim terms their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
Any special definitions for claim terms must be set forth with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). “In such cases, the inventor’s lexicography
governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
banc). In the absence of such definitions, limitations are not to be read from
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the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
Only terms which are in controversy need to be construed, and only to
the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we
provide express constructions only for the following terms.
1. “digital signal processor”
In the Institution Decision, we construed the claim term “‘digital
signal processor’” (“DSP”) as meaning “‘an integrated circuit structured and
arranged for processing digital signals in accordance with programmed
commands.’” Dec. Inst. 7.
In the Patent Owner Response, Patent Owner asserts that our initial
construction is “overly broad” because it “encompasses virtually any general
purpose microprocessor or microcontroller unit.” PO Resp. 7. According to
Patent Owner, “[o]ne of ordinary skill in the art would understand that a
digital signal processor or DSP is a specialized microprocessor––one that is
structured and arranged for high speed processing of digital signals––
particularly real-time digital data streams.” Id. In particular, Patent Owner
asserts that the Specification “frequently relies on the difference between a
general purpose microprocessor and a DSP in describing embodiments of
the invention.” Id. at 7–8 (citing Ex. 1001, 19:1–18) (describing, for
example, that “[i]n some embodiments, DSP 416 operates under
instructions from microprocessor 432.”).
In further support of its proposed claim construction, Patent Owner
provides two dictionary definitions for a DSP, with one defining the term as
“[a]n integrated circuit designed for high speed data manipulation and used
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in audio communications, image manipulation, and other data acquisition
and data control applications” (Ex. 2002, 145) and the other defining the
term as “[a] high-speed coprocessor designed to do real-time manipulation
of signals” (Ex. 2003, 198). Id. at 9–10. In addition, Patent Owner relies
upon the declaration testimony of Dr. de Callafon, as well as the deposition
testimony of Petitioner’s declarant, Dr. Zech, that a DSP is a specialized
microprocessor architected and designed to perform high speed processing
of digital signals, particularly real-time data processing. Id. at 7 (citing Ex.
2008 ¶ 21(a)) and 9 (citing Ex. 2001, 28:14–29:4, 31:17–32:10, 34:15–35:3,
35:9–14, 48:11–22, 55:4–21, 62:17–63:22, 90:9–92:6, 96:7–97:22, 108:10–
109:10).
In the Reply, Petitioner and its declarant, Dr. Zech, observe that the
Board’s initial construction of DSP is “very general but accurate.” Pet.
Reply 3. Petitioner asserts that Patent Owner’s proposed construction “finds
no support in the specification” and attempts “improperly to import two
amorphous limitations into that construction – ‘specialized’ and ‘high
speed.’” Id. at 4. In particular, Petitioner asserts that “[n]owhere in the ’729
patent specification or claims is a DSP described as a ‘high speed’
processor.” Id. at 7.
As in our Institution Decision, here again we agree with Patent Owner
that the Specification of the ’729 patent recognizes that a DSP is different
from a general purpose microprocessor. Id. at 6–7. For example, the
Specification states:
FIG. 4 shows an embodiment of control chip 350 of
control system 300. The embodiment of control chip 350
shown in FIG. 4 includes a microprocessor 432 and a digital
signal processor (DSP) 416. Since DSP 416 operates much
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faster, but has lower overall capabilities (e.g., code and data
storage space), than microprocessor 432, in some
embodiments real time digital servo system algorithms can
be executed on DSP 416 while other control functions and
calibration algorithms can be executed on microprocessor
432. A control structure for embodiments of control chip
350, and interactions between DSP 416 and microprocessor
432, are further discussed in the System Architecture
disclosures.
Ex. 1001, 13:50–61. From this disclosure, we recognize that the
Specification suggests that a DSP operates faster than a microprocessor and,
in some embodiments, real time digital servo algorithms can be executed on
a DSP. Id. at 53–55. The Specification, however, does not expressly define
the term “digital signal processor.”
We note the competing views of Dr. de Callafon, on behalf of Patent
Owner, and Dr. Zech, on behalf of Petitioner. We also note issues regarding
the testimony of each declarant. For example, in some respects, Dr. de
Callafon bases his proposed construction of a DSP on features that he asserts
one of ordinary skill in the art would have understood that “most DSP
processors have,” as opposed to features that all DSP processors require.
Ex. 2008 ¶ 21(a). Dr. Zech’s deposition testimony describing the design of a
DSP, also relied upon by Patent Owner, is unreliable because Dr. Zech
testified that he had “no expertise” as to design elements distinguishing a
DSP from a general processor. See, e.g., Ex. 2001, 35:12–13, 44:12–14.
As we seek to give the term “DSP” its ordinary and customary
meaning, as would be understood by one of ordinary skill in the art at the
time of the invention, we take into account the Microsoft and IBM
dictionary definitions submitted by Patent Owner. We note that each of
those dictionaries define a DSP as being designed for “high speed”
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manipulation of data/digital signals. Ex. 2002; Ex. 2003. Patent Owner,
however, has not directed our attention to evidence establishing what “high
speed” encompasses.
