Toshiba Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Mar 10, 2015

11197731 (P.T.A.B. Mar. 10, 2015)

Trials@uspto.gov Paper 7
Tel: 571-272-7822 Entered: March 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

TOSHIBA CORPORATION,

Petitioner,1

v.

OPTICAL DEVICES, LLC,
Patent Owner.
_______________

Case IPR2014-01444
Patent RE40,927 E
_______________

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

FRANKLIN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

1 The Notice of Filing Date Accorded, Paper 3, mistakenly included Toshiba
America Information Systems, Inc. as a Petitioner.
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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 37, 48, 49, 51, 55, 58, 60, 61, 63,
64, 67, 69, and 71 of Patent No. US RE40,927 E (Ex. 1001;
“the ’927 patent”). Optical Devices, LLC (“Patent Owner”) filed a
Preliminary Response (Paper 7, “Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314, which provides that an
inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering
the Petition and Preliminary Response, we are persuaded that Petitioner has
not shown a reasonable likelihood that it would prevail in showing the
unpatentability of any challenged claim. Accordingly, the Petition is denied.
B. The Cited Reference and Declaration
Petitioner relies upon the following reference and declaration in
support of its ground challenging the identified claims of the ’927 patent:

Exhibits References and Declaration
1007

Patent No. US 3,016,464 to Bailey (“Bailey”)
1008

Declaration of Lambertus Hesselink, Ph.D.

C. The Asserted Ground of Unpatentability
Petitioner asserts that the challenged claims are anticipated by Bailey
under 35 U.S.C § 102(b)(pre-AIA). Pet. 12.   
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D. Related Proceedings
The parties indicate that the ’927 patent is the subject of Optical
Devices, LLC v. Toshiba Corp. a, Case No. 1:13-cv-10530 (D. Del. 2013).
Pet. 1; Paper 5, 2 (also identifying other related cases). In addition, the
patent currently 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; Paper 5, 1. Further, Petitioner has filed another
petition for inter partes review of the ’927 patent (IPR2014-01443) as well
as for related patents US RE42,913 E (“the ’913 patent”) (IPR2014-01439
and IPR2014-1440) and US RE43,681 E (IPR2014-01441 and IPR2014-
01442). Pet. 2; Paper 5, 1.
The ’927 patent is also the subject of IPR2014-00303, filed by a
different petitioner (inter partes review terminated). The ’913 patent was
the subject of IPR2014-00302, filed by a different petitioner (request for
inter parties review denied).
E. The ’927 Patent
The ’927 patent describes a retroreflective optical system consisting
of a focusing lens and a reflective surface exhibiting some degree of
reflectivity positioned near the focal place of the lens, whereby any radiant
energy from a radiant energy source directed at the system is reflected back
towards the source in a substantially collimated narrow beam. Ex. 1001,
Abstract, 1:33–39. The claims at issue are directed to an apparatus for
measuring the retroreflective characteristics of such an optical system, as
well as a method and apparatus for detecting characteristics or properties of
such a system. See, e.g., id. at Claims 38, 48, and 61.
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Figure 1 of the ’927 patent is reproduced below:

Figure 1 of the ’927 patent depicts an optical system including lens 20 and
reflective surface 22 (e.g., a mirror) positioned in focal plane 24 of lens 20.
Ex. 1001, 2:59–62. Radiation rays 26 and 28 are directed towards lens 20 of
the optical system from a radiation (e.g., light) source (not shown). Id. at
2:62-65. For purposes of clarity, the ’927 patent shows the incident rays at
the top of lens 20 and the reflected rays at the bottom of lens 20. Id. at 2:66–
3:2. Incident rays 26 and 28 are refracted by lens 20 and focused at focal
point 32 on mirror 22. Id. at 3:2–4. The rays are reflected, such that the
angle of reflection equals the angle of incidence, and the reflected rays are
refracted again by lens 20 and emerge therefrom as retroreflected rays 26R
and 28R. Id. at 3:4–8.
Figure 3 of the ’927 patent is reproduced below:

Figure 3 of the ’927 patent shows that the radiant flux density at surface 22B
may vary based on characteristics of the components of the optical system,
such as placement of or imperfections in lens 20B. Id. at 3:28–44; 3:66–
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4:59; see Prelim. Resp. 3. For example, in Figure 3, reflective surface 22B
is positioned substantially, but not entirely, in focal plane 24B. Id. at 3:28–
44.
According to the ’927 patent,
[i]n the system depicted in FIG. 3 . . . the lens 20B is assumed
to be imperfect; i.e., it has aberrations. In this case the rays 38
and 40 are parallel to the optical axis 30B but are not focused at
a single point on the focal plane 24B, and instead form an
image on the mirror 22B, which image is referred to as the
circle of confusion. In most practical optical systems there are
circles of confusion and the mirror is normally positioned at the
plane of least circle of confusion, herein depicted by the
reference numeral 42. The image formed on the mirror by
means of the rays 38 and 40 can be considered to be a radiant
source, and the retroreflected rays 38R and 40R exit from the
lens 20B substantially parallel to each other.

