Toshiba Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Mar 8, 2016

13274627 (P.T.A.B. Mar. 8, 2016)

Trials@uspto.gov Paper 36
Tel: 571-272-7822 Entered: March 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

TOSHIBA CORPORATION,
Petitioner,

v.

OPTICAL DEVICES, LLC,
Patent Owner.
_______________

Case IPR2014-014411
Patent RE43,681 E
_______________

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

1 Case IPR2014-01442 has been consolidated with Case IPR2014-01441.

IPR2014-01441
Patent RE43,681 E

2
I. INTRODUCTION
A. Background
On September 3, 2014, Toshiba Corporation (“Petitioner”) filed a
Petition (IPR2014-01441, Paper 1 (“1441 Pet.”)) to institute an inter partes
review of claims 48, 50–54, and 56–69 of Patent No. US RE43,681 E (Ex.
1001, “the ’681 patent”) pursuant to 35 U.S.C. §§ 311–319. 1441 Pet. 4.
Petitioner states the real parties-in-interest are Toshiba Corporation and
Toshiba America Information Systems, Inc. 1441 Pet. 1. On December 10,
2014, Optical Devices, LLC (“Patent Owner”) filed a Preliminary Response
(IPR2014-01441, Paper 7 (“1441 Prelim. Resp.”)). On March 9, 2015, we
instituted an inter partes review of claims 48 and 50–53 of the ’681 patent
on the grounds of anticipation under 35 U.S.C. § 102(e) by Patent No. US
3,506,839 to Ando et al., but denied institution of inter partes review of
claims 54 and 56–69 of the ’681 patent. IPR2014-01441, Paper 8 (“1441
Dec.”), 26.
On September 8, 2014, Petitioner filed a second Petition (IPR2014-
01442, Paper 1 (“1442 Pet.”)) to institute an inter partes review of claims
48, 50–54, and 56–69 of the ’681 patent pursuant to 35 U.S.C. §§ 311–319.
1442 Pet. 4–5. Again, Petitioner states the real parties-in-interest are
Toshiba Corporation and Toshiba America Information Systems, Inc. 1442
Pet. 1. On December 11, 2014, Patent Owner filed a second Preliminary
Response (IPR2014-01442, Paper 6). On March 10, 2015, we instituted an
inter partes review of claims 48, 50–53, and 60–69 of the ’681 patent on the
grounds of obviousness under 35 U.S.C. § 103(a) over R.F. Lucy, “Precision
Laser Automatic Tracking System,” Applied Optics Vol. 5, No. 4, April
1966; Patent No. US 3,385,971 to Fertig; and Patent No. US 3,144,926 to
IPR2014-01441
Patent RE43,681 E

3
Edelman, but denied institution of inter partes review of claims 49 and 54–
59 of the ’681 patent. IPR2014-01442, Paper 8 (“1442 Dec.”), 34.
Because each of Case IPR2014-01441 and Case IPR2014-01442
involves claims of the ’681 patent, on March 11, 2015, we issued an order
(IPR2014-01441, Paper 9; IPR2014-01442, Paper 8), consolidating these
cases as Case IPR2014-01441.2 Thus, claims 48, 50–53, and 60–69 are the
subject of this consolidated inter partes review. References in this Final
Written Decision to papers and exhibits filed after the consolidation are to
the papers and exhibits filed in Case IPR2014-01441. IPR2014-01441,
Paper 9, 2–3; IPR2014-01442, Paper 8, 2–3.
Patent Owner did not file a Patent Owner Response, responding to the
Petitions, but Patent Owner filed a Motion to Amend (Paper 17, “Mot.”)
seeking to cancel claims 48, 50–53, and 60–69 and to replace those claims
with substitute claims 70–85. Mot. 1 (“Patent Owner requests that the Board
to cancel the original claim(s) and replace them with the proposed substitute
corresponding claims 70-8[4].”). Petitioner filed an Opposition (Paper 22,
“Opp.”) to the Motion to Amend, and Patent Owner filed a Reply (Paper 31,
“Reply”) to Petitioner’s Opposition.
A combined oral hearing for the instant proceeding and related Cases
IPR2014-01439 and IPR2014-01443 was held on January 12, 2016. A
transcript (Paper 35, “Tr.”) of that hearing is included in the record.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.

2 Case IPR2014-01442, as a separate inter partes review, has been
terminated administratively. IPR2014-01441, Paper 9, 2.
IPR2014-01441
Patent RE43,681 E

4
For the reasons that follow, we grant Patent Owner’s Motion to
Amend to the extent it requests to cancel claims 48, 50–53, and 60–69 of the
’681 patent and deny Patent Owner’s Motion to Amend to the extent it
requests to enter substitute claims 70–84. The Motion to Amend, therefore,
is granted-in-part.
B. Related Proceedings
The parties indicate that the ’681 patent is the subject of Optical
Devices, LLC v. Toshiba Corporation, Case No. 1:13-cv-10530 (D. Del.
2013), and of an investigation (complaint filed September 3, 2013), styled In
the Matter of Certain Optical Disc Drives, Components Thereof, and
Products Containing the Same, Investigation No. 337-TA-897, in the U.S.
International Trade Commission. E.g., 1441 Pet. 1; see also, e.g., IPR2014-
01441, Paper 6, 2 (listing other lawsuits brought by Patent Owner and
involving the ’681 patent).
Petitioner indicates that the ’681 patent is related by a common parent
to Patent No. US RE40,927 E (“the ’927 patent”) and to Patent No. US
RE42,913 E (“the ’913 patent”), which also are asserted in the above
identified lawsuits. 1441 Pet. 1.
We have instituted five related inter partes reviews in response to
other petitions filed by Petitioner, including IPR2014-01439 (the ’913
patent), IPR2014-01443 (the ’927 patent), IPR2014-01445 (Patent No. US
7,839,729 B2), IPR2014-01446 (Patent No. US 7,196,979 B2), and
IPR2014-01447 (Patent No. US 8,416,651 B2). Id. at 2; see, e.g., IPR2014-
01441, Paper 6, 1. Further, the ’913 patent was the subject of IPR2014-
00302 (petition denied) filed by a different petitioner, and the ’927 patent
IPR2014-01441
Patent RE43,681 E

5
was the subject of IPR2014-00303 (petition granted) filed by a different
petitioner. 1441 Pet. 2.
C. The ’681 Patent
The ’681 patent is directed to methods and apparatus for automatically
directing a laser at an object or automatically tracking an object in an optical
system. Ex. 1001, col. 8, l. 51–col. 9, l. 16. The methods involve
transmitting radiant energy at an object included in an optical system having
retroreflective characteristics, wherein the optical system includes a lens and
the object exhibiting some degree of reflectivity disposed substantially in a
focal plane of the lens. Id. at Abstract, col. 1, ll. 34–67. The methods
further include receiving reflected radiant energy after retroreflection of the
radiant energy, and directing automatically a laser at the object based on a
characteristic of at least a portion of the object determined from the reflected
radiant energy or automatically tracking the at least a portion of the object
based on a characteristic of the at least a portion of the object determined
from the reflected radiant energy. Id. at col. 9, ll. 4–13.
The apparatus may include a radiant energy source, a detector
configured to detect a received reflected radiant energy after retroreflection
of the radiant energy, and a utilization system configured to track
automatically the at least a portion of the object based on a characteristic of
the at least a portion of the object determined from the reflected radiant
energy. Id. at Claim 65.
With reference to Figure 1 of the ’681 patent, reproduced below, an
optical system is depicted consisting of lens 20 and reflective surface (i.e.,
mirror 22) positioned in focal plane 24 of lens 20. Id. at col. 3, ll. 21–23.
IPR2014-01441
Patent RE43,681 E

6

In Figure 1, incident rays 26 and 28 are shown as confined to the top half of
the lens 20. Incident rays 26 and 28 are refracted by lens 20 and focused at
focal point 32 of lens 20, which focal point lies on mirror 22. Incident rays
26 and 28 then are reflected by mirror 22, so that the angle of reflection
equals the angle of incidence, and the reflected rays are returned to the lower
half of lens 20, where they again are refracted and emerge therefrom as
retroreflected rays 26R and 28R. Id. at col. 3, ll. 23–36.
With reference to Figure 3 of the ’681 patent, which is reproduced
below, the radiant flux density at the reflector surface may vary based on
characteristics of components of the optical system, such as the position of
mirror 22B or an imperfection of lens 20B, or both.

