Toshiba Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Mar 8, 2016

11197731 (P.T.A.B. Mar. 8, 2016)

Trials@uspto.gov Paper 38
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 IPR2014-01443
Patent RE40,927 E
_______________

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

FRANKLIN, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Toshiba Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
institute an inter partes review of claims 37, 38, 48, 49, 51–53, 55–58, 60,
61, 63, 64, 67–69, and 71 of Patent No. US RE40,927 E (Ex. 1001,
“the ’927 patent”). Optical Devices, LLC (“Patent Owner”) filed a
Preliminary Response (Paper 7, “Prelim. Resp.”).
On March 10, 2015, we instituted an inter partes review of claims 37,
38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63, 64, 67–69, and 71 of the
’927 patent. Paper 8 (“Dec. Inst.”). Patent Owner filed a Patent Owner
Response to the Petition. Paper 15 (“PO Resp.”). Petitioner filed a Reply to
the Patent Owner Response. Paper 21 (“Pet. Reply”).
Additionally, Patent Owner filed a Contingent Motion to Amend
seeking to replace any of original claims 37, 38, 48, 49, 51–53, 55, 57, 58,
60, 61, 63, 64, 67–69, and 71 found to be unpatentable with substitute claims
72–89, respectively. Paper 16 (“Mot.”). Petitioner filed an Opposition to
the Contingent Motion to Amend. Paper 22 (“Opp.”). Patent Owner filed a
Reply to Petitioner’s Opposition. Paper 31 (“Reply”). On January 12, 2016,
the parties presented arguments at an oral hearing. Paper 37 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
Written Decision, issued pursuant to 35 U.S. C. § 318(a) and 37 C.F.R.
§ 42.73, we determine that Petitioner has shown by a preponderance of the
evidence that claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63, 64, 67–69,
and 71 are unpatentable. We also deny the Motion to Amend.
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B. The Cited Reference and Declaration
Petitioner relies upon Patent No. US 3,506,839 to Ando, filed
February 20, 1967 (“Ando”) (Ex. 1007) in support of its ground challenging
the identified claims of the ’927 patent. Petitioner relies also upon the
Declaration of Lambertus Hesselink, Ph.D. (Ex. 1008).
Patent Owner relies upon the Declaration of James R. Leger, Ph.D.
(Ex. 2104).
C. The Instituted Ground of Unpatentability
Petitioner challenges the patentability of claims 37, 38, 48, 49, 51–53,
55, 57, 58, 60, 61, 63, 64, 67–69, and 71 under 35 U.S.C 102(e) (pre-AIA)
as anticipated by Ando. Pet. 12.   
D. Related Proceedings
The parties indicate that the ’927 patent is the subject of Optical
Devices, LLC v. Toshiba Corp., Case No. 1:13-cv-10530 (D. Del. 2013).
Pet. 1; Paper 6, 2 (also identifying other related cases). In addition, the
patent currently is the subject of an investigation before the U.S.
International Trade Commission: In the Matter of Certain Optical Disc
Drives, Components Thereof, and Products Containing the Same, Inv. No.
337-TA-897. Pet. 1; Paper 6, 1. Further, we instituted inter partes reviews
for claims of the following patents covering related subject matter: Patent
Nos. US RE42,913 E (IPR2014-01439, Paper 7) and US RE43,681 E
(IPR2014-01441, Paper 8, and IPR2014-01442, Paper 7). IPR2014-01442
was consolidated with IPR2014-01441 (IPR2014-01441, Paper 9; IPR2014-
01442, Paper 8).
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E. The ’927 Patent
The ’927 patent describes an optical system having a focusing lens
and a reflective surface positioned near the focal plane of the lens, whereby
radiant energy from a radiant energy source directed at the system is
reflected back towards the source by the optical system due its
retroreflection characteristics. Ex. 1001, 2:48–53. The retroreflected rays
are recovered by a radiant energy receiver to allow detection of the presence
and relative position of the optical system. Id. at 2:52–55. The claims at
issue are directed to an apparatus for measuring the retroreflective
characteristics of such an optical system, as well as a method and apparatus
for detecting characteristics or properties of such a system. See, e.g., id. at
Claims 38, 48, and 61.
The Specification defines a “retroreflector” as “a reflector wherein
incident rays or radiant energy and reflected rays are parallel for any angle
of incidence within the field-of-view.” Id. at 1:10–13. The Specification
explains that “[a] characteristic of a retroreflector is that the energy
impinging thereon is reflected in a very narrow beam, herein referred to as
the retroreflected beam.” Id. at 1:13–15. According to the Specification,
“[t]his phenomenon is termed retroreflection.” Id. at 1:15–16.
Figure 1 of the ’927 patent is reproduced below:

