Panasonic Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Jul 11, 2014

12471058 (P.T.A.B. Jul. 11, 2014)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: July 11, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

PANASONIC CORPORATION and
PANASONIC CORPORATION OF NORTH AMERICA,
Petitioner,

v.

OPTICAL DEVICES, LLC,
Patent Owner.
_______________

Case IPR2014-00302
Patent RE42,913 E
_______________

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

ARPIN, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Panasonic Corporation and Panasonic Corporation of North America
(collectively, “Petitioner”) filed a petition (Paper 2; “Pet.”) to institute an
inter partes review of claims 48-53 of Patent No. US RE42,913 E (Ex. 1003,
“the ’913 patent”) pursuant to 35 U.S.C. §§ 311-319. Pet. 4-5. Optical
Devices, LLC (“Patent Owner”) filed a preliminary response (Paper 8,
“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in 35
U.S.C. § 314(a), which provides as follows:
THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in the petition filed under section
311 and any response filed under section 313 shows that there
is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
Petitioner relies upon the following references and declaration in
support of its grounds for challenging the identified claims of the ’913
patent:

Exhibits References and Declaration
1001 Patent No. US 3,552,857 to Hock (“Hock”)
1002 Patent No. US 3,481,672 to Zoot (“Zoot”)
1007 Declaration of Masud Mansuripur, Ph.D.

Petitioner only asserts that the challenged claims are unpatentable
under 35 U.S.C. § 102(e) on the following specific grounds (Pet. 4-5):

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Claims Grounds Reference
48-53 Anticipated under 35 U.S.C. § 102(e) Hock
48-53 Anticipated under 35 U.S.C. § 102(e) Zoot

For the reasons set forth below, we determine that, on this record,
Petitioner fails to demonstrate a reasonable likelihood of prevailing in
showing the unpatentability of any of the challenged claims. Accordingly,
we deny institution of inter partes review as to claims 48-53 of the ’913
patent.
B. Related Proceedings
The parties indicate that the ’913 patent is the subject of Optical
Devices, LLC v. Panasonic Corp., Case No. 1:13-cv-00726 (D. Del. 2013).
Pet. 3; see Paper 6, 1 (identifying other related cases). In addition, the patent
currently is the subject of an investigation before the International Trade
Commission: In the Matter of Certain Optical Disc Drives, Components
Thereof, and Products Containing the Same, Inv. No. 337-TA-897. Paper 6,
1. Further, Petitioner has filed another petition for inter partes review,
IPR2014-00303, with respect to a related patent, Patent No. US RE40,927 E,
involving the same Patent Owner. Id.
C. The ’913 Patent
The application that eventually issued as the ’913 patent was filed on
March 10, 1967. Pet. 7. This application was subject to a secrecy order for
many years. Id.
Figure 1 of the ’913 patent is reproduced below:

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Figure 1 of the ’913 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. 1003, col. 3, ll. 4-7. 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 col. 3, ll. 7-11. For purposes of clarity, patentee depicts the incident rays
at the top of lens 20 and the reflected rays at the bottom of lens 20. Id. at
col. 3, ll. 21-23. Incident rays 26 and 28 are refracted by lens 20 and
focused at focal point 32 on the mirror surface 22. Id. at col. 3, ll. 11-16.
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 col. 3, ll. 7-21.
Figure 3 of the ’913 patent is reproduced below:

Figure 3 of the ’913 patent depicts that the radiant flux density at surface
22B may vary based on characteristics of the components of the optical
system, such as placement or imperfections in lens 20B. Id. at col. 3, ll. 41-
54; col. 4, ll. 10-67; see Prelim. Resp. 3-4. For example, in Figure 3,
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reflective surface 22B is positioned substantially, but not entirely, in focal
plane 24B. Id. at col. 3, ll. 41-47. According to the ’913 patent,
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.