In Figure 3, mirror 22B is positioned substantially in focal plane 24B, but
not precisely in focal plane 24B. As shown in Figure 3,
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. Thus, the image formed on the mirror by
IPR2014-01441
Patent RE43,681 E

7
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 col. 3, l. 59–col. 4, l. 2. As taught by Figure 3, the closer mirror 22B is
to being precisely in focal plane 24B, the smaller is the circle of confusion,
and the narrower is the retroreflected beam bounded by retroreflected rays
38R and 40R. E.g., 1441 Prelim. Resp. 5. Because the circle of confusion
and, therefore, the shape of the returning beam vary based on the position of
mirror 22B, the flux density of the returning light varies according to the
positioning of mirror 22B. Id. This change in flux density is an example of
optical gain referenced in the ’681 patent. Id. The ’681 patent states that
“[i]n order to obtain a measure of the optical gain we must compare the
retroreflector to a standard or reference.” Ex. 1001, col. 4, ll. 61–62.
The ’681 patent further discloses embodiments for directing a laser or
tracking an object based upon retroreflected radiant energy. Id. at col. 8, l.
46–col. 9, l.16. As shown in Figure 12, reproduced below, “the ’681 Patent
describes an embodiment in which radiant energy is transmitted at an optical
instrument 196 (e.g., an optical system including a lens and an object
exhibiting some degree of reflectivity when disposed substantially in a focal
plane of the lens).” 1441 Prelim. Resp. 6.

IPR2014-01441
Patent RE43,681 E

8
In Figure 12, retroreflected radiant energy is detected by detector 184. The
output of detector 184 is provided to utilization system 192 that controls
scanning and positioning means 188 to track the location of the object or
high energy laser gun 186 to direct laser gun 186 at the object by means of
common power and control means 190. Ex. 1001, col. 9, ll. 4–18.
D. Status of Claims
As noted above, Patent Owner did not file a Patent Owner Response
and, thus, chose not to present arguments or evidence challenging
Petitioner’s grounds, upon which we instituted inter partes review of claims
48, 50–53, and 60–69 of the ’681 patent. In the Scheduling Order for this
review, “[t]he patent owner [was] cautioned that any arguments for
patentability not raised in the response will be deemed waived.” Paper 10,
3. Although Patent Owner presents no arguments or evidence regarding
these challenged claims, in its Motion to Amend, Patent Owner states that it
“earnestly requests that this motion be granted in the event that one or more
of claims 48, 50-53 and 60-69 are found unpatentable.” Mot. 25 (emphasis
added); see id. at 1 (describing the Motion to Amend as “contingent”). In its
Reply to Petitioner’s Opposition to the Motion to Amend, Patent Owner
states that
the Patent Trial and Appeal Board (“the Board”) should,
contingent on the outcome of the trial, grant Patent Owner’s
Contingent Motion to Amend (paper 17, “the Motion”) for U.S.
Patent RE43,681 (hereafter “the ‘681 Patent”). If one or more of
original claims 48, 50-53, and 60-69 are found unpatentable,
Patent Owner moves to replace such claim(s) with proposed
substitute claims 70-84, respectively.
Reply 1 (emphases added). Thus, Patent Owner characterizes its motion as
IPR2014-01441
Patent RE43,681 E

9
one that is contingent on our patentability determination. In the Motion to
Amend, citing 35 U.S.C. §316(d), Patent Owner also “requests that the
Board to cancel the original claim(s) and replace them with the proposed
substitute corresponding claims 70-8[4].” Mot. 1. These statements are
inconsistent. Further, the latter request does not conform with the Board’s
guidance in Idle Free Sys., Inc. v. Bergstrom, Case IPR2012–00027, slip op.
at 10 (PTAB June 11, 2013) (Informative)(Paper 26) (“A patent owner
should adopt a claim-by-claim approach to specifying the contingency of
substitution, e.g., which claim for which claim and in what circumstance.”
(emphasis added)).
At the oral hearing, however, Patent Owner acknowledged that the
Motion to Amend is not contingent. Tr. 54:7–10; see id. at 53:13–16. Thus,
we treat Patent Owner’s Motion to Amend as non-contingent.
Consequently, Patent Owner’s request for the cancellation of challenged
claims 48, 50–53, and 60–69 is granted, and we now consider only the
patentability of Patent Owner’s substitute claims 70–84. Id. at 119:15–
120:13.
In the Motion to Amend, Patent Owner seeks entry of three
independent substitute claims, claim 70, 75, and 80, and substitute claims,
claims 71–74, 76–79, and 81–84, dependent therefrom. Mot. 1; see Paper
18, 1–12. In support of its Motion, Patent Owner filed a supplemental
declaration of James R. Leger, Ph.D. (Ex. 2104).
An inter partes review is more adjudicatory than examinational, in
nature. See Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir.
2013). A motion to amend in an inter partes review is not itself an
amendment. As the moving party, Patent Owner bears the burden of
IPR2014-01441
Patent RE43,681 E

10
establishing that it is entitled to the relief requested. 37 C.F.R. § 42.20(c);
see Nike, Inc. v. Adidas AG, Dkt. No. 2015-1719, 2016 WL 537609, at *3–
*5 (Fed. Cir. Feb. 11, 2016) (“[T]he Board did not err by placing the burden
on [Patent Owner] to establish patentability over the prior art of [Patent
Owner]’s proposed substitute claims.”). Thus, Patent Owner’s proposed
substitute claims are not entered automatically, but may be entered upon
Patent Owner’s having demonstrated the patentability of the substitute
claims. Moreover, because Patent Owner declined to file a Patent Owner
Response to the Petition, we accept as unchallenged that Ando discloses
each and every element of claims 48 and 50–53 of the ’681 patent or Lucy,
Fertig, and Edelman teaches or suggests all of the limitations of claims 48,
50–53, and 60–69 of the ’681 patent. See Nike, 2016 WL 537609, at *6.
Consequently, in evaluating the patentability of the substitute claims, we
focus particularly on the added limitations in substitute claims 70, 75, and
80.
Independent claims 70, 75, and 80 are illustrative and are reproduced
below:
70. A method of directing a laser at an object within an
optical system, comprising:
transmitting radiant energy at an object included in an
optical system having retroreflective characteristics, wherein
the optical system includes a lens and the object includes at
least a portion exhibiting some degree of reflectivity disposed
substantially in a focal plane of the lens;
receiving reflected radiant energy after retroreflection of
the radiant energy;
detecting an optical gain of the reflected radiant energy
based on a change in a radiant flux density of the reflected
radiant energy over time; and
IPR2014-01441
Patent RE43,681 E

11
directing automatically a laser at the object based on a
characteristic of the at least a portion of the object determined
from the optical gain of the reflected radiant energy.

75. A method of automatically tracking at least a portion of
an object within an optical system, comprising:
transmitting radiant energy at an object included in an
optical system having retroreflective characteristics, wherein
the optical system includes a lens and the object includes at
least a portion exhibiting some degree of reflectivity disposed
substantially in a focal plane of the lens;
receiving reflected radiant energy after retroreflection of
the radiant energy; and
detecting an optical gain of the reflected radiant energy
based on a change in a radiant flux density of the reflected
radiant energy over time; and
automatically tracking the at least a portion of the object
based on a characteristic of the at least a portion of the object
determined from the optical gain of the reflected radiant energy.

80. An apparatus for automatically tracking at least a portion
of an object within an optical system, comprising:
a radiant energy source configured to transmit radiant
energy at an object included in an optical system having
retroreflective characteristics, wherein the optical system
includes a lens and the object includes at least a portion
exhibiting some degree of reflectivity disposed substantially in
a focal plane of the lens;
a detector configured to detect an optical gain of received
reflected radiant energy after retroreflection of the radiant
energy, based on a change in a radiant flux density of the
reflected radiant energy over time; and
a utilization system configured to automatically track the
at least a portion of the object based on a characteristic of the at
least a portion of the object determined from the optical gain of
the reflected radiant energy.
IPR2014-01441
Patent RE43,681 E

12
Paper 18, 1–2 (claim 70), 4–6 (claim 75), 8–10 (claim 80).3 Substitute
claims 70, 75, and 80 correspond to original challenged claims 48, 60,
and 65, respectively; underlined limitations are proposed additions to
the original challenged claims.
E. References, Deposition, and Declarations
Petitioner relied upon the following references, deposition transcript,
and declarations in opposing entry of substitute claims 70–84:
Exhibit Nos. References and Declaration
1006 Panasonic Corp. v. Optical Devices, LLC, Case IPR2014-
00302 (PTAB July 11, 2014) (Paper 9).
1007 Patent No. US 3,506,839 to Ando et al., filed on February
20, 1967, issued on April 14, 1970 (“Ando”)
1008 Declaration of Dr. Lambertus Hesselink (“1441 Hesselink
Declaration”)
1009 R.F. Lucy, “Precision Laser Automatic Tracking System,”
Applied Optics Vol. 5, No. 4, April 1966 (“Lucy”)
1010 Declaration of Dr. Lambertus Hesselink (“1442 Hesselink
Declaration”)
1011 Patent No. US 3,427,611, filed August 15, 1962, issued
February 11, 1969 (“Enenstein”)
1012 Patent No. US 3,385,971, filed August 6, 1965, issued
May 28, 1968 (“Fertig”)
1013 Patent No. US 3,144,926, filed May 17, 1961, issued

