Toshiba Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Mar 9, 2016

12952135 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper 34
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 IPR2014-01447
Patent 8,416,651 B2
_______________

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

ARPIN, 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
In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
Toshiba Corporation (“Petitioner”) challenges the patentability of claims 1–
39 (“the challenged claims”) of Patent No. US 8,416,651 B2 to Kadlec (Ex.
1001, “the ’651 patent”), owned by Optical Devices, LLC (“Patent Owner”).
We have jurisdiction under 35 U.S.C. § 6(c), and this Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
addresses issues and arguments raised during trial. For the reasons
discussed below, we determine that Petitioner has not met its burden to
prove, by a preponderance of the evidence, that any of claims 1–39 of the
’651 patent are unpatentable on any of the asserted grounds, upon which we
instituted inter partes review.
A. Procedural History
On September 3, 2014, Petitioner filed a Petition (Paper 4, “Pet.”) to
institute an inter partes review of claims 1–39 of the ’651 patent. Petitioner
asserted grounds for unpatentability based on the following references:
Exhibit Nos. References
1003 Patent No. US 6,204,787 B1 to Baird, filed March 31, 1999
(“Baird”)
1004 A. Baschirotto et al., “A Compact-Disc Analog-to-Digital
Front-End in BiCMOS Technology,” IEEE Transactions on
Consumer Electronics, May 2000 (“Baschirotto”)
1005 Product Preview for ST TDA7522, “Digital Servo and
Decoder,” May 19981 (“ST Datasheet”)

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.
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Patent Owner filed a Preliminary Response (Paper 8, “Prelim. Resp.”). On
March 10, 2015, we issued an Institution Decision of inter partes review
(Paper 9, “Inst. Dec.”), instituting review on the following grounds:
Ground Reference(s) Challenged Claims
35 U.S.C. § 102(e) Baird 1–13, 30, 32, 35, and
37
35 U.S.C. § 103(a) Baird and Baschirotto 14–29, 31, 33, 34, 36,
38, and 39
35 U.S.C. § 103(a) Baird and ST Datasheet 1–13, 30, 32, 35, and
37
35 U.S.C. § 103(a) Baird, Baschirotto, and
ST Datasheet
14–29, 31, 33, 34, 36,
38, and 39
After institution, Patent Owner filed a Patent Owner Response to the
Petition (Paper 19, “PO Resp.”), and Petitioner replied (Paper 21, “Pet.
Reply”). A combined oral hearing for the instant proceeding and related
Cases IPR2014-01445 and IPR2014-01446 was held on January 13, 2016.
A transcript (Paper 33, “Tr.”) of that hearing is included in the record.
B. Related Proceedings
Petitioner indicates that the ’651 patent is asserted in Optical Devices,
LLC v. Toshiba Corporation, Case No. 1:13-cv-10530 (D. Del. 2013). Pet.
1. Petitioner also indicates that the ’651 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, Investigation No. 337-TA-897. Id.

§ 102.
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Patent Owner identifies additional litigation that may affect or be
affected by this inter partes review, including Optical Devices, LLC v.
Panasonic Corp., et al., Civil Case No. 1:13-cv-00726 (D. Del. 2013);
Optical Devices, LLC v. Lenovo Group, Ltd., et. al., Civil Case No. 1:13-cv-
01526 (D. Del. 2013); Optical Devices, LLC v. Nintendo Co., Ltd., et. al.,
Civil Case No. 1:13-cv-01528 (D. Del. 2013); Optical Devices, LLC v.
Samsung Electronics Co., Ltd., et. al., Civil Case No. 1:13-cv-01529 (D.
Del. 2013); and Optical Devices, LLC v. LG Electronics, Inc., Civil Case
No. 1:13-cv-01033 (D. Del. 2013). Paper 6, 1–2.
Patent Owner indicates that the ’651 patent claims priority to U.S.
Provisional Application No. 60/264,351, as do Patent Nos. US 7,839,729 B2
and 7,196,979 B2, which are involved in inter partes reviews IPR2014-
01445 and IPR2014-01446, respectively, upon which we also have instituted
inter partes review. Pet. 1–2; Paper 5, 1.
The ’729 patent is the parent of the ’651 patent, and the claims
of the ’729 and ’651 patents are similar. The subject matter of
the ’979 patent overlaps to a significant degree with the subject
matter of the ’651 patent, and the claims of the ’979 and ’651
patents contain common limitations.
Pet. 1–2. Petitioner also filed other petitions for inter partes review with
respect to related patents, including IPR2014-01439 (Patent No. US
RE42,913 E), IPR2014-01441(Patent No. US RE43,681 E), IPR2014-01442
(Patent No. US RE43,681 E), and IPR2014-01443 (Patent No. US RE40,927
E). See Pet. 1–2; Paper 6, 1.
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II. THE ’651 PATENT (EX. 1001)
A. Subject Matter
The ’651 patent generally relates to tracking and focus servo systems.
Components of the apparatus recited in the challenged claims are depicted in
Figures 4A–4D of the ’651 patent.
Portions of Figures 4A and 4C, as annotated by Petitioner, are
reproduced below:

In the illustration above, analog signals from each of the photodetectors are
highlighted. The photodetectors receive light reflected from an optical disc
and generate analog electrical signals indicative of the received light. Pet.
16. Photodetectors are labeled A through F, and the analog signals received
by the photodetectors are labeled AV through FV. Ex. 1001, Figs. 4A, 4C;
col. 11, ll. 25–46, col. 13, ll. 47–50.
Portions of Figures 4A and 4C, as annotated by Petitioner, again are
reproduced below:
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Id. at Figs. 4A, 4C. The highlighted offset blocks perform offset
adjustments. An offset adjustment block may adjust the analog signals to
compensate for offset, and a gain adjustment block may adjust the amplitude
of the signal. Id. at col. 13, l. 47–col. 14, l. 24. The highlighted gain
adjustment blocks amplify the analog signals from the photodetectors. Id.
By removing offsets and amplifying the signals before sampling, the signals
may be scaled to a desired range of amplitudes for digitization. Id. at col.
14, ll. 37–40.
Portions of Figures 4A and 4C, as annotated by Petitioner, again are
reproduced below:
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Id. at Figs. 4A, 4C. After offsets are removed and the signals are amplified,
the signals are sent through low pass filters. Id. at col. 14, ll. 46–59. A low-
pass filter blocks high frequency signals and allows only low frequency
signals to pass. Pet. 18. The low-pass filters are highlighted, and the filters
are labeled as anti-alias filters 406-1 through 406-6. Id.
Portions of Figures 4A and 4C, as annotated by Petitioner, once again
are reproduced below:

Id. at Figs. 4A, 4C. The analog signals are converted into digital signals
using analog-to-digital converters (“ADCs”). Id. at col. 15, ll. 13–34. The
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analog-to-digital converters are highlighted, and the converters are labeled
as ADC in the figure. Id. After the signals are low-pass filtered and
amplified, the signals are digitized using an ADC. Id. Consequently, the
analog signals are sampled and converted into a numerical representation as
digital signals. Pet. 19–20.
A portion of Figure 4D, as annotated by Petitioner, is reproduced
below:

Id. at Fig. 4D; col. 15, ll. 35–41. The digital signal processor (“DSP”) and
the input digital signals are highlighted.
The DSP calculates a tracking error signal using digital signals and
performs servo algorithms to generate a tracking control signal. Id. at col.
19, ll. 5–17; col. 25, ll. 35–51. The tracking control signal may be used to
adjust the tracking actuator, which may move an arm containing the optical
pickup unit across the tracks. Id. at col. 12, l. 63–col. 13, l. 8. Calculating a
tracking error signal and running servo algorithms to generate a tracking
control signal may include performing arithmetic functions on the
photodetector signals. Pet. 20–21 (citing Ex. 1006 ¶ 57).
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The DSP then calculates a focus error signal using digital signals and
performs servo algorithms to generate a focus control signal. Id. at col. 19,
ll. 5–57. After computing the focus error signal, the digital signal processor
generates a focus control signal. Pet. 21. The focus control signal may be
used to control the focus actuator, which may use an actuator arm including
a flex axis to move the optical pickup unit toward or away from the disc. Id.
at col. 6, ll. 3–14; col. 12, l. 63–col. 13, l. 8. Calculating a focus error signal
and running servo algorithms to generate a focus control signal may include
performing arithmetic functions on the photodetector signals. Pet. 21 (citing
Ex. 1006 ¶ 58).
B. Illustrative Claims
Independent claims 1, 5, 9, and 13 are illustrative and are reproduced
below:
1. A digital servo for an optical disk drive, comprising:
an analog-to-digital converter for converting low-pass filtered
and gain-adjusted versions of photo detector output signals into digital
signals; and
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.

5. A digital servo method for an optical disk drive, comprising:
receiving at an integrated circuit low-pass filtered and
gain-adjusted versions of photodetector output signals resulting
from an illumination of an optical disk;
within the integrated circuit, digitizing versions of the
photodetector signals to produce digital signals;
in a digital signal processor, processing the digital
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signals into either a tracking error signal (TES) or a focus
error signal (FES); and
in the digital signal processor, processing TES or FES
through a servo algorithm to produce a control signal, the
control signal being adapted to drive an actuator such that
either TES or FES is minimized.

9. A digital servo for an optical disk drive, comprising:
an analog-to-digital converter configured to convert
lowpass filtered and gain-adjusted versions of photo detector
output signals into at least one digital signal; and
a digital signal processor configured to determine at
least one of tracking error and focus error from the at least one
digital signal and to determine, through at least one servo
algorithm, at least one of a tracking control signal from the
tracking error and a focus control signal from the focus error.

13. A digital servo method for an optical disk drive,
comprising:
receiving low-pass filtered and gain-adjusted versions of
photo detector output signals resulting from an illumination of
an optical disk;
digitizing versions of the photo detector signals to
produce digital signals; and
determining, through servo algorithms in a digital signal
processor, at least one of a tracking control signal based on a
tracking error determined from the digital signals and a focus
control signal based on a focus error determined from the
digital signals.