We note also that only one of the submitted dictionary definitions
additionally characterizes such digital signal manipulation as “real-time.” Id.
at 2003. The Specification, however, discloses that only some embodiments
can execute real time digital servo algorithms on a DSP. We determine that
Patent Owner has not established persuasively that the broadest reasonable
interpretation of a DSP requires “high speed” processing achieving this “real
time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does
not include a requirement for “real time” processing. See PO Resp. 20
(providing a minimal definition for a DSP).
Thus, we are persuaded that that the broadest reasonable intepretation
of the term “digital signal processor,” consistent with the Specification, is
“an integrated circuit structured and arranged for manipulation of digital
signals in accordance with programmed commands, and in a manner that
operates faster than a microprocessor.” Patent Owner’s proposal to
characterize further an integrated circuit as “specialized” is not well taken.
Indeed, we find that proposed modification to be superfluous in that our
construction describes that the integrated circuit is structured and arranged to
achieve a specific function, i.e., manipulation of digital signals and operating
faster than a microprocessor.
2. Unchallenged Constructions
We provided the following constructions in the Institution Decision:
(a) “versions of signals from photodetectors” and “versions of
photodetector output signals” as meaning “individual analog signals derived
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from photodetector output signals.” Dec. Inst. 5–6.
(b) “digital signals” as “signals using two or more states, e.g., ‘0’ or
‘1,’ to represent signal values.” Id. at 7–8.
(c) “focus error signal” as “a digital signal representing an out-of-
focus condition.” Id. at 8.
(d) “tracking error signal” as “a digital signal representing an off-track
condition.” Id. at 9
The parties do not challenge those constructions in the Patent Owner
Response or in the Petitioner’s Reply. Nor do we find any reason to depart
from those constructions in this Final Written Decision. Accordingly, we
maintain each of those unchallenged constructions as the broadest
reasonable interpretation, consistent with the Specification, in this Final
Written Decision.
Patent Owner proposes constructions for additional claim phrases
without providing any discussion or reference to the Specification in support
of those proposed constructions. PO Resp. 12–13. Based on our analysis,
we determine that no express claim construction is necessary for any
remaining claim term. Thus, we are not persuaded to adopt those proposed
constructions.
H. Level of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)(citing Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966) and Ryko Mfg. Co. v. Nu-Star, Inc.,
950 F.2d 714, 718 (Fed. Cir. 1991)).
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Petitioner asserts that one of ordinary skill in the art at the time of the
filing of the ’729 patent as having:
(1) a Bachelor’s of Science Degree in Electrical Engineering,
Mechanical Engineering, Physics or a related field and at least two
years of additional experience in control system technology, optical
disk servo technology, magnetic disk servo technology, or related
technologies, either in industry or research[,] or (2) at least a
Master’s of Science Degree in Electrical Engineering, Mechanical
Engineering, Physics or a related field with coursework in control
system technology, optical disk servo technology, magnetic disk
servo technology, or related technologies.
Pet. 36–37 (citing Ex. 1006 ¶¶ 65–66) (emphases added).
Patent Owner asserts that one of ordinary skill in the art would have “a
Bachelor of Science in Mechanical or Electrical Engineering and at least two
years of experience in control systems technology.” PO Resp. 5 (citing Ex.
2008 ¶¶ 9–11) (emphasis added).
Based on our consideration of the record, we find that the evidence as
a whole supports Petitioner’s broader description of the level of ordinary
skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary
skill in the art.
II. ANALYSIS
A. Anticipation by Baird
Petitioner contends that claims 1–10 of the ’729 patent are anticipated
by Baird. Pet. 39–53; Pet. Reply 8–17. Patent Owner disagrees. PO Resp.
15–33.
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1. Baird
Baird is directed to circuits and methods for gain ranging in an analog
modulator and systems using the same. Ex. 1003, 1:33–35. Baird’s Figure
1 is reproduced below.

Figure 1 is a conceptual diagram of an exemplary personal computer based
optical disk playback system. Id. at 2:59–60. Optical pick-up unit 101
includes a photodiode array, i.e., photodetectors A–F, which provide six
respective signals to a “drive manager integrated circuit” (“IC”) 100. Id. at
3:24–32, 5:57–63. IC 100 includes “servo channel” 300 which provides
servo control for motors and actuators 103 associated with mechanical
manipulation of the optical playback system. See id. Fig. 1. Integrated
circuit 100 also includes “data channel” 200 for processing data signals read
from disk 105. Id. at 3:24–61. The “servo channel” is shown in more detail
in Baird’s Figure 3, reproduced below.
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Baird’s Figure 3 is a diagram showing further detail of the servo control path
shown in Baird Figure 1. Ex. 1003, 2:64–65. Servo data is received from
six photodiodes 101 (i.e., photodetectors A–F) and converted into digital
signals by analog to digital converters (“ADCs”) 302. Id. at 5:63–65. Baird
explains, “Servo data processing is performed by on-board servo control
processor (SCP) 304, which receives its instruction set from the user
selected local microcontroller 106 through interface 107 and RAM 305. Id.
at 6:13–16.