Ex. 1001, 3:28–41. The difference in radiant flux density between the
smaller circle of confusion of Figure 1, i.e., where surface 22 lies in the focal
plane, and that of Figure 3, i.e., where surface 22B lies substantially, but not
entirely, in focal plane 24B, is referred to as the optical gain. See id. at col.
3:28–65. In Figures 1 and 3, the rays retroreflected by the optical system are
in the form of a narrow, substantially collimated beam having a high radiant
flux density. Id. at 3:59–61. “[T]here is an increase in the radiant flux
density of the retroreflected beam due to the narrowing thereof. This
increase in radiant flux density is herein termed optical gain.” Id. at 3:62–
65.
F. Illustrative Claims
Independent claims 37, 48, and 61 are illustrative and are reproduced
below, with emphasis added:
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37. Apparatus for measuring the retroreflective characteristics
of an optical system consisting of at least a focusing means and
a surface exhibiting some degree of reflectivity disposed
substantially in the focal plane of said focusing means, said
apparatus comprising
a radiant energy source,
detection means,
measuring means connected to said detection means, and
means for directing said radiant energy produced by said
source at said optical system,
whereby said radiant energy is retroreflected with an optical
gain by said optical system and detected by said
detecting means and the output thereof is coupled to said
measuring means.

48. A method of detecting characteristics or properties of
an optical system based on a retroreflected beam, comprising:
transmitting radiant energy at an optical system having
retroreflective characteristics;
receiving reflected radiant energy after retroreflection of
the radiant energy;
detecting the reflected radiant energy after retroreflection
to determine at least one characteristic or property of the
optical system.

61. An apparatus for detecting characteristics or properties of
an optical system based on a retroreflected beam, comprising:
transmitting radiant energy at an optical system having
a source of radiant energy;
a detector; and
an optical system that directs radiant energy from the source
toward a retroreflective surface and returns reflected radian
energy to the detector;
wherein the detector determines at least one characteristic
or property of the optical system.

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Ex. 1001, 12:55–13:2; 15:9–19, 40–42, 53–63 (emphasis added). Disputed
limitations are emphasized.
G. Claim Construction
Consistent with the statute and the legislative history of the Leahy-
Smith America Invents Act,2 we interpret claims of an unexpired patent
using the broadest reasonable construction in light of the specification of the
patent. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,766 (Aug. 14, 2012). There is a presumption that claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). An inventor may rebut that presumption by providing a definition of
the term in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
absence of such a definition, limitations are not to be read from the
specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
At least one of the parties proposes a specific construction for each of
the following terms:
1. “Focal Plane”
Patent Owner proposes to construe “focal plane” as “a plane through
the focus perpendicular to the axis of an optical element.” Prelim. Resp. 11.
Petitioner does not object to this construction. Pet. 13. We are persuaded,
for purposes of this decision, that this proposed construction is the broadest
reasonable construction consistent with the Specification of the ’927 patent.

2 Pub. L. No. 112-29 (2011).
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2. “Retroreflected”
Patent Owner proposes to construe “retroreflected” as “having
undergone reflection of an incident ray in a manner such that the reflected
ray is parallel to the incident ray of any angle of incidence.” Prelim. Resp.
12. Petitioner does not object to this construction, wherein any angle of
incidence is “within the field-of-view” of the retroreflector. Pet. 14. We are
persuaded, for purposes of this decision, that this proposed construction is
the broadest reasonable construction consistent with the Specification of the
’927 patent.
3. ”Retroreflection”
Patent Owner proposes to construe “retroreflection” as “reflection of
an incident ray in a manner such that the reflected ray is parallel to the
incident ray for any angle of incidence.” Prelim. Resp. 13. Petitioner does
not object to this construction, wherein any angle of incidence is “within the
field-of-view” of the retroreflector. Pet. 14–15. We are persuaded, for
purposes of this decision, that this proposed construction is the broadest
reasonable construction consistent with the Specification of the ’927 patent.
4. “Optical System”
Patent Owner proposes to construe “optical system” as “a collection
of optical elements including at least a lens and a reflective surface.”
Prelim. Resp. 13–14. Petitioner does not object to this construction. Pet. 15.
We are persuaded, for purposes of this decision, that this proposed
construction is the broadest reasonable construction consistent with the
Specification of the ’927 patent.
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5. “Substantially Concentric”
Patent Owner proposes to construe “substantially concentric” as
“having an axis, or axes, aligned coaxially or nearly coaxially therewith.”
Prelim. Resp. 14. Petitioner does not object to this construction. Pet. 15.
We are persuaded, for purposes of this decision, that this proposed
construction is the broadest reasonable construction consistent with the
Specification of the ’927 patent.
6. “Optical Gain”
Patent Owner proposes to construe “optical gain” as “a change in
radiant flux density of reflected radiant energy.” Prelim. Resp. 14.
According to the Patent Owner, “the retroreflected radiant energy does not
necessarily or inherently exhibit optical gain.” Id. at 17.
Petitioner argues that “in the case of a retroreflector with a reflective
surface in the focal plane of a lens and incoming light that is collimated
(assuming no significant vignetting) . . . ‘optical gain’ is an inherent property
of such a retroreflector.” Pet. 19–20. According to Petitioner, “relative to a
Lambertian surface without a lense, any retroreflector must necessarily
reflect radiant energy with ‘an actual increase in [] radiant flux density due
to a narrowing thereof.’” Id. at 22. In other words, retroreflected light
necessarily has the attribute of optical gain because the lens concentrates
rays that otherwise would be reflected into a larger solid angle into a smaller
one. Pet. 19–21.
Petitioner provides the following comparison figure at Petition page
21 and at Ex. 1008 ¶¶ 26, 47:
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Patent RE40,927 E