Ex. 1001, col. 45, ll. 41–51, col. 45, l. 60–col. 46, l. 3, col. 46, ll. 12–22, 31–
43 (emphasis added to identify disputed limitations).
Claims 2–4, 17, 25, and 30 depend directly or indirectly from claim 1;
claims 6–8, 18–20, 26–28, and 32–34 depend directly or indirectly from
claim 5; claims 10–12, 21, 29, and 35 depend directly or indirectly from
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claim 9; and claims 14–16, 22–24, and 37–39 depend directly or indirectly
from claim 13. See id. at col. 45, l. 52–col. 48, l. 37.
III. 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
USLW 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
the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
A. “digital signal processor” (Claims 1, 5–9, 13, 15, 17–19, 21–23, 25–
27, 29, 31, 33, 36, and 38)
In the Institution Decision, we construed the claim term “digital signal
processor” (“DSP”) as meaning “an integrated circuit designed for
processing digital signals in accordance with programmed commands.” Inst.
Dec. 12.
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In its Patent Owner Response, Patent Owner asserts that our initial
construction is “overly broad and unreasonable” because it “encompasses
virtually any general purpose microprocessor or microcontroller unit.” PO
Resp. 13. 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. at 13. 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 13–14 (citing Ex. 1001, col. 18, ll. 51–60 (describing, for example, that
“[i]n some embodiments, DSP 416 operates under instructions from
microprocessor 432.” (emphasis omitted))).
In further support of its proposed claim construction, Patent Owner
also 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 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). PO Resp. 15–16. In further
support of its proposed construction, Patent Owner relies upon the
Declaration of Raymond de Callafon, Ph.D. (Ex. 2008, “de Callafon
Declaration” or “de Callafon Decl.”). Patent Owner also relies upon the
deposition testimony of Petitioner’s declarant, Richard Zech, Ph.D. (Ex.
1006, “Zech Declaration” or Zech Decl.”), that a DSP is a specialized
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microprocessor architected and designed to perform high speed processing
of digital signals, particularly real-time data processing. PO Resp. 15. In
particular, Patent Owner notes that Petitioner’s declarant, Dr. Zech, testified
that
In order to achieve high speed processing of digital signals and
low latency, one of ordinary skill in the art would understand that
most DSP processors have a specialized data path, a specialized
instruction set, many memory banks and buses, and execution
control, among other things.
Id. at 15 (citing Ex. 2001, 56:16–57:7). Accordingly, Patent Owner
contends that “a digital signal processor or DSP should be construed as ‘a
specialized integrated circuit structured and arranged for high speed
processing of digital signals in accordance with programmed commands.’”
Id. at 16 (quoting Ex. 2008 ¶ 23(a)).
In its Reply, 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.” Pet. Reply 3–6. In particular, Petitioner asserts that
“[n]owhere in the ’651 patent specification or claims is a DSP described as a
‘high speed’ processor.” Id. at 6; see Tr. 9:17–10:3. Further, of Patent
Owner’s proposed construction, Petitioner notes that “[i]t also begs the
question of the difference between ‘high speed’ and normal speed. Patent
Owner’s additional limitation appears to come from two dictionaries and not
from the specification. See Exhibits 2002, 2003.” Pet. Reply 6; see Tr.
94:20–96:3. We agree.
During the oral hearing, we asked Patent Owner how we should
construe or understand the term “high speed.” Tr. 38:15–17. Patent Owner
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stated that “high speed is more than just the normal evolution of
microprocessors. It is a result of the specialized architecture of a DSP.” Id.
at 38:19–21. Patent Owner further stated that “high speed is higher than a
general purpose processor” and that this “higher speed” is obtained because
the DSP has a “specialized” architecture. Id. at 39:7–15. Thus, Patent
Owner contends that the DSP is “high speed” because it is “specialized” (id.
at 38:24–39:2) and is “specialized,” so that it can be “high speed” (id. at
39:21–40:3. Nevertheless, Patent Owner provides neither an absolute nor
relative measure of “high speed” (id. at 98:12–23) nor a precise description
of “specialized” (id. at 41:8–20). Patent Owner’s proposed construction is
vague and ultimately circular.
As in our Institution Decision, here again we agree with Patent Owner
that the Specification of the ’651 patent recognizes that a DSP is different
from a general purpose microprocessor. 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 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, col. 13, ll. 35–46. From this disclosure, the Specification suggests
that a DSP operates faster than a microprocessor, and, in some
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embodiments, real time digital servo algorithms can be executed on a DSP.
The Specification, however does not expressly define the term “digital signal
processor.”
We further note the competing views of Dr. de Callafon (Ex. 2008),
on behalf of Patent Owner, and of Dr. Zech (Ex. 1006), on behalf of
Petitioner. In particular, we 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 understand that “most DSP processors have,” as
opposed to features that all DSP processors require. Ex. 2008 ¶ 21(a)
(emphasis added). Dr. Zech’s deposition testimony describing the design of
a DSP, also relied upon by Patent Owner, is given reduced weight 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 “digital signal processor” 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. Ex. 2002, 145; Ex. 2003,
198. We note that each of those dictionaries define a DSP as being designed
for “high speed” manipulation of data/digital signals. Id. Patent Owner,
however, has not directed our attention to evidence establishing what “high
speed” encompasses. See Tr. 98:12–23; see also id. at 95:10–96:3
(Petitioner’s argument that speed governed by function).
We also note one of the submitted dictionary definitions characterizes
“high speed,” such that digital signal manipulation as “real-time.” Ex. 2003,
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198. Another dictionary definition simply includes “high speed.” Ex. 2002,
145. However, the Specification discloses that only some embodiments can
execute real time digital servo algorithms on a DSP. See Ex. 1001, col. 13,
ll. 38–42. 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. 16 (providing a minimal definition for a
DSP).
We are persuaded, however, that the broadest reasonable
interpretation of the term “digital signal processor,” consistent with the
Specification and the ordinary and customary meaning of the term as
understood at the time of the invention by a person of ordinary skill in the
art, 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.” We do not adopt Patent
Owner’s proposal to characterize further an integrated circuit as
“specialized.” We determine that proposed modification is 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 operation faster than a microprocessor.
B. “versions of photodetector output signals” (Claims 1, 5, 9, and 13)
We construed “versions of photodetector output signals” in the
Institution Decision, as “individual analog signals derived from
photodetector output signals.” Inst. Dec. 10–11. The parties do not
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challenge this construction, and we do not find any reason to depart from it.
PO Resp. 16; see Pet. Reply 1–2.
C. “digital signals” (Claims 1, 5–7, and 13) and “digital signal”
(Claim 9)
We construed “digital signal(s)” in the Institution Decision, as “a
signal or signals using two or more states, e.g., ‘0’ or ‘1,’ to represent signal
values.” Inst. Dec. 13. The parties do not challenge this construction, and
we do not find any reason to depart from it. PO Resp. 16; see Pet. Reply 1–
2.
D. “focus error signal” (Claims 1, 5, 7, and 13) and “focus error”
(Claim 9)
We construed “focus error signal” and “focus error” in the Institution
Decision, as “a digital signal representing an out-of-focus condition.” Inst.
Dec. 13–14. The parties do not challenge this construction, and we do not
find any reason to depart from it. PO Resp. 17; see Pet. Reply 1–2.
E. “tracking error signal” (Claims 1, 5, 6, and 13) and “tracking error”
(Claim 9)
We construed “tracking error signal” and “tracking error” in the
Institution Decision, as “a digital signal representing an off-track condition.”
Inst. Dec. 15–16. The parties do not challenge this construction, and we do
not find any reason to depart from it. PO Resp. 17; see Pet. Reply 1–2.
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F. “the digital signal processor being further configured to determine a
focus error signal (FES) and a tracking error signal from the digital
signals” (Claim 1); “in a digital signal processor, processing the
digital signals into either a tracking error signal (TES) or a focus
error signal (FES)” (Claim 5); “a digital signal processor configured
to determine at least one of tracking error and focus error from the at
least one digital signal” (Claim 9); and “in a digital signal processor
. . . a tracking error determined from the digital signals and . . . a
focus error determined from the digital signals” (Claim 13)
We construed these terms in the Institution Decision, as “the digital
signal processor being further configured to use programmed commands to
calculate a focus error signal and a tracking error signal from the digital
signals.” Inst. Dec. 16–17. The parties do not challenge this construction,
and we do not find any reason to depart from it. PO Resp. 18–19; see Pet.
Reply 1–2.
G. Other Claim Terms
Neither party offers constructions of other terms in the challenged
claims. See PO Resp. 12–19; Pet. Reply 1–2. Only terms that are in
controversy in this proceeding need to be construed, and then 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). Therefore, no other claim
terms require express construction.
IV. PRIOR ART CHALLENGES
Petitioner asserts that claims 1–39 of the ’651 patent are unpatentable
under 35 U.S.C. § 102(e) as anticipated by Baird or under 35 U.S.C.
§ 103(a) as rendered obvious over Baird in combination with Baschirotto or
ST Datasheet, or both. See supra Section I.A. Petitioner also relies upon the
Zech Declaration.
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A. Anticipation by Baird
1. Overview
Petitioner argues that claims 1–13, 30, 32, 35, and 37 of the ’651
patent are anticipated by Baird. See supra Section I.A. “A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The
elements must be arranged as required by the claim, but this is not an
ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed, and thus, cannot anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008);
accord Application of Arkley, 455 F.2d 586 (CCPA 1972). Moreover, “it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
2. Baird (Ex. 1003)
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.
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Baird’s Figure 1 is a conceptual and block diagram of an exemplary personal
computer based optical disk playback system. Ex. 1003, 2:59–60. Optical
pick-up unit 101 includes photodetectors A–F which provide six respective
signals to a “drive manager integrated circuit” (“IC”) 100. IC 100 includes
“servo channel” 300, which provides servo control for motors and actuators
associated with mechanical manipulation of the optical playback system.
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. Servo
data processing is performed by on-board servo control processor (“SCP”)
304. Id. at 6:12–15. SCP 304 operates according to an instruction set
provided by microcontroller 106 (Figure 1). Id. at 6:12–15.
a. “a digital signal processor configured to receive the digital
signals” (Claim 1)2
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. 40 (quoting Ex. 1003, col. 6, ll. 4–15);
see Ex. 1003, Fig. 3; Ex. 1006 ¶ 72). Specifically, Petitioner asserts that the
SCP receives six separate digitized photodetector signals, each of which has
been amplified using six separate VGAs 301 and amplified using separate