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

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

Ex. 1001, 3:28–41. The difference in radiant flux density between the
smaller circle of confusion of Figure 1, i.e., where surface 22 lies in the focal
plane, and that of Figure 3, i.e., where surface 22B lies substantially, but not
entirely, in focal plane 24B, is referred to as the optical gain. See id. at col.
3:28–65. In Figures 1 and 3, the rays retroreflected by the optical system are
in the form of a narrow, substantially collimated beam having a high radiant
flux density. Id. at 3:59–61. “[T]here is an 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.” Id. at 3:62–
65.
F. Illustrative Claims
Independent claim 37 is illustrative and is reproduced below:
37. Apparatus for measuring the retroreflective characteristics
of an optical system consisting of at least a focusing means and
a surface exhibiting some degree of reflectivity disposed
substantially in the focal plane of said focusing means, said
apparatus comprising
a radiant energy source,
detection means,
measuring means connected to said detection means, and
means for directing said radiant energy produced by said
source at said optical system,
whereby said radiant energy is retroreflected with an optical
gain by said optical system and detected by said
detecting means and the output thereof is coupled to said
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measuring means.
Ex. 1001, 12:55–13:2 (disputed limitation emphasized). Claims 37, 48, and
61 are independent. The remaining challenged claims depend, directly or
indirectly, from one of these independent claims.
G. Claim Construction
In an inter partes review, the Board construes claim terms in an
unexpired patent according to the broadest reasonable interpretation in light
of the specification of the patent in which they appear. 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed.
Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84
U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under that standard, and
absent any special definitions, we give claim terms their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
Any special definitions for claim terms must be set forth with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). “In such cases, the inventor’s lexicography
governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
banc). In the absence of such definitions, limitations are not to be read from
the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
Only terms which are in controversy need to be construed, and only to
the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we
provide express constructions for only the following terms.
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1. “Optical Gain”
In the context of a retroreflecting optical system, Petitioner proposes
that we construe “optical gain” as “‘an actual increase in the radiant flux
density of the retroreflected beam due to the narrowing thereof.’” Pet. 16.
Petitioner argues 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 20.
In support of its position, Petitioner provides the following image
comparing retroreflected light with Lambertian scattered light at Petition
page 21 and at Exhibit 1008 ¶ 47:

According to Petitioner, the comparison depicted in this image 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
flux density of the reflected light. Pet. 21.
Patent Owner argues for a broader construction of “optical gain” that
it asserts would be consistent with various “embodiments” described in the
Specification of the ’927 patent. PO Resp. 6−19. Patent Owner proposes
that the broadest reasonable construction of the term “optical gain” in the
context of the ’927 patent is “a change in radiant flux density of reflected
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radiant energy.” PO Resp. 6 (citing Ex. 2104 ¶¶ 20–21).
Patent Owner’s declarant, Dr. Leger, explains that one of ordinary
skill would have understood that in certain of the embodiments, “the radiant
flux density of the reflected radiation at one scanned location can be
compared with the reflected [radiant] flux density at another scanned
location.” Ex. 2104 ¶ 21. Dr. Leger explains further that “a change in the
detected reflected [radiant] flux density from one location to another can
signal the presence or absence of a retroreflective instrument.” Id.
According to Dr. Leger, one of ordinary skill would appreciate that a
photodetector signal increase would represent “an increase in the radiation
flux density when the scanning radiation is moved from an object that is not
a retroreflector onto an adjacent object that exhibits a retroreflective
characteristic (e.g., a binocular).” Id. On the other hand, a signal decrease
would represent “a decrease in the radiation flux density when the scanning
radiation is moved from an object that has a retroreflective characteristic to
an adjacent object that does not have such a characteristic.” Id. According
to Dr. Leger, the fact that an 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 relative decrease in the reflected radiant flux density. Id. In
another example, in order to track an object associated with some level of
retroreflectivity, a relative decrease in the retroreflectivity is detected when
the object moves away from the initially detected location. Id. Therefore,
Dr. Leger reasons that one of ordinary skill would have understood that the
concept of “optical gain” as used in the ’927 patent “covers both an increase
and a decrease in the reflected radiant flux density.” Id.
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Petitioner, relying upon the testimony of its declarant, Dr. Hesselink,
disagrees with Patent Owner. Pet. 16–22; Pet. Reply 4–8. According to Dr.
Hesselink, the inventor of the ’927 patent acted as a lexicographer by
providing 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. 1008 ¶ 39 (emphasis omitted). Dr. Hesselink refers
to the following passage from the ’927 patent to support his view:
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 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.
Ex. 1001, 3:59–63 (emphasis added).
Patent Owner argues that one of ordinary skill would not have
understood this passage to be a definition, but rather would have understood
it to be describing “optical gain” in the context of a particular illustrative
embodiment. PO Resp. 10 (citing Ex. 2104 ¶ 23). Restricting the
construction of “optical gain” in the context of the ’927 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 ’927 patent. Id.
Patent Owner asserts that Dr. Hesselink’s view requires that “optical
gain” be measured relative to a Lambertian radiator. Id. (citing Ex. 1008
¶ 40). Dr. Hesselink refers to the following passage from the ’927 patent:
“In 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.” Id. ¶ 40
(citing Ex. 1001, 4:27–30). However, Dr. Leger interprets this passage
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differently, namely — it provides a general statement that one must compare
the retroflector to a standard or reference to obtain a measure of optical gain.
Ex. 2104 ¶ 24. Following this general statement and in the context of a
particular illustrative example, the ’927 patent indicates that the reference
has been chosen to be a Lambertian radiator. Id. As such, one of ordinary
skill would have understood from this language that the ’927 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 asserts that Dr. Hesselink relies upon the plain
meaning “gain” in construing “optical gain” to indicate a positive change.
PO Resp. 11 (citing Ex. 1008 ¶ 44). Patent Owner argues, however, that, in
the field of microwave antennas, for example, the “gain” of an antenna can
be positive or negative. Id. For example, in the field of microwave
antennas, the “gain” of an antenna can be positive or negative. Id. (citing
Ex. 2104 ¶ 25). The Specification of the ’927 patent explains that its
teachings are applicable to the detection of microwave apparatus, such as
antennas. Id. (citing Ex. 1001, 9:5–8). Thus, according to Patent Owner,
one of ordinary skill would understand that the concept of “optical gain” as
used in the ’927 patent covers both an increase and a decrease in the
reflected radiant flux density as compared to a standard or reference. Id. at
11–12 (citing Ex. 2104 ¶ 24).
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. See Ex. 2119, 60:10–61:8.
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Specifically, Dr. Hesselink testified that
“Gain” in general, unrelated to what is here, my understanding
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)1
(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 defines the term. As the Federal Circuit has
explained,
[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.
See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the
specification is “the single best guide to the meaning of a disputed term” and
“acts as a dictionary when it expressly defines terms used in the claims or
when it defines terms by implication”); 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