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collimated by the lens so that the outbound reflected light rays are parallel to
the incoming light rays.” Pet. 30–31. Petitioner notes that the ’927 patent
states that “[a]ny optical instrument which includes a focusing lens and a
surface having some degree of reflectivity, no matter how small, positioned
near the focal point of the lens, act as a retroreflector.” Id. at 35.
Patent Owner argues that Bailey does not anticipate any of the
challenged claims. Prelim. Resp. 1. In particular, Patent Owner argues that
Bailey doesn’t disclose radiant energy retroreflected by an optical system.
Id. at 31. According to Patent Owner, Petitioner relies only on Bailey’s
Figure 3 as demonstrating that “the light from light souce 62 is collimated,
that the collimated light is focused to a point by lens 57, and that the surface
12 is placed at the focus point of the light.” Id. (quoting Pet. 29). Patent
Owner asserts that Bailey, however, does not state or otherwise describe that
Figure 3 exhibits retroreflection, or even that object 12 is located at a focal
point of Bailey’s lens 57. Id. at 31–32.
Based on our review of Bailey’s Specification, and our construction of
the claim terms “retroreflected” and “retroreflection,” we agree with Patent
Owner. Contrary to Petitioner’s arguments, Bailey does not describe Figure
3 as exhibiting retroreflected radiant energy or retroreflection. Nor does
Bailey explain that object 12 is at the focal point of lens 57, or that the
reflection of an incident ray is in a manner such that the reflected ray is
parallel to the incident ray for any angle of incidence. Further, we agree
with Patent Owner that Petitioner has not identified in Bailey a description
that its Figure 2 embodiment generates a collimated beam of light. See
Prelim. Resp. 32. Moreover, although we recognize the apparent expertise
of Dr. Hesselink (see Ex. 1008 ¶¶ 2–4), we note that his testimony regarding
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retroreflection relies only upon assumptions made with respect to Bailey’s
Figure 3 (see id. ¶ 33). As Patent Owner correctly notes, it is insufficient to
rely on a schematic diagram alone to define precise proportions of elements
shown in such a diagram. Id. ¶¶ 32–33 (citing Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000)). For these reasons,
we are persuaded that Petitioner has not established that radiant energy is
retroreflected in Bailey.
Patent Owner argues additionally that Bailey doesn’t receive
retroreflected light with an optical gain. Prelim. Resp. 33–35. Because we
are not persuaded that retroreflection is taking place in Bailey, we likewise
are not persuaded that light reflected from the surface of object 12 is
received with an optical gain.
Consequently, based on the information presented, Petitioner has not
established sufficientyly that Bailey discloses each and every element of
independent claims 37, 48, and 61. Therefore, on this record, we are
persuaded that Petitioner has not set forth a reasonable likelihood of
prevailing in establishing that independent claims 37, 48, and 61, or their
respective dependent claims 49, 51, 55, 58, 60, 63, 64, 67, 69, and 71 are
anticipated by Bailey.
III. CONCLUSION
For the foregoing reasons, we conclude that, based on the information
presented in the Petition, Petitioner has not established a reasonable
likelihood of prevailing in showing that any claim of the ’927 patent is
unpatentable based upon the asserted anticipation ground.
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to claims 37, 48, 49, 51, 55,
58, 60, 61, 63, 64, 67, 69, and 71 of the ’927 patent under 35 U.S.C.
§ 102(b)(pre-AIA) as anticipated by Bailey; and
FURTHER ORDERED that no inter partes review is instituted.

PETITIONER:

Alan A. Limbach
Brent K. Yamashita
DLA PIPER LLP (US)
alan.limbach@dlapiper.com
brent.yamashita@dlapiper.com

PATENT OWNER:

Thomas Engellenner
Reza Mollaaghababa
Andrew Schultz
PEPPER HAMILTON LLP
engellerrert@pepperlaw.com
mollaaghababar@pepperlaw.com
schultza@pepperlaw.com

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