2 Similar limitations appear in the other challenged, independent claims. Tr.
35:17–20.
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ADCs 302. Id. (citing Ex. 1003, col. 5, l. 63–col. 6, l. 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, col 5, ll. 56–62;
citing Ex. 1006 ¶ 76). 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, col. 6, ll. 12–15). In view of these disclosures, Petitioner argues 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. at 40–41; see Ex. 1006 ¶ 72.
In further support of its argument that one skilled in the art would
understand Baird’s servo processor is a DSP, Petitioner refers to the file
history of the parent application, U.S. Patent Application No. 11/969,190,
wherein Applicant stated the following:
Applicant appreciates the suggested replacement titleprovided
by the examiner. However, it is respectfully noted 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. 41 (quoting Ex. 1009, 139) (bolding added in Petition). We note that
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Applicant further states that:
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.
Ex. 1009, 140–141 (emphasis added, underlining in original); see Tr. 32:19–
21. According to Petitioner, “‘servo control processor’ of Baird also must
be a ‘digital signal processor,’ particularly since it also receives versions of
photodetector signals, which was the alleged point of novelty continually
advocated by the Applicants during prosecution.” Pet. 41 (emphasis added).
Moreover, we are persuaded that Applicant’s use of the terms “digital signal
processor” and “servo processor” interchangeably further evidences that
Baird’s SCP encompasses a DSP.
Patent Owner contends that Baird’s SCP does not constitute “a digital
signal processor (DSP),” as required by independent claims 1, 5, 9, and 13.
PO Resp. 22–30. 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
25 (citing Ex. 2008 ¶ 33) (emphasis added). Patent Owner contends that the
“specialization ensures that calculations can be done as fast as possible with
as little latency as possible.” Id. at 26 (citing Ex. 2008 ¶ 35).
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 29 (citing Ex. 2008 ¶ 40); see Tr. 44:22–46:15.
According to Patent Owner, because the memory to process data is not part
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of the processor architecture, “the SCP is inconsistent with a typical DSP
architecture.” Id. (emphasis added). In other words, Patent Owner contends
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. at 29–30 (citing 2008 ¶ 43).
Based on Petitioner’s argument and 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. See Tr. 14:23–15:16. Although the RAM is
separated from the SCP, Figure 3 depicts a two-way arrow positioned
directly between the two elements. Ex. 1003, Fig. 3. Patent Owner has not
explained persuasivley why a person skilled in the art 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 testifies that, because Baird’s RAM is separate
from the SCP, it is inconsistent with “typical” DSP architecture. Ex. 2008
¶¶ 33, 42. What is typical of an element is not definitive of its
characteristics. 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 above 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,” the preponderance
of the evidence establishes that one of ordinary skill in the art would
understand Baird’s SCP to disclose a DSP used to perform servo functions.
b. “Determine a focus error signal (FES) and a tracking error
signal (TES) from the digital signals” (Claim 1)3
Having determined that Baird’s servo control processor discloses the
recited, digital signal processor, we next consider whether Baird’s servo control
processor performs all of the recited operations of the challenged claims. In
particular, Petitioner argues that “[i]t is inherent that the servo control
processor of Baird determines focus error signal and tracking error signal.”
Pet. 42 (emphasis added).
To establish inherency, the extrinsic evidence must make
clear that the missing descriptive matter is necessarily present in
the thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however,
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.
PO Resp. 30–31 (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (emphasis added) (citations omitted)). Petitioner argues that, because
Baird discloses that the servo control processor performs focus and tracking
control loops (Ex. 1003, col. 5 l. 63–col. 6, l. 11), “it is necessarily the case
that a focus error and tracking error signal are generated” in order to perform
that function (Pet. 42–43). See Ex. 1006 ¶ 77; Tr. 20:21–23:5. According to
Petitioner and, its declarant, Dr. Zech, one of ordinary skill in the art would