Id. at 4 (quoting Ex. 1003, col. 3, ll. 30-41). “Thus, [Figure 3] demonstrates
that as long as a surface exhibits some degree of reflectivity and it is
positioned in or near the focal plane of a lens, the lens and surface will form
a retro-reflector.” Id.; see also Ex. 1003, col. 1, ll. 46-53 (definition relied
upon by Petitioner at Pet. 5-6). More importantly, 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 Figure 3, i.e., where surface 22B lies
substantially, but not entirely, in focal plane 24B, is described in the ’913
patent as optical gain. See Ex. 1003, col. 5, ll. 8-25. In particular, according
to the ’913 patent, “[i]n order to obtain a measure of the optical gain we
must compare the retroreflector to a standard or reference.” Prelim. Resp. 5
(quoting Ex. 1003, col. 4, ll. 41-42); see also Ex. 1003, col. 4, ll. 10-53
(describing an example of the calculation of the difference in radiant flux
density).
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D. Illustrative Claims
The ’913 patent contains claims 48-53. Claim 48 is an independent,
method claim, and claims 49 and 50 depend therefrom. Claim 51 is an
independent, apparatus claim, and claims 52 and 53 depend therefrom.
Claims 48 and 51 are illustrative and are reproduced below, with emphases
added:

48. A method of detecting characteristics of an object within an
optical system, comprising:

transmitting energy at an object included in an optical
system having retroreflective characteristics, wherein the
optical system includes a lens and the object includes
a surface exhibiting some degree of reflectivity disposed
substantially in a focal plane of the lens;

receiving reflected radiant energy with an optical gain
after retroreflection of the radiant energy; and

detecting the reflected radiant energy after retroreflection
to determine at least one characteristic of the object.

51. An apparatus for detecting characteristics of an object
within an optical system, the apparatus comprising:

a radiant energy source for transmitting energy at an
object included in an optical system having retroreflective
characteristics, wherein the optical system includes a lens and
the object includes a surface exhibiting some degree of
reflectivity disposed substantially in a focal plane of the lens;
and

a detector for detecting received reflected radiant energy
with an optical gain after retroreflection of the radiant energy to
determine at least one characteristic of the object.

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E. Claim Construction
Consistent with the statute and the legislative history of the Leahy-
Smith America Invents Act,
1
we interpret claims of an unexpired patent
using the broadest reasonable construction in light of the specification of the
patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
(Aug. 14, 2012); 37 C.F.R. § 42.100(b). 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).
Petitioner does not propose specific constructions for any terms of the
challenged claims and, instead, merely proposes that the challenged claims
should be construed according to their broadest reasonable interpretation
consistent with the Specification. Pet. 5. Petitioner proposes a definition for
the term “retroreflector.” Id. at 5-6. Specifically, Petitioner proposes that
this term should be construed to mean “any 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.” Id. (quoting
Ex. 1003, col. 1, ll. 46-49). Nevertheless, this term does not appear in the
challenged claims. Pet. 5-6.

1
Pub. L. No. 112-29 (2011).
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Patent Owner, however, proposes constructions for the claim terms:
“focal plane,” “retroreflection,” “optical gain,” “optical system,” and “an
optical system having retroreflective characteristics,” as follows:
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. 9.
Petitioner did not propose an alternative construction, and we are persuaded
that Patent Owner’s construction is the broadest reasonable construction
consistent with the ordinary and customary meaning of the term (see Ex.
2001) and with the Specification of the ’913 patent (see, e.g., Ex. 1003, figs.
1-4; col. 3, l. 4-col. 4, l. 3).
2. 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. 10. Petitioner did
not propose an alternative construction, and we are persuaded that Patent
Owner’s construction is the broadest reasonable construction consistent with
the Specification of the ’913 patent. Id. at 10 (citing Ex. 1003, col. 1, ll. 20-
26; col. 3, l. 4-col. 4, l. 3; col. 6, ll. 34-46; col. 7, ll. 14-25).
3. Optical Gain
Patent Owner proposes to construe “optical gain” as “a change in
radiant flux density of reflected radiant energy.” Prelim. Resp. 10-11. The
Patent Owner contends that
retroreflected radiant energy does not necessarily or inherently
exhibit an optical gain. Rather, in order to exhibit optical gain,
retroreflected radiant energy must show a change in its radiant
flux density relative to the radiant flux density of other reflected
radiant energy, e.g., reflection from a reference or a standard.
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Id. at 10 (citing Ex. 1003, col. 4, ll. 42-43). Petitioner did not propose an
alternative construction, and we are persuaded that Patent Owner’s
construction is the broadest reasonable construction consistent with the
Specification of the ’913 patent. Id. at 10 (citing Ex. 1003, col. 3, l. 50-col.
5, l. 10).
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. 11-12. Petitioner did not propose an alternative construction,
and we are persuaded that Patent Owner’s construction is the broadest
reasonable construction consistent with the Specification of the ’913 patent.
Id. at 11-12 (citing Ex. 1003, col. 2, ll. 41-59; col. 3, ll. 14-16; col. 5, ll. 40-
43; col. 8, ll. 44-50; figs. 1-4, 6-12).
5. An Optical System Having Retroreflective Characteristics
Patent Owner proposes to construe “an optical system having
retroreflective characteristics” as
an optical system as defined above having a focusing element
and reflective surface that is located substantially in the focal
plane of the focusing element, wherein the system is configured
so that a ray incident on the focusing element and focused on
the reflective surface is reflected along a path parallel to the
incident ray for any angle of incidence.