3 Patent Owner included citations to the Patent No. US 6,603,134 B1 (Ex.
1003) and U.S. Patent Application No. 04/623,186 (Ex. 2118) in the claim
listing in Appendix A (Paper 18) to its Motion to Amend, and argues that
these citations provide support in the Specification and the priority
application for each claim limitation. Paper 18, 1 (footnote). This argument
and evidence should not have been included in Appendix A without our
authorization. See 37 C.F.R. §§ 42.24(a)(1)(vi), 42.121(a)(3); cf. IPR2014-
01439, Paper 16; IPR2014-01443, Paper 17. Nevertheless, because
Petitioner has not sought to exclude this argument and evidence, we have
considered it in rendering our Final Written Decision.
IPR2014-01441
Patent RE43,681 E

13
August 18, 1964 (“Edelman”)
1014 Deposition Transcript for Dr. James Leger
1015 Supplemental Declaration of Dr. Lambertus Hesselink
1016 Patent No. US 3,200,698, filed September 18, 1961, issued
August 17, 1965 (“Froome”)
1017 F. W. Stroke, Interferometry with Rotation-Insensitive
“Corner-Cube” Systems and Lasers, J. Optical Society of
America 330 (March 1965) (“Stoke”)
1018 Patent No. US 3,523,735, filed October 7, 1966, issued
August 11, 1970 (“Taylor”)
1019 Patent No. US 2,427,528, filed February 5, 1946, issued
September 16, 1947 (“Hickok”)
2108 Patent No. US 3,504,979, filed October 21, 1965, issued
April 7, 1970 (“Stephany”)
2115 Patent No. US 3,025,777, filed December 2, 1960, issued
March 20, 1962 (“Wilkenson”)
2116 Patent No. US 2,933,991, filed April 12, 1957, April 26,
1960 (“Sauer”)
F. Claim Construction
Consistent with the statute and the legislative history of the Leahy-
Smith America Invents Act,4 we interpret claims of an unexpired patent
using the broadest reasonable construction in light of the specification of the
patent. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d
1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed
Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-
446). There is a presumption that claim terms are given their ordinary and
customary meaning, as would be understood by a person of ordinary skill in
the art in the context of the specification. See In re Translogic Tech. Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). An applicant may rebut that
presumption by providing a definition of the term in the specification with

4 Pub. L. No. 112-29 (2011).
IPR2014-01441
Patent RE43,681 E

14
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).
1. Person of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the relevant art
would have had either (1) a Bachelor of Science degree in
Physics, Optics, Electrical Engineering, or a related field with
coursework in Optics or Photonics and at least one year of
additional experience in Optics technology, Photonics
technology, or related technologies, either in industry,
academia, or research, or (2) a Master’s degree in Physics,
Optics, Electrical Engineering, or a related field with coursework
in Optics or Photonics.
Pet. 18–19 (citing Ex. 1008 ¶ 30) (emphasis added). Patent Owner argues
that
a person having ordinary skill in the art at the time of the
invention in 1967 would have held a Bachelor of Science and
Master of Science Degrees in either Physics or Electrical
Engineering with a focus on optics, and additionally, at least two
to three (2-3) years of experience in Physics or Electrical
Engineering optics research.
Mot. 14 (citing Ex. 2104 ¶ 10) (emphasis added). These definitions differ
primarily in that Patent Owner proposes that, regardless of the degree held, a
person of ordinary skill in the art would have “additionally, at least two to
three (2-3) years of experience in Physics or Electrical Engineering optics
research.” Id. Petitioner’s definition provides only for “at least one year of
additional experience in Optics technology, Photonics technology, or related
technologies, either in industry, academia, or research” for persons holding
the subordinate degree. Pet. 19.
IPR2014-01441
Patent RE43,681 E

15
In its Preliminary Responses, Patent Owner applied Petitioner’s
definition of a person of ordinary skill in the art, but “reserve[d] its rights to
present evidence and arguments in this proceeding or any other proceeding
as to Petitioner’s above definition or an alternative definition as to the level
of ordinary skill in the field.” 1441 Prelim Resp. 12; 1442 Prelim Resp. 13.
The understanding of a person of ordinary skill in the art may be material to
the construction of claim terms, as well as to the determination whether a
particular claim limitation is supported by adequate written description.
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 alternative definition affects the
constructions of any disputed term.5 Mot. 7–12; Opp. 1–3; Reply 1–4.
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. 1008 (Exhibit A); Ex. 2104
(Appendix A)), 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. 1008 ¶ 27; Ex. 1015 ¶ 9; Ex. 2104
¶ 12; Ex. 2125 ¶ 12).
Based on our consideration of the record, we find that the evidence as

5 Patent Owner waived any arguments for patentability based on the claim
constructions presented in the Decisions on Institution, but unchallenged in
the Motion to Amend, when it opted not to file a Patent Owner Response.
See supra Section I.D.
IPR2014-01441
Patent RE43,681 E

16
a whole supports Petitioner’s broader 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).
2. Confirmation of Previous Constructions
In its Petitions, Petitioner proposed constructions for the following
claim terms: (1) “focal plane,” (2) “retroreflection,” (3) “optical system,”
(4) “utilization system configured to automatically track,” (4) “utilization
system configured to direct automatically,” and (5) “direct automatically a
laser.” 1441 Pet. 12–18; 1442 Pet. 13–20. In its Preliminary Responses,
Patent Owner proposed constructions for the following claim terms: (1)
“focal plane,” (2) “retroreflection,” (3) “optical gain,” (4) “optical system,”
(5) “An optical system having retroreflective characteristics,” (6) “utilization
system,” (7) “laser,” (8) “automatically,” and (9) “track/tracking.” 1441
Prelim. Resp. 14–22; 1442 Prelim Resp. 13–20. For purposes of our
Decisions on Institution, we construed the terms: (1) “focal plane,” (2)
“retroreflection,” (3) “optical gain,” (4) “optical system,” (5) “laser,” (6)
“automatically,” (7) “track/tracking,” and (8) “utilization system configured
to direct automatically” and “utilization system configured to automatically
track.” 1441 Dec. 10–16; 1442 Dec. 10–17. For purposes of those
Decisions and on the then-existing record, we determined that no other claim
terms required express construction.6

6 In particular, for purposes of those Decisions, we did not construe
expressly the terms “direct automatically a laser,” recited in claims 48 and
54 (Pet. 17–18), or “an optical system having retroreflective characteristics,”
IPR2014-01441
Patent RE43,681 E

17
As noted above, Patent Owner chose not to file a Patent Owner
Response contesting these constructions, nor, as discussed below, did Patent
Owner contest most of these constructions in its Motion to Amend. Paper
10, 3; Mot. 7–12. To the extent that these terms appeared in the challenged
claims and now appear in the substitute claims, Patent Owner has waived
arguments for patentability based on the construction of those terms.
Consequently, we now confirm our previous constructions of those claim
terms: (1) “focal plane,” (2) “retroreflection,” (3) “optical system,” (4)
“laser,” (5) “automatically,” (6) “track/tracking,” and (7) “utilization system
configured to direct automatically” and “utilization system configured to
automatically track,” as the broadest reasonable interpretations, consistent
with the Specification.7
a. “focal plane” (Claims 70, 75, and 80)8
“Focal plane” means “a plane through the focus perpendicular to the
axis of an optical element.” 1441 Dec. 10; 1442 Dec. 10.

recited in claims 48, 54, 60, and 65 (1441 Prelim. Resp. 18). See 1441 Dec.
16 n.5; 1442 Dec. 17 n.5.
7 Because Patent Owner includes “optical gain” in the claim language added
to substitute claims 70, 75, and 80, we will discuss the construction of that
term below, together with the other claim terms for which Patent Owner
sought construction in the Motion to Amend. Mot. 8–12; see Tr. 102:22–
105:13.
8 Because Patent Owner requests cancellation of all of the challenged claims,
we have identified the substitute claims containing the terms for which
construction was requested. See Paper 18 (Appendix A to Motion to
Amend).
IPR2014-01441
Patent RE43,681 E

18
b. “retroreflection” (Claims 70, 75, and 80)
“Retroreflection” means “reflection of an incident ray in a manner
such that the reflected ray is parallel to the incident ray for any angle of
incidence within the field of view of the retroreflector.” 1441 Dec. 10–11;
1442 Dec. 10–11.
c. “optical system” (Claims 70, 75, and 80)
“Optical system” means “a collection of optical elements including at
least a lens and a reflective surface.” 1441 Dec. 11–12; 1442 Dec. 11–12.
d. “laser” (Claim 70)
“Laser” means “a device that utilizes the natural oscillations of atoms
for amplifying or generating electromagnetic waves in the visible,
ultraviolet, and infrared regions of the spectrum.” 1441 Dec. 12; 1442 Dec.
12.
e. “automatically” (Claims 70, 75, and 80)
“Automatically” means “by a self-acting or self-regulating
mechanism.” 1441 Dec. 13; 1442 Dec. 13.
f. “track” (Claim 80) and “tracking” (Claim 75)
“Track” and “tracking” mean “to observe (observing) or plot
(plotting) the moving path of (as a target or missile) with an instrument (as a
telescope).” 1441 Dec. 14; 1442 Dec. 14.
g. “utilization system configured to automatically track”
(Claim 80)
“Utilization system configured to automatically track” means “a
control system configured to receive the output of a radiant energy receiver
IPR2014-01441
Patent RE43,681 E