3 Similar limitations appear in the other challenged, independent claims. Tr.
35:17–20.
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understand that those error signal calculations must occur within the servo
control processor because Baird does not disclose any other circuitry or
block in its design that could perform that function. Pet. 41–43; Ex. 1006
¶ 77. In addition, Petitioner argues that Baird’s servo control processor
necessarily determines a focus error signal and a tracking error signal
because Baird’s disclosure that the servo control processor receives digitized
photodetector signals and generates servo control signals requires a
determination of the error signals. Pet. 42–43 (citing Ex. 1003, Figs. 1, 3;
Ex. 1006 ¶ 77).
Patent Owner contends that it is not inherent that the servo control
processor of Baird is configured to determine a focus error signal (FES) and
a tracking error signal (TES) from the digital signals it receives, as required
by both independent claims. PO Resp. 30–39; see Ex. 2008 ¶ 45. Patent
Owner acknowledges that Baird teaches that “[t]he integrated servo system
operates four control loops: focus, tracking, sled, and spindle, using an
internal servo control processor requiring little external microcontroller
intervention.” PO Resp. 31 (quoting Ex. 1003, col. 5, ll. 59–62 (emphasis
added)); see Ex. 2008 ¶ 46. However, 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.” Id. at 32.
Regarding Baird’s disclosure that the SCP processes the servo loops
to create control signals, Patent Owner contends that “Baird fails to provide
any description of how its control loops operate” or even if the loops are
“open” or “closed.” Id. at 34 (citing Ex. 2008 ¶ 52). According to Patent
Owner, “a person of ordinary skill in the art would also understand that there
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are different types of servo control loops, including, but not limited to,
‘open’ and ‘closed’ servo control loops.” Id. at 33 (citing Ex. 2008 ¶ 51).
Patent Owner contends that one of ordinary skill in the art also would have
understood that open loops operate without any feedback and, thus, do not
require the determination of error signals. Id. at 34 (citing Ex. 2008 ¶ 52).
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. at 34–35 (citing Ex.
2008 ¶ 53). 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 or measurements of the process disturbances.” Id. 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. at
35 (citing Ex. 2008 ¶ 53). Patent Owner and Dr. deCallafon 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.” Id. (citing Ex. 2008 ¶ 54). Patent Owner asserts
that it was known in the art that repetitive control signals needed for such a
repetitive system could be designed via iterative learning or a repetitive
control algorithm and that one of skill in the art would have understood “that
the repetitive control signals are applied in an open loop fashion to control
the actuator in the optical disk drive.” Id. (emphasis added). 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’
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or ‘closed’.” Id.
Further, Patent Owner asserts that one of skill in the art would have
understood that, although closed loops operate based upon feedback, “that
feedback need not result in the determination of error signals.” Id. at 35–36
(citing Ex. 2008 ¶ 55). In such cases, Patent Owner contends 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. at 36 (citing Ex. 2008 ¶ 55).
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 33; see Tr. 64:16–65:14.
In its Reply, Petitioner argues that Patent Owner has not provided any
evidence that alternative control methods could 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. at 12 (citing Ex.
1017, 110:24–111:6 (“If they are purely open loop, probably not. If they
were closed loop implementations, I can imagine they used a photodetector
signal also for servo.” (emphasis added))). Because Baird discloses
receiving servo data from photodetector signals, Petitioner argues that, “by
Patent Owner’s own admission, Baird teaches away from using an open loop
system for servo control.” Pet. Reply 12 (emphasis added). Further,
Petitioner argues that optical disks contain imperfections, such that an open
loop control system would lack the necessary feedback to adjust for those
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imperfections. Id. at 12–13 (citing Ex. 1006 ¶¶ 24, 33–35). We take
Petitioners’s argument to be that Patent Owner makes a weak argument in
suggesting that Baird may use open loop control.
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 have understood 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 ¶ 77). However, neither Petitioner nor Petitioner’s
declarant, Dr. Zech, provides any explanation why that is so. 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. In
particular, 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); see Tr. 100:13–101:2. 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 Ex. 2001, 151:15–18; see MEHL/Biophile Int’l. Corp. v.
Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be
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.”) (citing Fed.
R. Evid. 705; 37 C.F.R. § 42.65; Rohm & Haas Co. v. Brotech Corp., 127
F.3d 1089, 1092 (Fed. Cir. 1997)). Thus, we do not credit Dr. Zech’s
unsupported opinions with persuasive weight.
Further, based upon our review of the record, we find that Patent
Owner has presented a persuasive rebuttal to Petitioner’s assertion that
Baird’s SCP necessarily determines FES and TES. See PO Resp. 30–39
(discussed supra). In particular, Patent Owner and Dr. de Callafon have
provided reasonable explanations and examples demonstrating that Baird’s
SCP may operate using an open loop that is not dependent upon the
determination of FES or TES, rather than a closed loop that is based upon
feedback not requiring the determination of those error signals. Id. Thus,
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we are not persuaded that a person of ordinary skill in the art would have
understood that Baird must operate as a closed loop that is based upon
feedback requiring the determination of FES or TES.
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. 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. 34–35; Ex. 2008 ¶ 53. Patent Owner and Dr. de Callafon
also explained 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. PO Resp. 35;
Ex. 2008 ¶ 53. 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”4 from using an open loop system for servo control. Pet. Reply 12. 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, 110:24–111:6.