Prelim. Resp. 12. Petitioner did not propose an alternative construction, and
we are persuaded that Patent Owner’s construction is the broadest
reasonable construction consistent with the Specification of the ’913 patent.
Id. at 12 (citing Ex. 1003, col. 2, ll. 41-59; col. 3, ll. 14-16; col. 5, ll. 40-43;
col. 8, ll. 44-50; figs. 1-4, 6-12).
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II. ANALYSIS
A. Overview
Petitioner argues that claims 48-53 of the ’913 patent are anticipated
by Hock. Pet. 9-18. Petitioner also contends that claims 48-53 of the ’913
patent are anticipated by Zoot. Id. To support these positions, Petitioner
presents the testimony of Dr. Masud Mansuripur (Ex. 1007). “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., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987). On this record, we are persuaded that Petitioner fails to demonstrate
a reasonable likelihood of prevailing in the challenges to claims 48-53.
B. Asserted Grounds
1. Anticipation of Claims 48-53 by Hock
a. Hock
Hock is directed to “a multi-purpose optical measuring device for
determining the position or the movement of an object relative to a reference
point or the movement of an object relative to a reference point or a
reference direction.” Ex. 1001, col. 1, ll. 33-36. Figure 1 of Hock is
reproduced below:
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Figure 1 depicts an embodiment of a measuring device that includes “a light
source 10 in front of a condenser 11 [that] illuminates a moving diaphragm
12[,] the slot 12a of which defines the scanning mark.” Id. at col. 3, ll. 3-6.
According to Hock,
[t]he movement of the diaphragm may for example be
oscillating or may consist of a pivoting movement around an
axis parallel to the instrument axis in such a way that the
scanning mark 12a remains constantly or intermittently in the
path of light. The scanning light beam coming thus from the
scanning mark 12a is directed onto a reflector [26] via the first
beam splitter 13 and the objective 14. The light rays of the
beam reflected from the reflector travel backward through the
objective 14 and are directed by beam splitter 13 onto the index
carrier 16, provided with the indices 15. The image of the index
plate of the carrier 16 is, via a second beam splitter 17,
produced in an eyepiece 18 as well as on a photoelectric
transducer 19. Beam splitter 17 can be a semi-silvered mirror, a
conventional device for separating two polarized components or
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a dichroic device for splitting the beam as a function of wave
length.

Id. at col. 3, ll. 6-23; see also id. at col. 3, ll. 49-52 (describing light-
absorbing graduation 21a of fig. 1a).
Hock’s Figure 3a is reproduced below:

Figure 3a depicts another embodiment of a measuring device that includes a
telescopic magnifier that includes optical system 40 with reflector 41 “being
positioned in the focal plane” of the optical system 40. Id. at col. 3, ll. 61-
65. Yet another embodiment of the reflector, reflector 23, is depicted in
Figure 2 (not shown) of the ’913 patent. Id. at col. 2, ll. 15-24; fig. 2.
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b. Hock Analysis
Petitioner’s arguments regarding Hock are set forth almost entirely in
the claim charts. Pet. 9-18. Petitioner argues that Hock discloses each and
every element of the invention, as recited in claims 48-53. Id.
In particular, independent claims 48 and 51 recite that “the optical
system includes a lens and the object includes a surface exhibiting some
degree of reflectivity disposed substantially in a focal plane of the lens.”
Petitioner argues that
Hock discloses a focusing means (14) and a reflective surface
(26, 21) positioned within the focal plane of the focusing
means. Specifically, Hock discloses “a reflector being
positioned in the focal plane thereof.” (Ex. 1001, Col. 3, ll. 64-
65). Hock also discloses that the reflector is located “in the
image plane of the objective 14.” (Ex. 1001, Col. 4, ll. 20).