19
and [to] generate control signals, e.g., for tracking an object.” See 1441 Dec.
14–16; 1442 Dec. 14–16.
3. Additional Constructions Proposed in Motion to Amend
In its Motion to Amend, Patent Owner proposed constructions for the
following claim terms: (1) “radiant flux density,” (2) “optical gain,”
(3) “based on a change in a radiant flux density of the reflected radiant
energy over time,” (4) “utilization system,” and (5) “track/tracking.” Mot.
8–12; see Reply 1–4 (discussing construction of “optical gain” and
“utilization system”). In its Opposition to the Motion to Amend, Petitioner
opposes Patent Owner’s proposed constructions only for the claim terms:
(1) “optical system” and (2) “utilization system.” Opp. 1–3.
As noted above, Patent Owner did not file a Patent Owner Response
challenging our previous construction of the terms “utilization system” or
“track/tracking.” See supra Section I.D. Further, neither of these terms
appears in the additional limitations introduced by the substitute claims.
Paper 18, 1–2 (claim 70), 4–6 (claim 75), 8–10 (claim 80). In addition,
Patent Owner argues that “utilization system” does not require express
construction (Mot. 11–12; see Reply 4 (“Patent owner contends this term
does not require construction.”)) and that we should maintain our previous
construction of “track/tracking” (Mot. 12). Although Patent Owner states
that no further construction of the term “utilization system” is necessary, we
note that Patent Owner proposes an alternative construction for “utilization
system” if we deem that further construction is necessary. Mot. 11–12; see
Opp. 3 (citing Ex. 1014, 75:1–4). We conclude that neither of these terms
requires further construction.
IPR2014-01441
Patent RE43,681 E

20
We now consider the constructions for the following claim terms: (1)
“radiant flux density,” (2) “optical gain,” and (3) “based on a change in a
radiant flux density of the reflected radiant energy over time,” each of which
appears in the additional limitations introduced by the substitute claims. Tr.
63:24–65:20.
a. “radiant flux density” (Claims 70, 75, and 80)
As noted above, Patent Owner proposes a construction for the term
“radiant flux density,” but Petitioner does not. Moreover, Petitioner does
not oppose Patent Owner’s proposed construction. At the time of the
invention, the words “radiant flux density” and “irradiance” were
synonymous. See WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 448
(1967) (Ex. 3002). A relevant dictionary definition of “irradiance” is
“radiant flux density on a given surface usu. expressed in watts per square
centimeter or square meter.” Id.
Patent Owner’s declarant, Dr. Leger, testified that the construction of
the term radiant flux density requires an understanding of the term “radiant
flux.” Ex. 2104 ¶ 17; see Mot. 8. A relevant dictionary definition of
“radiant flux” is “the rate of emission or transmission of radiant energy.”
WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 705 (1967) (Ex. 3002).
Further, Dr. Leger testified that radiant flux “is a measure of radiant energy
per unit time that is either being received, emitted, transmitted, or reflected,
where radiant energy is a fundamental measure of electromagnetic energy.
Radiant flux is generally measured in units of joules/sec, known as watts.”
Ex. 2104 ¶ 17. This testimony is consistent with the dictionary definition of
“radiant flux” provided above. Thus, we are persuaded that the ordinary and
customary meaning of “radiant flux density” is the power per given unit of
IPR2014-01441
Patent RE43,681 E

21
area delivered by radiant energy, such as light.
Dr. Leger also testifies that radiant flux density “is a measure of the
differential radiant flux that is being received, emitted, transmitted, or
reflected by a differential area , such that = / .” Id.; see Mot. 8.
Thus, radiant flux density is the power of radiant energy delivered to a given
area. Again, this testimony is consistent with the dictionary definition of
“radiant flux density” provided above. Petitioner does not contest Patent
Owner’s construction of this term. See Opp. 1–3.
Moreover, the Specification of the ’681 patent does not provide an
express definition for either the term “flux density” or term “radiant flux
density.” Nevertheless, neither party contends that the foregoing
constructions of these terms are inconsistent with the Specification of the
’681 patent. Therefore, we are persuaded that the broadest reasonable
interpretation of the term “radiant flux density,” consistent with the
Specification, is “the power of radiant energy delivered to a given area.”
b. “optical gain” (Claim 70, 72, 75, 77, 80, and 82)
In its Preliminary Response, Patent Owner proposed that the term
“optical gain” means “a change in radiant flux density of reflected radiant
energy.” 1441 Prelim. Resp. 16–17. This construction is consistent with the
panel’s construction in an earlier proceeding, Case IPR2014-00302, which
involved a challenge to the same patent (Ex. 1006, 8–9), and Petitioner did
not propose a construction for this term in its Petition (see 1441 Pet. 11–18;
1442 Pet. 12–20). For purposes of the Decisions on Institution in Case
IPR2014-01441 and Case IPR2014-01442 and based on the then-existing
record, we were persuaded that the previous panel’s construction was the
broadest reasonable interpretation consistent with the Specification of the
IPR2014-01441
Patent RE43,681 E

22
’681 patent. E.g., 1441 Dec. 11 (citing 1441 Prelim. Resp. 16 (citing Ex.
1001, col. 3, l. 9–col. 5, l. 45)). The claim construction for the Decisions on
Institution, however, was only a preliminary determination. As the Federal
Circuit has noted,
the Board is not bound by any findings made in its Institution
Decision. At that point, the Board is considering the matter
preliminarily without the benefit of a full record. The Board is
free to change its view of the merits after further development of
the record, and should do so if convinced its initial inclinations
were wrong.
Trivascular, Inc. v. Samuels, Dkt. No. 2015-1631, 2016 WL 463539, at *9
(Fed. Cir. Feb. 5, 2016) (emphasis added). Although Patent Owner chose
not to file a Patent Owner Response, in view of Petitioner’s proposed claim
construction of the term “optical gain” in a related case, Case IPR2014-
01443, Patent Owner requests in its Motion to Amend that we confirm our
preliminary construction of the term “optical gain.” Mot. 8–11. For
purposes of this Final Written Decision, we reconsider our construction of
the term “optical gain” in view of the entire record.
In the context of a retroreflecting optical system, Petitioner now
requests that we construe “optical gain” as “an actual increase in the radiant
flux density of the retroreflected beam due to the narrowing thereof.” Opp.
1. Petitioner contends that retroreflected light inherently has the attribute of
optical gain because the lens concentrates rays into a smaller solid angle that
otherwise would be reflected into a larger one. Id. at 2; Ex. 1015 ¶¶ 6–7; see
Ex. 1001, col. 9, ll. 36–40 (discussing “inherent retroreflection
characteristics”). Further Petitioner contends that the identical claim term
should be construed consistently in this inter partes review and in the
reviews of the related patents. Opp. 2; see supra Section I.B.
IPR2014-01441
Patent RE43,681 E

23
In support of its proposed construction, Petitioner’s declarant, Dr.
Hesselink, provides the following image comparing light reflected by a
retroreflector with Lambertian surface scattering of light:

Ex. 1015 ¶ 6. According to Petitioner, this comparison demonstrates that
light that would otherwise be scattered into a wide angle (right side) is
gathered into a smaller angle and collimated (left side), thereby increasing
the radiant flux density of the reflected light. Opp. 2; Ex. 1015 ¶ 6; see Mot.
11; Reply 3–4; Ex. 2104 ¶ 31.
Patent Owner argues for a broader construction of “optical gain” that
would be consistent with the various “embodiments” described in the
Specification of the ’681 patent. Mot. 9–11. Patent Owner proposes that the
broadest reasonable construction of the term “optical gain” in the context of
the ’681 patent is “a change in radiant flux density of reflected radiant
energy.” Mot. 8; see Ex. 2104 ¶¶ 16, 20–21.
Patent Owner’s declarant, Dr. Leger, explains that one of ordinary
skill would understand that, in certain of the disclosed embodiments, the
radiant flux density of the reflected radiation at one scanned location is
compared with the reflected radiant flux density at another scanned location.
Mot. 9–11. A change in the detected reflected radiant flux density from one
IPR2014-01441
Patent RE43,681 E