4 “Teaching away” arguments, moreover, are not appropriate in the context
of anticipation. Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998) (The prior art was held to anticipate the claims even
though it taught away from the claimed invention. “The fact that a modem
with a single carrier data signal is shown to be less than optimal does not
vitiate the fact that it is disclosed.”).
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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 111:3–6 (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. Id. at 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.
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 could operate in an open or closed loop, we are
persuaded that Petitioner has failed to establish by a preponderance of the
evidence that Baird’s SCP must determine, calculate, or otherwise provide
FES and TES, as required by the challenged independent claims 1, 5, 9, and
13. Thus, Petitioner has failed to establish by a preponderance of the
evidence that Baird anticipates claims 1–13, 30, 32, 35, and 37 of the ’651
patent.
B. Obviousness Over Baird in Combination with Other References
1. Overview
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter[,] as a whole[,] would have been obvious at the time
the invention was made to a person having ordinary skill in the art to which
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said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations.5 Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
2. 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); Ryko Mfg. Co. v. Nu-Star, Inc., 950
F.2d 714, 718 (Fed. Cir. 1991)).
Petitioner argues that one of ordinary skill in the art at the time of the
filing of the ’651 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.

5 Patent Owner did not contend in its Patent Owner Response that secondary
considerations are present, which would render the challenged claims
patentable over the applied references. See Pet. Reply 25; see also Paper 10,
3 (“The patent owner is cautioned that any arguments for patentability not
raised in the response will be deemed waived.”).