Pet. 11 (Claim 48), 14 (Claim 51).
Patent Owner argues that Petitioner improperly relies upon different
embodiments of Hock to disclose the elements recited in independent
claims 48 and 53. Prelim. Resp. 16-17. We agree. As the Court of Customs
and Patent Appeals explained,
[s]uch picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant
must be afforded an opportunity to rebut with objective
evidence any inference of obviousness which may arise from
the similarity of the subject matter which he claims to the prior
art, but it has no place in the making of a 102, anticipation
rejection.

Application of Arkley, 455 F.2d. 586, 587-88 (CCPA 1972); see also Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (2008) (“Thus, it is not
enough that the prior art reference . . . includes multiple, distinct teachings
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that the artisan might somehow combine to achieve the claimed invention.”;
citation to Arkley omitted). Thus, Petitioner fails to demonstrate that Hock
discloses, in a single embodiment, each and every element of claims 48 and
51, as set forth in the claims. See Verdegaal Bros., 814 F.2d at 631.
Indeed, Petitioner selects elements from multiple embodiments of
Hock in order to meet the above-quoted limitation of claims 48 and 51. In
particular, Petitioner refers to the embodiment of Hock’s Figures 1 and 1a as
disclosing “a focusing means (14) and a reflective surface (26, 21)
positioned within the focal plane of the focusing means,” and Petitioner
refers to the embodiment of Hock’s Figure 2 as disclosing that “the reflector
is located ‘in the image plane of the objective 14.’” Pet. 11 (Claim 48), 14
(Claim 51); see Ex. 1001, col. 3, ll. 24-26 (“an embodiment”); col. 4, ll. 15-
24 (“[a]nother embodiment”); see also id. at col. 3 ll. 61-65 (referring to “in
this embodiment” of Figure 3a). Petitioner further argues that Hock
discloses “receiving reflected radiant energy with an optical gain after
retroreflection of the radiant energy.” Pet. 10. In particular, Hock discloses
detection means 19, which is described as “a photoelectric transducer.” Id.
(citing Ex. 1001, col. 1, l. 20). Further, Hock discloses a photoelectric cell.
Id. (citing Ex. 1001, col. 1, l. 58). Because of these disclosures by Hock,
Petitioner contends that Hock discloses “optical gain,” as recited in claims
48 and 51. Id. In support of this contention, Petitioner appears to rely on the
conclusory statement by its declarant, Dr. Mansuripur, that Hock discloses
“all of the limitations of the [’913 patent] claims at issue, including this
optical gain limitation.” Ex. 1007 ¶ 33; see id. ¶ 35.
As noted above, however, Patent Owner argues that “retroreflected
radiant energy does not necessarily or inherently exhibit an optical gain.
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Rather, in order to exhibit optical gain, retroreflected radiant energy must
show a change in its radiant flux density relative to the radiant flux density
of other reflected radiant energy, e.g., reflection from a reference or a
standard.” Prelim. Resp. 10 (emphasis added; citing Ex. 1003, col. 4, ll. 42-
43). In particular, Patent Owner argues that
Hock [does not] rely on such variation of the radiant flux
density of the reflected light. Rather, as discussed above, Hock
relies only on the luminous scanning mark from diaphragm 12
illuminating the surface of reflector 41 being reflected so as to
merely impinge on the carrier 16. In contrast, claim 48 recites
“receiving reflected radiant energy with an optical gain after
retroreflection of the radiant energy; and detecting the reflected
radiant energy after retroreflection to determine at least one
characteristic of the object.” Thus, in contrast to the teachings
of Hock, in the method of claim 48, the optical gain of reflected
radiant energy after retroreflection is detected.