24
location to another signals the presence or absence of a retroreflective
instrument. Ex. 2104 ¶ 21; see id. ¶ 24. According to Dr. Leger, one of
ordinary skill would appreciate that a photodetector signal increase would
represent an increase in the radiant flux density when a scanner moves from
an object having little or no retroreflectivity to an object having a higher
degree of retroreflectivity (e.g., a binocular). Ex. 2104 ¶ 21; see Mot. 9. On
the other hand, a signal decrease would represent a decrease in radiant flux
density when the scanning radiation is moved from an object associated with
a high level of retroreflectivity to an object associated with little or no
retroreflectivity. Ex. 2104 ¶ 21. The fact that the object has a retroreflective
characteristic is determined when the scanning radiation moves to an
adjacent object that does not exhibit such a characteristic or does so to a
lesser degree, thereby resulting in a decrease in the reflected radiant flux
density. Id.; see Ex. 2104 ¶ 25. In another example, in order to track an
object associated with some level of retroreflectivity, a decrease in the
retroreflectivity is detected when the object moves away from the initially
detected location. Ex. 2104 ¶ 21; see Mot. 10–11. Hence, Dr. Leger opines
that one of ordinary skill would understand that the concept of “optical
gain,” as used in the ’681 patent, covers both an increase and a decrease in
the reflected radiant flux density. Ex. 2104 ¶ 21; see Reply 2.
Petitioner’s declarant, Dr. Hesselink, opines that the ’681 patent
inventor acted as a lexicographer and provided a special meaning for the
term “optical gain” as “an actual increase in the radiant flux density of the
retroreflected beam due to the narrowing thereof.” Ex. 1015 ¶ 14 (emphasis
omitted). As Dr. Hesselink notes, the Specification of the ’681 patent states
that
IPR2014-01441
Patent RE43,681 E

25
The rays retroreflected by the optical systems depicted in FIGS.
1 to 4 are in the form of a narrow, substantially collimated beam
having a high radiant density. It is to be noted that there is an
actual increase in the radiant flux density of the retroreflected
beam due to the narrowing thereof. This increase in radiant flux
density is herein termed optical gain.
Ex. 1001, col. 4, ll. 21–26 (emphasis added).
Patent Owner argues that one of ordinary skill would not understand
this passage to be a definition, but rather would understand it to be
describing “optical gain” in the context of a particular illustrative
embodiment. Mot. 9 (citing Ex. 2104 ¶ 23). Restricting the construction of
“optical gain” in the context of the ’681 patent to an increase in radiant flux
density would be inconsistent with the use of the term “optical gain” in a
number of embodiments of the ’681 patent. Id.; see Ex. 2104 ¶ 25.
Patent Owner notes that Dr. Hesselink’s view requires that “optical
gain” be measured relative to a Lambertian radiator. Id. at 9–10 (citing Ex.
1008 ¶ 40); Ex. 1015 ¶ 15; see Tr. 78:17–82.7. In support of his testimony,
Dr. Hesselink refers to the Specification of the ’681 patent, which states that
“[i]n order to obtain a measure of the optical gain we must compare the
retroreflector to a standard or a reference. This reference has been taken to
be a diffuse surface known in the art as a Lambertian radiator.” Ex. 1015 ¶
15 (citing Ex. 1001, col. 4, ll. 61–64) (emphasis added); see Tr. 19:14–20:7.
However, Dr. Leger interprets this passage differently, namely, that it
provides a general statement that one must compare the retroflector to a
standard or reference to obtain a measure of optical gain, “and not as a way
of determining optical gain in all cases.” Mot. 10 (citing Ex. 2104 ¶ 28).
Following this general statement and in the context of a particular illustrative
example, the ’681 patent indicates that the reference has been chosen to be a
IPR2014-01441
Patent RE43,681 E

26
Lambertian radiator. Id. As such, one of ordinary skill would understand
from this language that the ’681 patent has chosen the Lambertian radiator
as an illustrative reference only in the context of the particular example, and
not as a way of determining optical gain in all cases. Id.
Patent Owner further notes that Dr. Hesselink relies upon the plain
meaning of “gain” in construing the term “optical gain” to imply a positive
change. Opp. 2 (citing Ex. 1015 ¶ 19); see WEBSTER’S SEVENTH NEW
COLLEGIATE DICTIONARY 341 (1967) (Ex. 3002) (the noun “gain” defined as
“an increase in amount, magnitude, or degree; specif : the ratio of increase in
output over input in an amplifier”). Patent Owner argues, however, that, in
the field of microwave antennas, for example, the “gain” of an antenna can
be positive or negative. Mot. 10; Reply 2 (citing Ex. 2125 ¶¶ 23–24); Ex.
2104 ¶ 25 (citing Ex. 2118, 15:7–16:1 (describing “tracking” optical
instruments)). The Specification of the ’681 patent states that its teachings
are applicable to the detection of microwave apparatus, such as antennas.
Ex. 1001, col. 9, ll. 36–40. Thus, according to Patent Owner, one of
ordinary skill would understand that the concept of “optical gain” as used in
the ’681 patent covers both an increase and a decrease in the reflected
radiant flux density as compared to a standard or reference. Mot. 10; Reply
2; see Ex. 2104 ¶ 25; Ex. 2125 ¶¶ 22–23.
Dr. Hesselink acknowledged Patent Owner’s argument that in various
fields of science and engineering, the term “gain” may be employed to
denote both positive and negative change, but testified that such an
interpretation is not appropriate here. Ex. 1015 ¶¶ 19, 24; see Ex. 2119,
60:10–61:8. Specifically, Dr. Hesselink testified that
“Gain” in general, unrelated to what is here, my understanding
IPR2014-01441
Patent RE43,681 E

27
of that from physics and optics is that “gain” and “loss” are two
words that are opposite of each other. “Gain” would mean that
I would increase the value of something. “Loss” would mean I
would have lost the value of something.
Ex. 2119, 60:22–61:3 (emphasis added); see id. at 61:13–16; see also
WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 341 (1967) (Ex. 3002)
(the noun “gain” defined as “an increase in amount, magnitude, or degree;
specif : the ratio of increase in output over input in an amplifier” (emphasis
added)).
Patent Owner’s arguments notwithstanding, we conclude that the
strongest evidence for construing the term “optical gain” comes from the
Specification itself, which clearly defines the term.
[The claims] are part of a fully integrated written instrument,
consisting principally of a specification that concludes with the
claims. For that reason, claims must be read in view of the
specification . . . . [T]he specification is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)
(citations omitted) (internal quotation marks omitted; emphasis added); In re
Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any
broadest reasonable construction must be consistent with the specification,
and claim language should be read in light of the specification). Given the
plain language of the claims, in particular the emphasis on “optical”; the
testimony of the parties’ declarants, and the clear definition of the
Specification, we are not persuaded here by Patent Owner’s argument that
all disclosed embodiments should be embraced by our construction. “It is
not necessary that each claim read on every embodiment.” Baran v. Med.
Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010); Broadcom Corp.
IPR2014-01441
Patent RE43,681 E

28
v. Qualcomm Inc., 543 F.3d 683, 689 (Fed. Cir. 2008) (“‘[E]ach claim does
not necessarily cover every feature disclosed in the specification. When the
claim addresses only some of the features disclosed in the specification, it is
improper to limit the claim to other, unclaimed features.’”) (quoting Ventana
Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir.
2006)).9
The ’681 patent includes description of a radar system embodiment
with respect to Figures 13 and 14. Ex. 1001, col. 3, ll. 4–8; col. 9, l. 54–col.
10, l. 18. This radar system detects by means of the “retroreflection
principles” of the invention. Id. at col. 9, ll. 54–56. Nevertheless, the term
“optical gain” is not used in connection with the description of this
embodiment. See id. at col. 10, ll. 14–18. The term appears in the
Specification in connection with embodiments relying on what has
traditionally been referred to as “optical.”10 E.g., id. at col. 5, ll. 27–44; see

9 In PPC Broadband, Inc. v. Corning Optical Commc’ns, the Federal Circuit
rejected Corning’s argument that “the broadest reasonable interpretation is
the interpretation which includes as many of the disclosed embodiments as
possible.” No. 2015-1364, 2016 WL 692369, at *4 (Fed. Cir. Feb. 22,
2016). Instead, the Court concluded that “[a]bove all, the broadest
reasonable interpretation must be reasonable in light of the claims and
specification. The fact that one construction may cover more embodiments
than another does not categorically render that construction reasonable.” Id.
at *5 (emphasis added).
10 We note that claim 1, cancelled during the reissue examination, refers to
“optical energy” and claim 5, also cancelled during reissue examination,
refers to “the radiant energy directed at said optical system is in the
nonvisible region.” Ex. 1001, col. 10, ll. 34–43 (claim 1), 53–55 (claim 5).
The term “radiant energy” of claim 5 lacks antecedent basis in claim 1. We
are not persuaded to alter our construction of the term “optical gain” for the
substitute claims based on the language of these cancelled claims. See Opp.
IPR2014-01441
Patent RE43,681 E

29
WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 592 (1967) (Ex. 3002)
(the adjective “optic” defined as “of or relating to vision or the eye” and the
adjective “optical” defined as “relating to the science of optics” and “relating
to vision”).
Finally, the claim terms must be construed in the context of the entire
claim. Trivascular, 2016 WL 463539, at *3 (“Construing individual words
of a claim without considering the context in which those words appear is
simply not ‘reasonable.’”); see Abbott Diabetes Care, 696 F.3d at 1148–50
(finding the Patent Office’s construction unreasonably broad because it was
“unreasonable and inconsistent with the language of the claims and the
specification”). Each of substitute claims 70–84 is directed to a method of
or apparatus for directing a laser at or automatically tracking at least a
portion of “an object within an optical system.” E.g., Paper 18, 1 (claim 70
(emphasis added)). As noted above, we construe “optical system” to mean
“a collection of optical elements including at least a lens and a reflective
surface.” See supra Section I.F.2.c. (emphasis added); WEBSTER’S SEVENTH
NEW COLLEGIATE DICTIONARY 592 (1967) (Ex. 3002) (the adjective
“optical” defined as “relating to the science of optics” and “relating to
vision”). In this context and with respect to the substitute claims, we
conclude that “optical gain” is limited to the optical spectrum and does not
apply to other portions of the electromagnetic spectrum, such as other
electromagnetic waves used in radar systems. We, therefore, construe the
broadest reasonable interpretation of the term “optical gain” to be “an
increase in radiant flux density of reflected optical radiant energy.”