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Pet. 34 (citing Ex. 1006 ¶¶ 63–64) (emphases added).
Patent Owner contends 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. 11 (citing Ex.
2008 ¶¶ 9–11) (emphasis added).
Despite the presentation of an alternative definition for a person of
ordinary skill in the art by Patent Owner, neither Patent Owner nor Petitioner
presents argument or evidence as to how and why its definition affects any
determination in this proceeding. Moreover, neither Patent Owner nor
Petitioner challenges the other party’s declarant’s qualifications to testify
regarding what a person of ordinary skill in the art would have understood as
of the date of the alleged inventions. Upon review of the declarants’
credentials (Ex. 1007 (Dr. Zech’s Curriculum Vitae); Ex. 2008 (Attachment
A – Dr. de Callafon’s Biography)), we find that each declarant exceeds
either party’s definition of a person of ordinary skill in the art, and we are
persuaded that each declarant is qualified to testify as to what a person of
ordinary skill in the art would have understood (see, e.g., Ex. 1006 ¶ 64; Ex.
2008 ¶ 10).
Based on our consideration of the record, we find that the evidence as
a whole supports Petitioner’s description of the level of ordinary skill in the
art. Therefore, to the extent that it is necessary for us to determine the
definition of a person of ordinary skill in the art, we continue to apply
Petitioner’s definition. See Trustees of Columbia Univ. v. Illumina, Inc., 620
F.App’x. 916, 921–22 (Fed. Cir. 2015) (non-precedential).
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3. Baird and Baschirotto
Petitioner argues that claims 14–29, 31, 33, 34, 36, 38, and 39 of the
’651 patent are rendered obvious over Baird and Baschirotto. See supra
Section I.A. For the reasons set forth below, we are persuaded that
Petitioner fails to establish by a preponderance of the evidence that the
challenged claims are rendered obvious over Baird and Baschirotto.
a. Baschirotto (Ex. 1004)
According to Petitioner (Pet. 48–49), Baschirotto discloses an
integrated circuit for a compact disc player that includes a servo processor
for processing focus and tracking error signals. Ex. 1004, 0002. Baschirotto
explains that its photodetector signals are offset adjusted and gain-adjusted
before being digitized and provided to a digital signal processor.
The input signals coming from a Compact Disc (CD) are
generated by four pick-ups. . . . The CD signal four components
(which are typically called AC, BD, E, and F) are currents or
voltages, depending from the used pick-up. These signals are
preamplified (cancelling the offset) by a voltage-to-voltage or
current-to-voltage stage. The output voltage signals are then fed
into the ADC and supplied to the digital chip. . . . The
preamplifier gain is 8-bit digitally controlled in order to fully fit
the ADC full scale.
Id. (emphases added).
Baschirotto discloses that the digital signal processor in the digital
section determines the gain used to gain-adjust the photodetector signals and
the offset cancellation used to offset-adjust the photodetector signals:
The full system takes advantage of the availability of DSP in the
digital section. In fact the offset cancellation and the gain control
algorithms are implemented in the digital chip and the results
are received through I2C-likebus by the analog chip and used to
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digitally control the preamplifier section. The same concept is
used for the servo digital control whose main benefits are:
improved playability (adjustments usually semi-fixed now
become automatic and continuous); adjustment-free system (all
adjustments are automatic, performed by the system itself); use
of DSP (the use of digital signal processorsimproves the
possibilities and future features).
Id. at 0003 (emphasis added)).
b. Analysis
Petitioner argues that dependent claims 14–21, 31, 33, 34, 36, 38, and
39 recite additional limitations relating to gain adjustments to versions of the
photodetector output signals. Pet. 49–52. Each of these challenged claims
depends, directly or indirectly, from one of independent claims 1, 5, 9, and
13.
Petitioner argues that Baird teaches the use of variable gain amplifiers
(Ex. 1003, col. 5, l. 63–col. 6, ll. 11), and, as noted above, Baschirotto
teaches the use of “a digital signal processor to determine a plurality of
variable gain amplifiers in a digital servo system for an optical drive” (Pet.
53; see Ex. 1004, 0002, 0003; Ex. 1006 ¶ 89–90). Further, Petitioner argues
that claims 22–29 recite additional limitations relating to offset adjustments
to versions of the photodetector output signals. Pet. 53–55. In particular,
Petitioner argues that Baird teaches the use of offset control for the data
path. Id. at 55. Baird teaches that
Automatic offset control is effectuated by the loop including
envelope detectors 208, offset controls 209 and DACs 210.
Envelope detectors 208 detect both the top and bottom envelopes
of the high speed data signal. The envelopes are summed to
produce an error signal which is passed through an offset loop
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compensation filter within offset control block 209 and
integrated.
Ex. 1003, col. 4, ll. 26–29 (emphasis added); see Ex. 1006 ¶ 92. Thus,
Petitioner argues that Baschirotto teaches using a digital signal processor to
determine the offset-adjusting of the photodetector signals. Pet. 56.
Nevertheless, Petitioner does not argue that Baschirotto teaches or
suggests the limitations of independent claims 1, 5, 9, and 13 that are
missing from Baird. See supra Section IV.A.2.b. Thus, Petitioner has failed
to establish by a preponderance of the evidence that dependent claims 14–
29, 31, 33, 34, 36, 38, and 39 are rendered obvious over Baird and
Baschirotto.
4. Baird and ST Datasheet, Alone or in Combination with Baschirotto
Petitioner argues that claims 1–13, 30, 32, 35, and 37 of the
’651 patent are rendered obvious over Baird and the ST Datasheet and
claims 14–29, 31, 33, 34, 36, 38, and 39 of the ’651 patent are rendered
obvious over Baird, Baschirotto, and the ST Datasheet. Pet. 55–59. Patent
Owner disagrees. PO Resp. 40–57. In particular, our analysis focuses on
Patent Owner’s contention that the ST Datasheet does not qualify as a prior
art. Id. at 40–44.
a. ST Datasheet (Ex. 1005)
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. (emphasis
added).
b. 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, the reference
must be shown to have been “sufficiently accessible to the public interested
in the art” prior to the earliest effective filing date. In re Cronyn, 890 F.2d
1158, 1160 (Fed. Cir. 1989).
“Because there are many ways in which a reference may be
disseminated to the interested public, ‘public accessibility’ has
been called the touchstone in determining whether a reference
constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).”
In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference
will be considered publicly accessible if it was “disseminated or
otherwise made available to the extent that persons interested and
ordinarily skilled in the subject matter or art exercising
reasonable diligence, can locate it.” Kyocera Wireless Corp. v.
Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).
Whether a reference qualifies as a printed publication is a legal
conclusion based on underlying factual determinations. In re
Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).
Blue Calypso, LLC v. Groupon, Inc., Dkt. Nos. 2015-1391, 2015-1393, 2015-
1394, slip op. at 28–29 (Fed. Cir. Mar. 1, 2016).
Petitioner argues in the alternative that the ST Datasheet discloses a
digital signal processor, which, combined with the other cited prior art,
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renders the challenged claims obvious. Pet. 55–59 (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 ’651 patent because
the ST Datasheet “was published in May 1998 in the United States.” Id. at
55. In support of this alleged publication date, Petitioner relies upon the
“May 1998” date on the front page of ST Datasheet, a Technical/Product
Press Announcement (Ex. 1012) dated May 18, 1998, describing the
TDA7522 Digital Servo and Decoder (Pet. 55), and the declaration
testimony of Dr. Zech (Ex. 1006 ¶ 94). At institution, we determined that
Petitioner provided sufficient evidence tending to show that the ST
Datasheet was publicly available and accessible as of May 1998. Inst. Dec.
29–30.
In the Patent Owner Response, Patent Owner contends 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 ’651
patent. PO Resp. 40–41. According to Patent Owner, that date printed on
the lower left portion of the datasheet “is inadequate on its face to
demonstrate availability and accessibility to the public.” Id. at 41. With
respect to the press announcement6 (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 of the ’651 Patent.” Id. at 43.
Rather, Patent Owner contends that the press announcement only suggests