2. Analysis
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient.”
MEHL/Biophile Int'l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
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Petitioner asserts that Baird discloses each limitation of claims 1–10
and provides a detailed reading of the challenged claims on Baird. Pet. 39–
53. In particular, Petitioner asserts that the Baird’s on-board SCP 304 is a
DSP configured to receive digitals and further configured to determine and
process a focus error signal (FES) and a tracking error signal (TES) as
required by the challenged claims. Pet. 41.
a. A digital signal processor configured to receive digital signals
According to Petitioner, Baird discloses an “‘on-board servo control
processor (SCP) 304’ which receives the claimed digital signals from the
analog-to-digital converters.” Pet. 41 (quoting Ex. 1003; citing Fig. 3, 6:12–
15 and Ex. 1006 ¶ 77). Specifically, Petitioner asserts that the SCP receives
six separate digitized photodetector signals, each of which has been
amplified using six separate VGAs and amplified using separate ADCs 302.
Id. (citing Ex. 1003, 5:63–6:11). In addition, Petitioner asserts that Baird
discloses the SCP as part of an “‘integrated servo system that operates four
control loops: focus, tracking sled and spindle, using an intermal servo
control processor requiring little external microcontroller intervention.’” Id.
at 42 (quoting Ex. 1003, 5:56–62; citing Ex. 1006 ¶ 78). Petitioner asserts
that Baird also discloses that the servo data processing “‘is performed by on-
board servo control processor (SCP) 304, which receives its instruction set
from the user selected local microcontroller 106 through interface 107 and
RAM 305.’” Id. (quoting Ex. 1003, 6:12–15). Based on those disclosures,
Petitioner asserts that one of ordinary skill in the art would understand that
Baird’s SCP is a (1) DSP used for performing servo functions; and (2) a
non-dedicated programmable device that is optimized for processing
received digital signals using programmed commands. Id.
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In further supports of its contention that one skilled in the art would
understand Baird’s servo processor is a DSP, Petitioner refers to the ’729
patent’s file history wherein Applicant stated the following:
Applicant appreciates the suggested replacement titleprovided
by the examiner. However, it is respectfullynoted that prior art
optical disk drive servos also usedigital signal processors —that
use is old. What is notold, however, is the provision of a servo
processor (e.g.,a DSP) that receives versions of the
photodetectorsignals such that the servo processor is the
component that calculates the resulting servo algorithm error
signals (FES for focus and TES for tracking).
Pet. 43 (quoting Ex. 1002, 139) (emphasis added in Petition). Petitioner
draws support also from a second statement made by that Applicant:
Thus, just as the Examiner would hear a version of a caller's
voice on the telephone (as opposed to the actual sound of the
caller's voice that would be heard by the Examiner in a face-to-
face conversation) so does the claimed servo processor receive
processed versions of the photodetector signals.
Id. (quoting Ex. 1002, 140–141). According to Petitioner, Applicant’s use
of the terms “digital signal processor” and “servo processor”
interchangeably establishes persuasively that Baird’s SCP also must be
considered a DSP. Id.
Patent Owner asserts that Baird’s SCP does not constitute “a digital
signal processor (DSP),” as required by independent claims 1, 5, and 8. PO
Resp. 16. According to Patent Owner, a “DSP typically comes with
additional flash memory and/or RAM,” and is distinguished from a general
purpose microprocessor and/or microcontroller “due to the specialized
architecture for the computational needs in digital signal processing.” Id. at
18–19 (citing Ex. 2008 ¶ 31). Patent Owner asserts that the “specialization
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ensures that calculations can be done as fast as possible with as little latency
as possible.” Id. at 20 (citing Ex. 2008 ¶ 33).
Patent Owner asserts that Baird’s Figure 3 shows that “the RAM
(memory) is separate from the SCP and data flow would go through the SCP
to the RAM.” Id. at 23. According to Patent Owner, because the memory to
process data is not part of the processor architecture, “the SCP is
inconsistent with a typical DSP architecture.” Id. In other words, Patent
Owner asserts that Baird’s SCP “does not consitute a DSP, since hardware
assisted computations would have to have direct memory access to qualify
as a DSP programmed command.” Id. (citing 2008 ¶ 41).
Based on our review of Baird, we disagree with Patent Owner’s
characterization of the SCP depicted in Figure 3 as not having direct access
to RAM. Although the RAM is separated from the SCP, Figure 3 depicts a
two-way arrow positioned directly between the two elements. Patent Owner
has not explained persuasivley why a skilled artisan would not understand
that two-way arrow as indicating direct access to RAM by the SCP. See Tr.
46:16–50:8. Moreover, we note that Dr. de Callafon characterizes a DSP as
“typically” having RAM, and because Baird’s RAM is separate from the
SCP, it is inconsistent with “typical” DSP architecture. Ex. 2008 ¶¶ 31, 40.
Thus, neither Dr. de Callafon’s declaration nor our construction of DSP
prohibits RAM from being separate from the DSP.
Further, based upon our review of the record, Patent Owner has not
addressed either of Applicant’s statements referenced by Petitioner wherein
the terms “digital signal processor” and “servo processor” were used
interchangeably, suggesting that Baird’s SCP may be considered a DSP.