5 n.1.
IPR2014-01441
Patent RE43,681 E

30
c. “based on a change in a radiant flux density of the
reflected radiant energy over time” (Claims 70, 75,
and 80)
Patent Owner argues that the term “based on a change in a radiant flux
density of the reflected radiant energy over time” does not require express
construction because it readily would be understood by a person of ordinary
skill in the art. Mot. 11. Nevertheless, if construction is necessary, Patent
Owner proposes that the term “should be construed to mean that optical gain
can be determined based on temporal changes in the radiant flux density of
the reflected radiant energy.” Id. (citing Ex. 2104 ¶ 69) (emphasis added).
Petitioner does not propose an alternative construction, nor does Petitioner
oppose Patent Owner’s proposed construction. See Opp. 1–3.
On this record and in view of our preceding construction of the term
“optical gain,” we are persuaded that Patent Owner’s proposed construction
of this term reflects its plain meaning, as it would be understood by a person
of ordinary skill in the art, and that proposed construction is not inconsistent
with the Specification of the ’681 patent. Therefore, we construe the
broadest reasonable interpretation of the term “based on a change in a
radiant flux density of the reflected radiant energy over time” to be “based
on temporal changes in the radiant flux density of the reflected optical
radiant energy.”
d. Other Claim Terms
Neither party offers constructions of other terms in the challenged
claims. See Mot. 8–12; Opp. 1–3; Reply 1–4. 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. &
IPR2014-01441
Patent RE43,681 E

31
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Therefore, no other claim
terms require express construction.11
II. MOTION TO AMEND
Patent Owner has filed a non-contingent Motion to Amend requesting
(1) cancellation of challenged claims 48, 50–53, and 60–69 of the ’681
patent and (2) entry of substitute claims 70–84. Mot. 1, 25; see supra
Section I.D. As the moving party, Patent Owner bears the burden of proof to
establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c).
Entry of proposed amendments is not automatic, but occurs only upon the
patent owner having met the requirements of 37 C.F.R. § 42.121 and
demonstrated, by a preponderance of the evidence, the patentability of the
proposed substitute claims. Nike, 2016 WL 537609, at *3–*5 (“[T]he Board
did not err by placing the burden on [Patent Owner] to establish patentability
over the prior art of [Patent Owner]’s proposed substitute claims.”); see Idle
Free, Case IPR2012-00027, slip op. at 7–8 (Paper 26).
Initially, Patent Owner argues that claims 70–84 represent a one-for-
one substitution for cancelled claims 48, 50–53, and 60–69 of the ’681
patent. Paper 18 (Appendix A); see Idle Free, Case IPR2012-00027, slip op.
at 3–6 (Paper 26). We agree. Further, Patent Owner argues that the
proposed substitute claims only add limitations to the original, challenged
claims, and, thus, each substitute claims narrows the scope of the claim that
it seeks to replace. Mot. 1; see Idle Free, Case IPR2012-00027, slip op. at 5

11 In particular, we do not construe expressly the terms “direct automatically
a laser,” recited in claim 70 (see 1441 Pet. 17–18), or “an optical system
having retroreflective characteristics,” recited in claims 70, 75, and 80 (see
1441 Prelim. Resp. 18). See 1441 Dec. 16 n.5; 1442 Dec. 16–17 n.5.
IPR2014-01441
Patent RE43,681 E

32
(Paper 26). Again, we agree. Finally, the limitations added to the
challenged claims must be supported individually by the application from
which Patent Owner claims priority, and the substitute claims also must be
supported as a whole by that application. Nichia Corp. v. Emcore Corp.,
Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27 )
(Representative). On this record and for the reasons set forth below, Patent
Owner fails to demonstrate that there is adequate written description for the
substitute claims in the reissue application (Ex. 1001) or the application
from which it claims priority (Ex. 2118).12 See Mot. 2–7.
A. Proposed Substitution of Claims
Patent Owner proposes to substitute one-for-one new claims 70–84
for challenged claims 48, 50–53, and 60–69 of the ’681 patent. Paper 18
(Appendix A). The correspondence between the challenged and substitute
claims is shown in the table included in Appendix A, accompanying the
Motion to Amend. Id. As indicated in the table of Appendix A, independent
claims 70, 75, and 80 are proposed as substitutes for challenged,
independent claims 48, 60, and 65, respectively. Further, claims 71–74 are
proposed as substitutes for challenged claims 50–53, respectively; claims
76–79 are proposed as substitutes for challenged claims 61–64, respectively;
and claims 81–84 are proposed as substitutes for challenged claims 66–69,

12 Because of this lack of adequate written description, we deny Patent
Owner’s Motion to Amend with respect to the requested entry of the
substitute claims, without reaching Petitioner’s challenges to those claims
based on the references applied in the grounds asserted in the Petition or on
the alleged prior art identified by Patent Owner in the Motion to Amend.
Opp. 11–24; see Mot. 14–25.
IPR2014-01441
Patent RE43,681 E

33
respectively. Thus, Patent Owner only proposes one substitute claim for
each challenged claim. 37 C.F.R. § 42.121(a)(3).
B. No Broadening of Scope
Proposed substitute claims in an inter partes review “may not enlarge
the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R.
§ 42.121(a)(2)(ii). In particular,
A patent owner may not seek to broaden a challenged claim in
any respect, in the name of responding to an alleged ground of
unpatentability. A proper substitute claim under 37 C.F.R.
§ 42.121(a)(2)(i) must only narrow the scope of the challenged
claim it replaces. Similarly, under 37 C.F.R. § 42.121(a)(2)(ii),
a substitute claim may not enlarge the scope of the challenged
claim it replaces by eliminating any feature.
Idle Free, Case IPR2012-00027, slip op. at 5 (Paper 26).
As noted above, in its Motion to Amend, Patent Owner proposes
independent claim 70 as a substitute for independent claim 48, independent
claim 75 as a substitute for independent claim 60, and independent claim 80 as
a substitute for claim 65. Mot. 2–7. Each substitute claim includes all of the
limitations of the corresponding challenged claim, for which it is a substitute,
and only adds additional limitations. No limitations are removed. In its
Opposition, Petitioner does not dispute Patent Owner’s assertion that the
proposed substitute claims do not enlarge the scope of the cancelled,
challenged claims of the ’681 patent. Opp. 1, 11. The substitute dependent
claims are similarly narrowed by the limitations added to the independent
claims, from which they depend. Consequently, the proposed substitute
claims do not enlarge the scope of the challenged claims.

IPR2014-01441
Patent RE43,681 E

34
C. Written Description Support
1. Overview
Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter
partes review must set forth “[t]he support in the original disclosure of the
patent for each claim that is added or amended,” and “[t]he support in an
earlier-filed disclosure for each claim for which benefit of the filing date of
the earlier filed disclosure is sought.” In Nichia, “[t]he Board also explained
that merely indicating where each claim limitation individually described in
the original disclosure may be insufficient to demonstrate support for the
claimed subject matter as a whole.” Case IPR2012-00005, slip op. at 4
(Paper 27) (emphasis in original).
Moreover, the Board recognized that the proposed
substitute claims need not be described “in haec verba” in the
original disclosure in order to satisfy the written description
requirement. However, should the claim language does not
appear in ipsis verbis in the original disclosure, a mere citation
to the original disclosure without any explanation as to why a
person of ordinary skill in the art would have recognized that
the inventor possessed the claimed subject matter as a whole
may be similarly inadequate.
Id. (emphasis in original). Whether a patent claim is supported by an
adequate written description is a question of fact. Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc).
2. Patent Owner’s Allegations of Support
In its Motion to Amend, Patent Owner argues that the subject matter
of proposed substitute claims 70–8413 have written description support in the