6 Ex. 1012 is printed from the Internet Archive’s “Wayback Machine.”
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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 44.
In its Reply, Petitioner responds to Patent Owner’s contention 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 17 (emphasis added). According to
Petitioner, from this evidence along with the details of the datasheet itself
(Ex. 1005) and the release of the product in May 1998 (Ex. 1012), it is clear
that the ST Datasheet was available for interested parties to access well
before the priority date of the ’651 patent. Id. at 17–18.
After considering the admissible evidence and arguments,7 we find
that Patent Owner has challenged persuasively Petitioner’s argument 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), this is at best circumstantial evidence of its publication,
and 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.”

7 See infra Section V (addressing the Motion to Exclude with respect to
Exhibits 1015 and 1016).
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(emphases added)). 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 and under what circumstances information was “supplied,”
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.
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 ¶ 94. 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. (emphases 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 give persuasive weight
to Dr. Zech’s unsupported opinion regarding the possible availability of the
ST Datasheet. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
48,763 (“Affidavits expressing an opinion of an expert must disclose the
underlying facts or data upon which the opinion is based. . . . Opinions
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expressed without disclosing the underlying facts or data may be given little
or no weight.”) (citations omitted).
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 (Ex. 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).
A determination whether a particular reference qualifies as a printed
publication “must be approached on a case-by-case basis.” Hall, 781 F.2d at
899. In this case, based on the evidence and argument discussed above, 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. Thus, Petitioner may not
rely upon the teachings of the ST Datasheet in its challenges to the claims of
the ’651 patent.
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 or Baird, Baschirotto, and the ST
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Datasheet, because the ST Datasheet is not available as prior art.
V. MOTION TO EXCLUDE
Patent Owner filed a Motion to Exclude, seeking to exclude Exhibits
1005, 1012, 1015, and 1016. Paper 27 (“Mot.”). Petitioner filed an
Opposition (Paper 30, “Opp.”) to Patent Owner’s Motion to Exclude, and
Patent Owner filed a Reply to Petitioner’s Opposition (Paper 31, “PO
Reply”). In its 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.” Mot. 1.
With regard to the authentication of Exhibits 1005 and 1012, we are
persuaded that, considered in the light of circumstances here, the documents
bear sufficient indicia of their sources that Petitioner has shown that it is
reasonable to conclude that they are what they purport to be. Opp. 4–8; PO
Reply 2. Although Patent Owner notes that Exhibit 1005 bears a trademark
notice, rather than a copyright notice, trademarks identify the source of a
product, and Patent Owner does not contend that the trademark notice here is
improper. Opp. 4–5; PO Reply 2–3. To the extent that Patent Owner is
questioning the date associated with the trademark notice, the significance of
that date properly was addressed above.
With regard to Patent Owner’s request to exclude Exhibit 1005 as
hearsay, we note that Patent Owner does not contend that the “May 18,
1998” date does not appear on the document or that the document was not
created or printed on or by that date. Mot. 7–8; Ex. 2009, 3. The fact that
the document bears a date is not hearsay.
It is apparent from Patent Owner’s arguments in support of its lack of
authentication and hearsay contentions that the issues here relate instead to
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the sufficiency of the evidence with respect to whether Exhibits 1005 and
1012 establish that Exhibit 1005 qualifies as a “printed publication.” Id. at 2
(“For example, there is insufficient evidence to support a finding that TOSH-
1005 and TOSH-1012 are documents that were publicly available at the time
Petitioner purports they were.” (emphasis added)), 7 (“Indeed, there is no
evidence demonstrating the circumstances regarding who, when, where, and
how the ST Datasheet was made sufficiently accessible to the public
interested in the art.” (emphasis added)); Ex. 2009, 2–3; see Opp. 2–3. That
issue properly was 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 and 1012.
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.” Pet. Reply 18. 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. at 17. 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
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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
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 Rule, however,
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
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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
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. 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 17–19 (discussing Exhibits
1015 and 1016)), and Petitioner has not provided any other persuasive
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explanation for the undue delay in submitting Exhibits 1015 and 1016.
Accordingly, we grant Patent Owner’s Motion to Exclude with
respect to Exhibits 1015 and 1016. Therefore, we exclude Exhibits 1015
and 1015, and we do not consider those exhibits, or the arguments in the
Reply Brief addressing those exhibits, in this proceeding.
VI. CONCLUSIONS
For reasons stated above, we conclude that
1. Petitioner has not established by a preponderance of the evidence
that independent claims 1, 5, 9, and 13 of the ’651 patent are anticipated by
Baird, and, consequently, Petitioner has not established by a preponderance
of the evidence that any of the challenged dependent claims of the ’651
patent are anticipated by Baird or rendered obvious over Baird and
Baschirotto; and
2. Petitioner has not established that the ST Datasheet was publicly
accessible prior to the critical date of the ’651 patent; and, consequently,
Petitioner has not established by a preponderance of the evidence that any of
the challenged claims of the ’651 patent are rendered obvious over Baird and
ST Datasheet, alone or in combination with Baschirotto.
VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s request for cancellation of claims 1–39 of
the ’651 patent is denied;
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FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied with respect to Exhibits 1005 and 1012;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
granted with respect 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.

For PETITIONER:

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

For PATENT OWNER:

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