Prelim. Resp. 17 (emphasis added). Hence, Patent Owner argues that Hock
fails to disclose “optical gain,” as recited in claims 48 and 51. Again, we
agree. Moreover, we give little weight to Petitioner’s declarant’s conclusory
statements regarding Hock’s alleged disclosure of “optical gain.” See Ex.
1007 ¶¶ 33, 35; see also 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.”). Thus, we are
persuaded that Petitioner fails to demonstrate that Hock discloses each and
every element of claims 48 and 51, as set forth in those claims. See
Verdegaal Bros., 814 F.2d at 631.
Because claims 49 and 50 depend from claim 48, and claims 52 and
53 depend from claim 51, we also are persuaded that Petitioner fails to
demonstrate that Hock discloses each and every element of these dependent
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claims. Therefore, we conclude that Petitioner fails to demonstrate a
reasonable likelihood of prevailing in showing that claims 48-53 of the ’913
patent are anticipated by Hock.
2. Anticipation of Claims 48-53 by Zoot
a. Zoot
Zoot discloses “[a] non-contacting distance gauge and contour
mapping apparatus utilizing a high intensity light source.” Ex. 1002, col. 1,
ll. 12-13. Figure 1 of Zoot is reproduced below:

Figure 1 depicts an embodiment of that apparatus, which includes light
source 10, e.g., a laser, whose radiation is directed to object 11. Ex. 1002,
col. 3, ll. 45-57. Primary lens 12 and composite lens-reticle 13 are disposed
in the optical path between light source 10 and object 11. Id. at col. 3, ll. 58-
60. “The composite lens-reticle structure 13, in turn, comprises an annular
transmitting objective lens 14, an annular transmitting reticle 15 and a
receiving objective lens 16, which is located within the central region of
annular transmitting lens 14.” Id. at col. 3, ll. 61-65. The apparatus includes
“reflecting members 18 and 19, a nutating plate 20, a receiving reticle 21
and an optical filter 22.” Id. at col. 4, ll. 1-4. The apparatus also includes an
“optical detector 17, which is capable of generating an electrical output
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signal, the magnitude of which varies in response to the intensity of the light
incident upon it . . . .” Id. at col. 3, ll. 72-74.
In operation, a light beam generated by light source 10 is directed via
lens 12 as a diverging light beam to lens-reticle structure 13, where the
central portion of the diverging light beam is intercepted by reflector 18. Id.
at col. 4, ll. 5-10. “The annular outer portion of the diverging light beam
passes through transmitting objective lens 14 and is split into four somewhat
pie-shaped segments by transmitting reticle 15 and focused on object 11.”
Id. at col. 4, ll. 11-14. “In the embodiment of [Figure 1], the region of object
11 on which the transmitted light beam is focused coincides with the focal
point of the primary lens-transmitting objective lens combination.” Id. at
col. 4, ll. 30-33. “When object 11 is so situated, the transmitted light beam
appears as a spot on the surface of object 11.” Id. at col. 4, ll. 34-35.
Objective lens 16 converges light reflected from the spot imaged on
object 11, and the converged light is reflected via reflection members 18 and
19 onto nutating plate 20. Id. at col. 4, ll. 38-42. The passage of the
converging light beam through the nutating plate causes its displacement
from the optical axis. Id. at col. 4, ll. 42-44. “By rotating nutating plate 20
by means of a motor assembly, indicated generally by windings 23, the
converging light beam can be made to trace a circular path.” Id. at col. 4, ll.
44-47. The rotating nutating light beam is directed toward receiving reticle
21, which periodically interrupts the light beam “so that it passes through
optical filter 22 to detector 17 only four times per revolution of nutating
plate 20.” Id. at col. 4, ll. 47-52.
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b. Zoot Analysis
Petitioner’s arguments regarding Zoot are set forth almost entirely in
the claim charts. Pet. 9-18. Petitioner argues that Zoot discloses each and
every element of the invention, as recited in claims 48-53. Id.
In particular, independent claim 48 recites the step of “receiving
reflected radiant energy with an optical gain after retroreflection of the