13 Because claims 71–74, 76–79, and 81–84 depend from independent
IPR2014-01441
Patent RE43,681 E

35
disclosure of Reissue Application No. 12/471,058 (Ex. 1002) and in its
priority document, U.S. Patent Application No. 04/623,186 (Ex. 2118),
which share the same disclosure.14 Mot. 2–7; Reply 4–7. Patent Owner
further argues that based on the disclosures of these applications, a person of
ordinary skill in the art would understand that the inventors had possession
of the methods and apparatus of claims 70–84. Id.
a. Claims 70–7915
Patent Owner finds support for substitute, independent claims 70 and 75
in challenged, independent claims 48 and 60 and in the Specification of the ’681
patent. Mot. 2–5 (citing Ex. 2118, 3:18–22, 4:11–14, 5:14–22, 7:20–29, 10:9–
17, 15:7–16:5, Abstract). In particular, Patent Owner argues that support exists

claims 70, 75, and 80, respectively, if the limitations added to the substitute
independent claims are not supported by sufficient written description in the
priority application, then the dependent claims also are not supported.
14 The challenged patent (Patent No. US RE42,681 E) is a reissue of a patent
issuing from U.S. Patent Application No. 13/274,627, which was a division
of U.S. Patent Application No. 12/471,058 (now Patent No. US RE40,913
E), which was a division of U.S. Patent Application No. 11/197,731 (now
Patent No. US RE40,927 E). In both instances, the application as filed was a
copy of Patent No. US 6,603,134, which issued from U.S. Patent
Application No. 04/623,186, filed March 10, 1967. References are made to
page and line numbers of the priority application, as filed (Ex. 2118). Mot.
2 n.1.
15 Substitute, dependent claims 71–74 present the language of challenged
claims 50–53 verbatim (except for renumbering) and also are supported by
the priority application for the ’681 patent. Mot. 4 (citing Ex. 2118, 5:14–
22, 8:24–9:24, 10:30–11:5; 15:4–6, 17:30–33). Similarly, substitute,
dependent claims 76–79 present the language of challenged claims 61–64
verbatim (except for renumbering) and also are supported by the priority
application for the ’681 patent. Id. at 5 (citing Ex. 2118, 5:17–20, 8:24–
9:24, 10:30–11:5; 15:4–6, 17:30–33).
IPR2014-01441
Patent RE43,681 E

36
for the additional step, found in both claims 70 and 75, of “detecting an optical
gain of the reflected radiant energy based on a change in a radiant flux density of
the reflected radiant energy over time” in the priority application for the ’681
patent. Id. at 3, 5 (citing Ex. 2118, 7:20–29; 8:15–26; 10:30–11:5, Fig. 12).
Patent Owner, however, fails to explain where this additional limitation
appears expressly or implicitly in any of the cited portions of the priority
application, and we find no express or implicit reference to “detecting” optical
gain based on a “change” in radiant flux density in the cited text. On the
contrary, because a “change” is broad enough to encompass both an increase
and a decrease, the cited portions of the priority application refer to optical gain
only as reflected by an “increase,” rather than a “change,” in radiant flux density
(Ex. 2118, 7:20–26); and the only comparison used to measure optical gain is
achieved by comparing the “radiant flux” of a retroreflector to a standard or
reference (id. at 8:15–26). See supra Section I.F.3.b. As the Federal Circuit has
explained, “the written description requirement with respect to particularly
claimed subject matter is met if the specification shows that the stated inventor
has in fact invented what is claimed, that he had possession of it.” Abbvie
Deutschland GmbH v. Janssen Biotech, Inc., 759 F. 3d 1285, 1299 (Fed. Cir.
2014) (emphasis added). Patent Owner fails to explain here how a recitation
regarding a “change” is taught by a disclosure regarding an “increase.” The
general description of the utilization means as useful in obtaining “the spectral
and temporal characteristics of the retroreflected beam” and the comparison of
these characteristics of the retroreflected beam to the transmitted beam does not
provide clear support for this additional limitation. Ex. 2118, 10:30–11:5.
Neither such spectral nor temporal characteristics clearly describe radiant flux
density.
Similarly, the other additional limitation recited in substitute claims 70
and 75, namely, that an object characteristic is determined based on a “change in
IPR2014-01441
Patent RE43,681 E

37
a radiant flux density of the reflected radiant energy after retroreflection over
time” allegedly also finds support in the same portions of the priority application
for the ’681 patent. Mot. 3 (citing Ex. 2118, 5:14–22; 7:20–29; 16:1–5), 5 (citing
Ex. 2118, 7:20–29; 15:7–16:1). Again, as noted above, Patent Owner fails to
explain where this additional limitation appears expressly or implicitly in any of
the cited portions of the priority application, and we find no express or implicit
reference to determining characteristics of the object from the “optical gain” of
the reflected radiant energy.
Patent Owner argues that Dr. Leger confirms that a person having ordinary
skill in the art at the time of the invention would have understood the priority
application for the ’681 patent to teach these additional limitations of claims 70
and 75:
In my opinion, substitute claims 54 and 57 find support at page 3,
lines 5-7; page 5, lines 14-22, page 7, lines 20-24, page 8, lines 15-
16, page 15, lines 11-16 of the priority document of the ‘913 Patent.
In particular, one of ordinary skill would have understood that the
priority document discloses embodiments in which a retroreflective
optical system, e.g., binoculars, is detected based on a change in the
radiant flux density of reflective radiant energy as an area is scanned.
In other words, the retroreflective optical system is detected based on
a change in the radiant flux density of the reflected radiant energy
over time. The priority document discloses that such a detection of
an optical system can be followed by tracking it. See, e.g., page 15,
line 27 to page 16, line 1.
Id. at 3–4 (citing Ex. 2104 ¶ 119 (emphasis added)) (discussing claim 70); see
also id. at 5 (citing Ex. 2104 ¶¶ 128–29) (discussing claim 75). Nevertheless,
Patent Owner and Patent Owner’s declarant incorrectly refer to claims 54 and 57,
which are the substitute claims in the Motion to Amend filed in a related case,
Case IPR2014-01439, with respect to the ’913 patent. See supra Section I.B.
Further, Dr. Leger’s discussion in Paragraph 128 of his declaration (Ex. 2104) is
IPR2014-01441
Patent RE43,681 E

38
unsupported opinion testimony; and, although, in Paragraph 129, Dr. Leger cites
to various portions of the priority application (Ex. 2118) as supporting the
substitute claims, Dr. Leger fails to explain precisely which limitations these
portions support or why. Consequently, we do not find Dr. Leger’s testimony to
be persuasive in that regard.
b. Claims 80–8416
Substitute, independent claim 80 recites an apparatus for automatically
tracking at least a portion of an object within an optical system. The recited
apparatus comprises a radiant energy source, “a detector configured to detect an
optical gain of received reflected radiant energy after retroreflection of the radiant
energy, based on a change in a radiant flux density of the reflected radiant energy
over time”; and a utilization system configured to automatically track the at least a
portion of the object “based on a characteristic of the at least a portion of the
object determined from the optical gain of the reflected radiant energy.” Paper
18, 8–10 (emphases added).
Each of the three elements of apparatus claim 80 (a radiant energy source,
a detector, and a utilization system) were recited in challenged claim 65 and
allegedly find support throughout the priority application for the ’681 patent.
Mot. 5–7 (citing Ex. 2118, 3:18–22; 4:11–12; 10:9–17; 15:7–10, Abstract).
Patent Owner argues that the additional limitations added to challenged claim 65
are supported by the same portions of the priority application, upon which Patent
Owner relies to support the additional limitations of substitute claims 70 and 75,

16 Substitute, dependent claims 81–84 present the language of challenged
claims 66–69 verbatim (except for renumbering) and also are supported by
the priority application for the ’681 patent. Mot. 7 (citing Ex. 2118, 5:17–
20, 8:24–9:24, 10:30–11:5; 15:4–6, 17:30–33).
IPR2014-01441
Patent RE43,681 E

39
discussed above. Id. at 6 (citing Ex. 2118, 7:20–29; 8:15–26; 10:30–11:5, Fig.
12), 7 (citing Ex. 2118, 10:30–11:5; 15:11–16:5). Further, Patent Owner again
cites to Dr. Leger’s testimony to support the argument that a person of ordinary
skill in the art would understand the additional limitations to be supported by
written description in the priority application for the ’681 patent. Id. at 7 (citing
Ex. 2104 ¶¶ 128–29). Patent Owner’s citations to portions of priority application
for the ’681 patent and Dr. Leger’s testimony suffer from the same deficiencies
with respect to substitute claim 80, as they did with respect to substitute claims 70
and 75.
For the foregoing reasons, we find Patent Owner’s arguments and
evidence deficient.
3. Petitioner’s Allegations of Lack of Support
Petitioner contends that there is insufficient support in the priority
application for the added limitations of the substitute claims. Opp. 3−9. In
particular, Petitioner contends that the priority application for the ’681 patent
does not describe determining optical gain or an object characteristic based
on a change in radiant flux density. Opp. 4–6. According to Petitioner, the
only reference to “radiant flux density” in priority application for the ’681
patent is found in the following single paragraph:
The rays retroreflected by the optical systems depicted in F IGS.
1 to 4 are in the form of a narrow, substantially collimated beam
having a high radiant flux density. It is to be noted that there is
an actual increase in the radiant flux density of the retroreflected
beam due to the narrowing thereof. This increase in radiant flux
density is herein termed optical gain.
Opp. 4–5 (citing Ex. 1001, col. 4, ll. 21–26); see Ex. 2118, 7:20–24.
Petitioner argues that “[a]side from this passage explaining why
IPR2014-01441
Patent RE43,681 E