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Based on our review of the record as a whole, and in view of our
claim construction for the claim term “digital signal processor,” we find that
the preponderance of the evidence establishes that one of ordinary skill in
the art would understand Baird’s SCP to be a DSP used to perform servo
functions.
b. Determining/Calculating FES and TES from the digital signals
Petitioner asserts that “[i]t is inherent that the servo control processor
of Baird determines focus error signal and tracking error signal.” Pet. 44.
Petitioner reasons that, because Baird discloses that the SCP performs focus
and tracking control loops, “it is necessarily the case that a focus error and
tracking error signal are generated” in order to perform that function. Id.;
Ex. 1006 ¶ 82; see Tr. 20:21–23:5. According to Petitioner and Dr. Zech,
one of ordinary skill in the art would understand that those error signal
calculations must occur within the SCP because Baird does not disclose any
other circuitry or block in its design that could perform that function. Id.
Additionally, Petitioner asserts that Baird’s SCP necessarily determines FES
and TES because Baird discloses that the SCP receives digitized
photodetector signals and generates servo control signals requires a
determination of the error signals. Id. (citing Ex. 1006 ¶ 82).
Patent Owner contends that “[i]t is not inherent that the servo control
processor of Baird is ‘further configured to determine a focus error signal
(FES) and a tracking error signal (TES) from the digital signals [it
receives],’ as required by independent claim 1 and similarly claimed in
independent claims 5 and 8.” PO Resp. 24–25. Patent Owner asserts that
“Baird is silent with respect to the operations and locations of the four
control loops, as well as any generation of focus or tracking error signals.”
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Id. at 25.
Regarding Baird’s disclosure that the SCP processes the servo loops
to create control signals, Patent Owner asserts that “Baird fails to provide
any description of how its control loops operate” or even if the loops are
“open” or closed.” Id. at 28. According to Patent Owner, “[a] person of
ordinary skill in the art would understand that there are different types of
servo control loops, including, but not limited to, ‘open’ and ‘closed’ servo
control loops.” Id. at 27; Ex. 2008 ¶ 49. Patent Owner asserts that one of
ordinary skill in the art also understands that open loops operate without any
feedback and, thus, do not require the determination of error signals. Id. at
28: Ex. 2008 ¶ 50.
For example, Patent Owner asserts that “[o]ne example of ‘open loop’
control system is one which reacts before an error actually occurs, which is
called feedforward control or predictive control.” Id. (citing Ex. 2008 ¶ 51).
Patent Owner and Dr. de Callafon explain that “[f]eedforward control is not
error-based, but instead is based on knowledge about the process in the form
of a mathematical model of the process or knowledge about measurements
of the process disturbances.” Id.; Ex. 2008 ¶ 51. According to Patent
Owner and Dr. de Callafon, such knowledge is useful for a servo system
wherein the process and process disturbances have a repetitive nature,
making it easier to predict and react before any error occurs. Id. Patent
Owner and Dr. de Callafon explain further that “[r]epetitive movements and
repetitive control signals are found in an optical disk drive where the disk is
constantly rotating creating repetitive and predictable error signals.” PO
Resp. 29; Ex. 2008 ¶ 52. Patent Owner asserts that it was known in the art
that repetitive control signals needed for such a repetitive system could be
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designed via iterative learning or a repetitive control algorithm and that one
of skill in the art would understand that the repetitive control signals are
applied in an open loop fashion to control the actuator in the optical disk
drive. Id. Therefore, according to Patent Owner and Dr. de Callafon,
Baird’s disclosure of a servo system “does not imply unequivocally that the
servo system is either ‘open’ or ‘closed’.” Id.
Further, Patent Owner asserts that one of ordinary skill in the art
understands that, although closed loops operate based upon feedback, “that
feedback need not result in the determination of error signals.” Id. at 29; Ex.
2008 ¶ 53. In such cases, Patent Owner asserts that servo control can be
done on the basis of feedback of the measurement of the actual reference
signal as opposed to a measurement of the difference between the reference
and the output. Id. (citing Ex. 2008 ¶ 53). Thus, Patent Owner contends that
Baird’s teaching that the servo system uses the SCP to operate focus and
tracking control loops does not inherently disclose that the SCP determines
any error signals, much less FES and TES. Id. at 32; see Tr. 64:16–65:14.
In the Reply, Petitioner asserts that Patent Owner has not explained
“how or why open loop systems could be used in a servo control system in
an optical disk drive system,” or provided any examples of open servo
control that can be used for an optical disk system, such as the system
disclosed in Baird. Pet. Reply 13. According to Petitioner, Patent Owner’s
declarant, Dr. de Callafon, testified that photodetector signals are not used in
open loop systems. Id. (citing Ex. 1017, 110:24–111:6). Because Baird
discloses receiving servo data from photodetector signals, Petitioner asserts
that “by Patent Owner’s own admission, Baird teaches away from using an
open loop system for servo control.” Id. Further, Petitioner asserts that
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optical disks contain imperfections, such that an open loop control system
would lack the necessary feedback to adjust for those imperfections. Id. at
13–14 (citing Ex. 1006 ¶¶ 23, 32–35).