radiant energy.” Similarly, independent claim 51 recites “a detector for
detecting received reflected radiant energy with an optical gain after
retroreflection of the radiant energy to determine at least one characteristic
of the object.”
Petitioner argues that “Zoot discloses a detection means (17), which is
described as an ‘optical detector’ (Ex. 1002, Col. 3, ll. 72).” Pet. 12.
Nevertheless, Petitioner does not mention where Zoot discloses that the
radiant energy is received “with an optical gain.” Id.
Patent Owner argues that Petitioner fails to demonstrate that Zoot
discloses “optical gain,” as recited in claims 48 and 51. Prelim. Resp. 26.
Petitioner argues that “[a] retroreflected ray has an increased radiant flux
density because of the narrowing effect of retroreflection. (Ex. 1003, col. 4,
ll. 6-8). It is a characteristic of retroreflector optical systems to reflect
energy [sic] rays in a very narrow beam. (Ex. 1003, Col. 4, ll. 20-21).” Pet.
6. Again, however, Petitioner’s declarant, Dr. Mansuripur, makes only
conclusory statements about Zoot’s alleged disclosure of “optical gain.”
Specifically, Dr. Mansuripur opines that “those skilled in the art would know
the reflective object (11) disposed in the focal plane of a focusing lens (14)
of Zoot discloses optical gain as defined by the [’913 patent].” Ex. 1007
¶ 40. Consequently, and for reasons similar to those set forth above with
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respect to Hock, we give little weight to Petitioner’s declarant’s conclusory
statements regarding Zoot’s alleged disclosure of “optical gain.” See id.
Therefore, we determine that Petitioner fails to demonstrate that Zoot
discloses “optical gain,” as recited in claims 48 and 51.
Patent Owner further contends that Zoot fails to disclose a
retroreflection of energy because the incident light and the reflected light
pass through different lenses. Prelim. Resp. 27. In particular, referring to
Zoot’s Figure 1, the apparatus depicts incident light passing though annular
lens 14 and reflected light passing through central lens 16. Ex. 1002, col. 3,
ll. 61-62; fig. 1. We agree with Patent Owner’s description of this feature of
Zoot’s Figure 1, but claims 48 and 51 do not require that the incident and the
reflected light rays pass through the same lens.
Specifically, claim 48 merely recites “receiving reflected radiant
energy with an optical gain after retroreflection of the radiant energy,” and
claim 51 merely recites “a detector for detecting received reflected radiant
energy with an optical gain after retroreflection of the radiant energy.”
Thus, neither claim requires that the incident and reflected light rays pass
through the same lens.
Consequently, because Petitioner fails to demonstrate that Zoot
discloses “optical gain,” as recited in claims 48 and 51, Petitioner fails to
demonstrate that Zoot discloses each and every element of claims 48 and 51,
as set forth in those claims. See Verdegaal Bros., 814 F.2d at 631. Because
claims 49 and 50 depend from claim 48, and claims 52 and 53 depend from
claim 51, we also are persuaded that Petitioner fails to demonstrate that Zoot
discloses each and every element of these dependent claims. Therefore, we
conclude that Petitioner does not demonstrate a reasonable likelihood of
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prevailing in showing that claims 48-53 of the ’913 patent are anticipated by
Zoot.

III. CONCLUSION
Petitioner fails to demonstrate that there is a reasonable likelihood of
prevailing in its challenge to the patentability of claims 48-53 of the ʼ913
patent. Consequently, the petition is denied as to the following grounds
proposed: (1) anticipation of claims 48-53 by Hock; and (2) anticipation of
claims 48-53 by Zoot.

IV. ORDER
For the reasons given, it is
ORDERED that the petition is denied as to claims 48-53 on the
grounds listed above in Section III.

IPR2014-00302
Patent RE42,913 E

21
PETITIONER:

Christopher D. Bright
Amol A. Parikh
MCDERMOTT WILL & EMERY LLP
cbright@mwe.com
amparikh@mwe.com

PATENT OWNER:

Thomas Engellenner
Reza Mollaaghababa
PEPPER HAMILTON LLP
engellerrert@pepperlaw.com
mollaaghababar@pepperlaw.com
Theodosios Thomas
OPTICAL DEVICES, LLC
ted.thomas@sceneralabs.com