40
retroreflectors direct more light back to the source than background objects,
the radiant flux density of the retroreflected light is not further referenced,
explained, utilized, or incorporated elsewhere in the [S]pecification.”17 Opp.
5 (citing Ex. 1015 ¶ 36). Moreover, Petitioner argues that the discussion
following this passage describes calculating optical gain based on radiant
flux of the retroreflected light per steradian (i.e., power per unit solid
angle), not radiant flux per unit area (i.e., radiant flux density). Ex. 2118,
7:25–9:3; Ex. 1015 ¶ 36; see Ex. 1014, 16:19–21; supra Section I.F.3.a.
Finally, Petitioner also contends (Opp. 6–7) that the priority
application’s disclosure that “[t]he energy obtained by the utilization means
can be used to obtain the spectral and temporal characteristics of the
retroreflected beam, and the same may then be compared with the transmitted
beam to determine various characteristics of the optical system being
investigated” (Ex. 2118, 10:30–11:3) does not disclose determinations based
on radiant flux density changes, as recited in substitute claims 70, 75, and 80.
E.g., Mot. 3. Instead, that passage only refers to “energy,” not radiant flux
density; and Petitioner contends that that citation is to no avail.
Moreover, Petitioner contends (Opp. 6–7) that Patent Owner’s citation to
the priority application as purportedly disclosing a utilization system, as recited in
substitute claim 80, that determines object characteristics based on a change in
radiant flux density (Mot. 6 (citing Ex. 2118, 15:7–10)) also is to no avail. That
passage merely states that the utilization system can be programmed to track an

17 Petitioner alleges that, even though the term “radiant flux density” appears
in cancelled claims 1, 17, 40, 42–43, it was added improperly to these claims
during the prosecution of the parent patent, Patent No. US 6,603,134 B1.
Petitioner notes that this term is not in any of the originally filed claims in the
priority document. Ex. 2118, 19–29.
IPR2014-01441
Patent RE43,681 E

41
optical instrument; there is no mention of radiant flux density, let alone making
any determination based upon changes thereof. See Opp. 6.
Petitioner further contends that, while the embodiments of Figures 6, 7, 7a,
7b, and 12 include detectors that detect retroreflected light, none of these figures
depict embodiments that are described as capable of detecting radiant flux density
and/or changes in radiant flux density, let alone making any determinations based
upon measured changes in radiant flux density. Opp. 8–9 (citing Ex. 1015 ¶¶ 36–
37). Moreover, the priority application for the ’681 patent
makes no disclosure of any known area from which the density of the
retroreflected light could be calculated; no apertures of known size,
nor beam size or detector size measurements or capabilities, are
disclosed. Nor is there any disclosure of providing size information
regarding any known area to any of the disclosed utilization means
to enable calculation of radiant flux density.
Id. at 9; see supra Section I.F.3.a. Dr. Hesselink opines that the additional
limitations of the substitute claims are not taught by the priority application for
the ’681 patent. Ex. 1015 ¶¶ 36–37; see Blue Calypso, LLC v. Groupon, Inc.,
Dkt. Nos. 2015-1391, 2015-1393, 2015-1394, slip op. at 21 (Fed. Cir. Mar. 1,
2016) (“To adequately support the claims, the written description ‘must clearly
allow persons of ordinary skill in the art to recognize that the inventor invented
what is claimed.’”; quoting Ariad Pharm., 598 F.3d at 1351). We find
Petitioner’s arguments and evidence persuasive.
4. Dr. Leger’s Statements during Cross-Examination
Finally, as noted above, Patent Owner relies on Dr. Leger’s testimony that
a person skilled in the art would understand that the priority application for the
’681 patent discloses embodiments in which retroreflective optical systems are
detected based on a change in the radiant flux density of the reflective radiant
IPR2014-01441
Patent RE43,681 E

42
energy as an area is scanned. Mot. 3–5, 7; Ex. 2104 ¶¶ 119, 128–29. However,
Petitioner notes that, when cross-examined about the foundations of his
conclusions, Dr. Leger made a number of statements contradicting or
undermining his testimony and Patent Owner’s allegations that the substitute
claims are supported by the priority application for the ’681 patent. Opp. 7–8.
Dr. Leger’s contrary testimony during cross-examination is directed to two
key issues relating to the written description support for the proposed substitute
claims. First, Dr. Leger testified to certain deficiencies in the disclosure of the
priority application for the ’681 patent with respect to the calculation of radiant
flux density. Id. Second, Dr. Leger testified to certain deficiencies in the
disclosure of the capabilities of the detectors described in the priority application
for the ’681 patent. Id. at 8. This cross-examination testimony weighs heavily
against Dr. Leger’s assertions in his declarations. E.g., Ex. 2104 ¶¶ 119, 128–29;
Ex. 2125 ¶¶ 77–80.
a. Calculation of Radiant Flux Density
During cross-examination, Dr. Leger acknowledged that detecting
optical gain “based on a change in the radiant flux density of the reflected
radiant energy over time,” as recited in substitute claims 70, 75, and 80,
requires measuring radiant flux density twice and comparing the measured
values. Ex. 1014, 145:4–13, 147:8–13. In particular, Dr. Leger testified that
measuring radiant flux density requires measuring radiant flux through a
known area and then dividing the radiant flux by the known area. Id. at 50:9–
51:4.
Nevertheless, Dr. Leger testified that, without knowing the area, e.g.,
spot size of the retroreflected energy hitting the detector, radiant flux density
cannot be measured or determined. Id. at 53:21–54:1. Even if the beam
IPR2014-01441
Patent RE43,681 E

43
completely fills the detector, Dr. Leger testified that a utilization means
connected to the detector, which is not provided with the surface area of the
detector, is not capable of detecting or measuring radiant flux density. Opp. 8
(citing Ex. 1014, 84:5–85:4). Because neither Patent Owner nor Dr. Leger
shows where the priority application for the ’681 patent discloses determining
the area of the reflected energy, Patent Owner fails to demonstrate that the
priority application discloses detecting optical gain “based on a change in the
radiant flux density of the reflected radiant energy over time.”
b. Detectors Capable of Detection Radiant Flux Density
As discussed above, “radiant flux” is “the rate of emission or
transmission of radiant energy,” and “radiant flux density” is “the power of
radiant energy delivered to a given area.” See supra Section I.F.3.a. During
cross-examination, Dr. Leger testified that it is not possible to detect optical
gain “based on a change in the radiant flux density of the reflected radiant
energy over time” using only a detector that measures radiant flux. Ex. 1014,
145:14–146:4.
Contrary to Patent Owner’s arguments, Dr. Leger testified that there is
no disclosure in the ’681 patent (or its priority application) that detector 184 in
Figure 12 measures radiant flux density. Id. at 148:22–25. Further, Dr. Leger
testified that detector 82 in Figure 6 and detectors 92, 92A, and 92B in Figures
7, 7a, and 7b, respectively, of the ’681 patent only measure radiant flux. Id. at
82:6–10; 85:18–86:6. In addition, Dr. Leger testified that the ’681 patent does
not disclose a detector that itself compares radiant flux density values (id. at
163:20–25) and that the ’681 patent (or its priority application) does not
disclose a utilization means that compares radiant flux density values (id. at
164:20–24).
Petitioner contends that Dr. Leger’s testimony during cross-examination
IPR2014-01441
Patent RE43,681 E

44
supports its view that the ’681 patent and its priority application do not disclose
measuring radiant flux density, changes in radiant flux density, or making any
determinations based on changes in radiant flux density, sufficiently to provide
written description supporting the substitute claims. Opp. 7–8. We find this
argument persuasive.
Considering and weighing the priority application, the testimony of
Dr. Hesselink, and the testimony of Dr. Leger, in view of the parties’
arguments, we conclude that a preponderance of evidence compels a
determination there is insufficient written description in the priority
application for the ’681 patent to support the additional limitations
individually or the substitute claims as a whole. Therefore, we deny Patent
Owner’s Motion to Amend.
III. CONCLUSION
Based on the record presented in this proceeding, Patent Owner has
failed to show by a preponderance of the evidence that proposed substitute
claims 70–84 are patentable.
IV. ORDER
For the reasons given, it is
ORDERED that Patent Owner’s Motion to Amend is granted to the
extent it requests the cancellation of claims 48, 50–53, and 60–69 of the ’681
patent;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied to the extent it requests entry of substitute claims 70–84; and
IPR2014-01441
Patent RE43,681 E

45
FURTHER ORDERED that, because this is a final 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.

IPR2014-01441
Patent RE43,681 E

46
PETITIONER:

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

PATENT OWNER:

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