Having considered the arguments and evidence, we are not persuaded
that Petitioner has established by a preponderance of the evidence that Baird
inherently discloses a DSP configured to determine a FES and a TES from
digital signals received by the SCP. In particular, Petitioner’s primary
contention with respect to inherency is that one of ordinary skill in the art
would understand that Baird must determine a FES and TES in order for the
SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex.
1006 ¶ 82). However, neither Petitioner, nor Petitioner’s declarant, Dr.
Zech, provides any explanation why that is true. When asked for an
explanation during his deposition, Dr. Zech responded in a manner that
relied upon a probability that Baird’s SCP determines FES and TES. For
example, the following is an excerpt from Dr. Zech’s deposition:
Q Can you explain to me why it is your
opinion that it is inherent that a servo control
processor in Baird determines a focus error signal
and a tracking error signal?
A Well, because the way he designed it, it
does. And I can’t imagine why somebody, an engineer
at Cirrus Logic, would swim against the current and
0 come up with something entirely new. The chip
1 surely would not sell. I know that from pretty
broad experience in sales and marketing.
Once you tell me optical disk drive --
I’ve explained to you the statistics of it --
99 percent plus are probably using continuous
composite servoing. When you use continuous
composite servoing, you need to have a tracking
error and a focus error signal. So it’s not much of
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a leap for me to conclude that that’s what’s going
on here.

Ex. 2001, 151:3–20 (emphases added). Dr. Zech’s deposition testimony
describes what functions and systems optical disk drives “are probably
using” and that “it’s not much of a leap” for him to conclude what is
occuring in Baird with respect to whether error signals are determined Id.;
see MEHL/Biophile Int’l. Corp., 192 F.3d at 1365 (inherency is not
established by probabilities or possibilities). Moreover, both in his
declaration and at the deposition, Dr. Zech bases his opinion regarding that
issue on assumptions unsupported by evidence. See Office Patent Trial
Practice Guide 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012) (“Affidavits
expressing an opinion of an expert must disclose the underlying facts or data
upon which the opinion is based. . . . Opinions expressed without disclosing
the underlying facts or data may be given little to no weight.”) (citations
omitted). Thus, we do not afford Dr. Zech’s opinions persuasive weight.
Further, based upon our review of the record, we find that Patent
Owner has presented a credible challenge to Petitioner’s assertion that
Baird’s SCP necessarily determines FES and TES. See PO Resp. 24–32
(discussed supra). In particular, Patent Owner and Dr. de Callafon have
provided reasonable explanations and examples demonstrating that Baird’s
SCP may operate using (a) an open loop that is not dependent upon the
determination of FES or TES, or (b) a closed loop that is based upon
feedback not requiring the determination of those error signals. Id. We
disagree with Petitioner’s assertion that Patent Owner has not provided
examples or explained how or why open loop systems could be used in a
servo control system in an optical disk drive system. See Pet. Reply 13.
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Patent Owner and Dr. de Callafon explained that, in an optical disk drive,
where the disk is constantly rotating, repetitive control signals are found.
PO Resp. 28; Ex. 2008 ¶ 52. Patent Owner and Dr. de Callafon explained
also that it was known in the art that a repetitive system could be designed
via iterative learning or a repetitive control algorithm to produce repetitive
control signals needed for such a repetitive system. Id. Further Patent
Owner and Dr. de Callafon explained that the repetitive control signals are
applied in an open loop fashion to control the actuator in the optical disk
drive. Id.
We also do not agree with Petitioner’s assertion that Dr. de Callafon’s
testimony amounts to an admission by Patent Owner that Baird “teaches
away” from using an open loop system for servo control. Pet. Reply 13. In
support of that contention, Petitioner relies on Dr. de Callafon’s deposition
testimony relating to some “very simple open loop solutions for optical
drives that didn’t use any error measurement.” Ex. 1017, 110:8–10.
Petitioner asked whether “those systems utilize photodetector signals for the
purposes of servo?” Id. at 110:24–111:1. Dr. de Callafon answered, “If they
are purely open loop, probably not.” Id. at 111:3–4 (emphases added).
However, prior to that conditional statement, Dr. de Callafon explained that
the photodetector signals received by the SCP in Baird would be useful in an
open loop servo because those signals can provide information about the
repetitive motion of the disk. Ex. 1017, 75:17–76:24. Dr. de Callafon
explained further that the repetitive motion need not be a FES or TES, but,
instead, a “reference signal,” that is not based upon any error signal. Id. at
76:14–77:2.
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In view of the evidence, arguments, and Baird’s silence with respect
to how focus and tracking control are accomplished by the SCP, and, in
particular, whether such control relies upon determining any error signals,
or, even if the servo operates in an open or closed loop, we are not persuaded
that the preponderance of the evidence establishes that Baird’s SCP
determines, calculates, or otherwise provides FES and TES, as required by
the challenged claims. Therefore, having considered the record as a whole,
we find that Petitioner has not established persuasivley that Baird discloses
each and every limitation of the challenged claims. Accordingly, we
conclude that Petitioner has not established by a preponderance of the
evidence that claims 1–10 are anticipated by Baird.
B. Obviousness over Baird and the ST Datasheet
Petitioner contends, as an alternative to the previously discussed
anticipation ground, that claims 1–10 of the ’729 patent are rendered
obvious by the combination of Baird and the ST Datasheet. Pet. 50; Pet.
Reply 17–25. Patent Owner disagrees. PO Resp. 34–47. In particular, our
analysis focuses on Patent Owner’s assertion that the ST Datasheet does not
qualify as a prior art. Id. at 34–38.
1. ST Datasheet
The ST Datasheet describes a TDA7522 Digital Servo and Decoder
having a built in microcontroller. Ex. 1005, 1. The ST Datasheet is a
twenty-three page document that contains the date of “May 1998” at the
bottom of the first page. Id. Below the date is a statement that characterized
the document as containing “preliminary information on a new product now
in development. Details are subject to change without notice.” Id.
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(emphasis added). On the last page of the document is a statement that the
“[i]nformation furnished is believed to be accurate and reliable.” Id. at 23.
Additionally, the last page of the document states, “Specifications mentioned
in this publication are subject to change without notice. This publication
supersedes and replaces all information previously supplied.” Id.
2. Analysis
For a reference to be considered a “printed publication” so as to
qualify as a prior art printed publication under 35 U.S.C. § 102(b), the
reference must be shown to have been “sufficiently accessible to the public
interested in the art” prior to the critical date. In re Cronyn, 890 F.2d 1158,
1160 (Fed. Cir. 1989).
Petitioner contends that, if we find that the SCP of Baird is not a
digital signal processor, then the ST Datasheet discloses this element such
that the combined prior art renders the challenged claims obvious. Pet. 50–
51 (citing Ex. 1005, 1, 7). According to Petitioner, the ST Datasheet
qualifies as a printed publication under pre-AIA 35 U.S.C. § 102(b) with
respect to the ’729 patent because the ST Datasheet “was published in May
1998 in the United States.” Pet. 50–51. In support of that publication date,
the Petitioner relies upon the May 1998 date on the front page of the ST
Datasheet, a Technical/Product Press Announcement (Ex. 2012) dated May
18, 1998, describing the TDA7522 Digital Servo and Decoder (Pet. 56), as
well as the declaration testimony of Dr. Zech (Ex. 1016 ¶ 90). At the
institution phase, we determined that Petitioner provided sufficient evidence
tending to show that the ST Datasheet was publicly available and accessible
as of May of 1998. Dec. Inst. 16.
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In the Patent Owner Response, Patent Owner argues that the ST
Datasheet “does not qualify as a prior art printed publication because there is
no evidence to prove that it was made sufficiently accessible to the public”
during “May 1998,” or at any time prior to the critical date of the ’729
patent. PO Resp. 34–35. According to Patent Owner, that date printed on
the datasheet “is inadequate on its face to demonstrate availability and
accessibility to the public.” Id. at 35. With respect to the press
announcement2 (Ex. 1012), Patent Owner asserts, among other things, that
the announcement also “does not provide any evidence to prove that the ST
Datasheet was made sufficiently accessible to the public interested in the art
before the critical date.” Id. at 37. Rather, Patent Owner asserts that the
press announcement only suggests the availability of a purported product,
i.e., the ST TDA 7522 chip, and not the availability or accessibility of the
document at issue, i.e., ST Datasheet, on a particular date. Id. at 38.
In the Reply, Petitioner responds to Patent Owner’s argument by
asserting that the disclaimer information included at the end of the datasheet
“is evidence of clear intent for the publisher to share the document with
potential customers.” Pet. Reply 19 (emphasis added). According to
Petitioner, it is clear from this “evidence,” along with the quality and details
of the datasheet itself and the release of the product in May 1998, “that the
ST Datasheet was available for interested parties to access well before the
priority date of the ’729 patent.” Id.

2 Ex. 1012 is printed from the Internet Archive’s “Wayback Machine.”
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After considering the admissible evidence and arguments,3 we find
that Patent Owner has challenged persuasively Petitioner’s assertion that the
ST Datasheet was publicly accessible prior to the critical date. While the ST
Datasheet contains a May 1998 date and refers to itself as a “publication”
(see Ex. 1005, 23) the reference does not provide any definitive statement or
identification that it was accessible to the public interested in the art in May
1998. At most, Petitioner has established that the version of ST Datasheet
provided as Exhibit 1005 was printed in May 1998. In other words, the
document represents a May 1998 version of the “preliminary information”
compiled for the TDA7522 product that was in development. See Ex. 1005,
1 (“This is preliminary information of a new product now in development.”).
We also note that the ST Datasheet contains a statement that “[t]his
publication supersedes and replaces all information previously supplied.”
Id. at 23. However, the ST Datasheet does not state or otherwise indicate to
whom the information was supplied or made available, much less when.
Upon further consideration of the press announcement, dated May 18,
1998, describing the TDA7522 chipset, Ex. 1012, we agree with Patent
Owner that the press announcement describes the availability of a
product, i.e., the ST TDA 7522 chip (see Ex. 1012, 1 (“a special version of
the TDA 7522 is available”)), but not the availability or accessibility of the
ST Datasheet at that time. The press announcement does not refer to the ST
Datasheet or mention that such information regarding the product was
available.

3 See infra Section III (addressing the Motion to Exclude with respect to
Exhibits 1015 and 1016).
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Indeed, Petitioner’s declarant, Dr. Zech, acknowledges that the press
announcement refers only to the availability of the TDA7522 chip in May
1998. Ex. 1006 ¶ 90. Beyond that acknowledgement, Dr. Zech offers only
conjecture stating that “it stands to reason that the ST Datasheet also was
available in May 1998, as chip companies typically disseminate a datasheet
when they introduce a new chip.” Id. (emphasis added). Dr. Zech, however,
did not provide testimony or evidence to support that reasoning. Nor did Dr.
Zech assert that he had knowledge specifically relating to ST Micro’s
business practices in 1998. Thus, we do not afford persuasive weight to Dr.
Zech’s statements regarding the asserted availability of the ST Datasheet.
See Trial Practice Guide 48763 (“Affidavits expressing an opinion of an
expert must disclose the underlying facts or data upon which the opinion is
based. See Fed. R. Evid. 705; and § 42.65. Opinions expressed without
disclosing the underlying facts or data may be given little or no weight.”).
Without more, for example, a declaration from a knowledgeable
representative of ST Micro regarding the normal business practice in May
1998 of making datasheets available for download on or near the date
provided on the publication, we do not find that Petitioner has supported
adequately its contention that ST Micro made the ST Datasheet, submitted
as Exhibit 1005, available for download on its public website or otherwise
publicly accessible, prior to the critical date. See, e.g., In re Enhanced
Security Research, LLC, 739 F.3d 1347, 1354–55 (Fed. Cir. 2014)(finding
dated manual was “publically-available” based, in part, upon the declaration
of the Chief Executive Officer of the company that produced the product
described in the manual averring that the version of the manual relied upon
was accessible to public on the date inscribed on the manual).
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A determination whether a particular reference qualifies as a printed
publication “must be approached on a case-by-case basis.” In re Hall, 781
F.2d 897, 899 (Fed. Cir. 1986). In this case, based on the foregoing facts
and discussion, we determine that Petitioner has not established that the ST
Datasheet was publicly accessible prior to the critical date so as to render it a
“printed publication” for the purposes of 35 U.S.C. § 102(b). Thus, the ST
Datasheet does not qualify as prior art.
Accordingly, Petitioner has not shown by a preponderance of the
evidence that the challenged claims would have been obvious over the
combination of Baird and the ST Datasheet because the ST Datasheet is not
available as prior art.
III. MOTION TO EXCLUDE
Patent Owner filed a Motion to Exclude Exhibits 1005, 1012, 1015,
and 1016. Paper 24. In the motion, Patent Owner characterizes its challenge
of Exhibit 1005 (the ST Datasheet) and Exhibit 1012 (the Press
Announcement) as “lacking authentication, inadmissible hearsay, and/or
irrelevant.” Id. at 1. It is apparent, however, from Patent Owner’s argument
in support of those contentions that the issue instead relates to a sufficiency
of the evidence with respect to whether Exhibits 1005 and 1012 establish
that Exhibit 1005 qualifies as a “printed publication.” For example, Patent
Owner asserts that Exhibits 1005 and 1012 are inadmissible because “there
is insufficient evidence to support finding that [those exhibits] are
documents that were publicly available at the time the time Petitioner
purports they were.” Id. at 2. That issue is properly addressed in our
analysis above, rather than in the context of a Motion to Exclude.
Accordingly, we deny the motion to exclude with respect to Exhibits 1005
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and 1012.
Regarding Exhibits 1015 and 1016, Patent Owner asserts that those
exhibits should be excluded as “untimely” because Petitioner submitted
them in response to Patent Owner’s objections of Exhibits 1005 and 1012
more than ten business days after being served with those objections. Id. at
8–9 (citing 37 C.F.R. § 42.64(b)). Additionally, Patent Owner asserts that
Exhibits 1015 and 1016 should be excluded because Petitioner failed to seek
authorization to file a motion to submit supplemental information pursuant
to 37 C.F.R. § 42.123(b). Id. at 10.
Petitioner submitted Exhibits 1015 and 1016 for the first time with its
Reply Brief, without authorization. Petitioner describes Exhibit 1015 as a
current STMicro webpage containing a link to a downloadable datasheet for
a digital UV index sensor, i.e., “UNIS25.” Reply 19. Petitioner describes
Exhibit 1016 as an “Internet Archive screenshot of one of STMicro’s
websites as of December 4, 2000” purportedly displaying a list of
downloadable ST Micro datasheets describing “Audio & Radio” products,
including the datasheet for “part number ‘TDA7522.’” Id. Exhibit 1016
includes a declaration by an employee at the Internet Archive stating that the
screenshots submitted as Exhibit 1016 “are true and accurate copies of
printouts of the Internet Archive’s records of the HTML files for URLs and
the dates specified in the footer of the printout.” Ex. 1016, 1.
Petitioner admits that those exhibits were neither served nor filed
under 37 C.F.R. § 42.64(b) in response to Patent Owner’s evidentiary
objections (see Ex. 2009 (serving objections to Exhibits 1005 and 1012 on
Mar. 24, 2015); Ex. 2010 (serving objections to Exhibits 1015 and 1016 on
Sept. 21, 2015)), nor filed under 37 C.F.R. § 42.123(b) as “supplemental
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information.” Opp. 14–15. Instead, according to Petitioner, Exhibits 1015
and 1016 “were introduced for purposes of responding to Patent Owner’s
arguments in its Response (Paper 16) pursuant to 37 C.F.R. § 42.23.” Id.
Petitioner’s reliance on 37 C.F.R. § 42.23 as justification for
submitting evidence not initially part of the record is misplaced. Section
42.23(b) states that “A reply may only respond to arguments raised in the
corresponding opposition or patent owner response.” That section does not
authorize or otherwise provide a means for supplementing the evidence of
record. As explained in the Office Patent Trial Practice Guide, “a reply that
. . . belatedly presents evidence will not be considered and may be returned.”
77 Fed. Reg. at 48,767.
An inter partes review is subject to strict statutory deadlines at both
the institution stage and at the final decision. 35 U.S.C. §§ 314(b),
316(a)(11). Unnecessary delay in the presentation of arguments or evidence
by either party impedes the Board in fulfilling its mandate “to secure a just,
speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
§ 42.1(b); see Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435,
445 (Fed Cir. 2015) (“The guiding principle for the PTAB in making any
determination is to ‘ensure efficient administration of the Office and the
ability of the Office to complete IPR proceedings in a timely manner.’”
(citations omitted)). The Petition represents Petitioner’s case-in-chief, and
Petitioner is tasked with presenting the evidence, upon which Petitioner
relies in support of its challenges to Patent Owner’s claims in its Petition. 35
U.S.C. § 312(a)(3); see 37 C.F.R. § 42.104(b)(5).
Nevertheless, our Rules expressly provide procedures for introducing
supplemental evidence or supplemental information into a proceeding. See
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37 C.F.R. §§ 42.64(b)(2) (supplemental evidence), 42.123(a)–(c)
(supplemental information). Petitioner was aware of Patent Owner’s
challenge to the public accessibility of the ST Datasheet by at least
December 11, 2014, the filing date of the Preliminary Response (see Prelim.
Resp. 19–23), and certainly by no later than March 24, 2015, the service date
of Exhibit 2009 noting objections to Exhibits 1005 and 1012. See Ex. 2010
(serving objections to Exhibits 1015 and 1016 on Sept. 21, 2015). Although
Petitioner was aware early on of the possible need for such supplemental
evidence or information in this proceeding, Petitioner made no apparent
effort to take advantage of the available procedures. See Avocent Huntsville
Corp. v. Cyber Switching Patents, LLC, Case IPR2015-00690, slip op. at 5–
7 (PTAB Oct. 2, 2015) (Paper 28) (“Supplemental evidence, served in
response to an evidentiary objection, is offered solely to support
admissibility of the originally filed evidence and to defeat a motion to
exclude that evidence, and not to support any argument on the merits (i.e.,
regarding the patentability or unpatentability of a claim).”); Palo Alto
Networks, Inc. v. Juniper Networks, Inc., Case IPR2013-00369, slip op. at
2–3 (PTAB Feb. 5, 2014) (Paper 37) (granting a motion to submit
supplemental information regarding public accessibility of references
serving as a basis for instituted grounds). Petitioner does not contend that
Exhibit 1015 or 1016 was not available to Petitioner prior to the filing of
Petitioner’s Reply (Opp. 14–15; see Pet. Reply 17–20 (discussing Exhibits
1015 and 1016)), and Petitioner has not provided any other persuasive
explanation for the undue delay in submitting Exhibits 1015 and 1016.
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Accordingly, we grant Patent Owner’s Motion to Exclude with
respect to Exhibits 1015 and 1016. Therefore, we exclude Exhibits 1015
and 1016, and we do not consider those exhibits, or the arguments in the
Reply Brief addressing those exhibits in this proceeding.
IV. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has not
demonstrated by a preponderance of the evidence that claims 1–10 are
unpatentable.
V. ORDER
For the reasons given, it is:
ORDERED that Petitioner’s request for cancellation of claims 1–10 of
the ’729 patent is denied;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied as to Exhibits 1005 and 1012;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
granted as to Exhibits 1015 and 1016; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Brent K. Yamashita
Alan A. Limbach
DLA PIPER, LLP
Brent.yamashita@dlapiper.com
Alan.limbach@dlapiper.com

PATENT OWNER:

Theodosios Thomas
Stephen Tytran
OPTICAL DEVICES, LLC
ted.thomas@optical-devices.com
sjt@optical-devices.com