1 This Final Written Decision does not reference Exhibit 3001.
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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. 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)).
The ’927 patent includes a description of a radar system embodiment
with respect to Figures 13 and 14. Ex. 1001, 9:25–57. The radar system is
detected by means of the “retroreflection principles” of the invention. Id. at
9:25–27. However, the term “optical gain” is not used in connection with
this embodiment. The term appears in the Specification only in connection
with embodiments relying on what has traditionally been referred to as
“optical.” 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. The challenged claims are directed to either a method of or an
apparatus for measuring or detecting characteristics of an “optical system.”
As noted above, we construe “optical system” to mean “a collection of
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optical elements including at least a lens and a reflective surface.” In this
context, 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 “optical gain” to mean “an increase in radiant flux density of
reflected optical radiant energy.”
2. Unchallenged Constructions
We provided the following constructions in the Institution Decision:
(a) “‘focal plane’” as “‘a plane through the focus perpendicular to the
axis of an optical element.’” Dec. Inst. 8.
(b) “‘retroreflected’” as “‘having undergone reflection of an incident
ray in a manner such that the reflected ray is parallel to the incident ray of
any angle of incidence,’ . . . wherein any angle of incidence is ‘within the
field-of-view’ of the retroreflector.’” Id.
(c) “‘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, . . . wherein any angle of incidence is ‘within the field-of-view’ of
the retroreflector.’” Id.
(d) “‘optical system’” as “‘a collection of optical elements including
at least a lens and a reflective surface.’” Id.
(e) “‘substantially concentric’” as “‘having an axis, or axes, aligned
coaxially or nearly coaxially therewith.’” Id. at 9.
The parties do not challenge those constructions in the Patent Owner’s
Response or in the Petitioner’s Reply. Nor do we find any reason to depart
from those constructions in this Final Written Decision. Accordingly, we
maintain each of those unchallenged constructions as the broadest
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reasonable interpretation, consistent with the Specification, in this Decision.
Based on our analysis, we determine that no express claim
construction is necessary for any remaining claim term.
H. Level of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)(citing Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966) and Ryko Mfg. Co. v. Nu-Star, Inc.,
950 F.2d 714, 718 (Fed. Cir. 1991)).
Petitioner asserts that one of ordinary skill in the art at the time of the
filing of the ’729 patent as having either:
(1) a Bachelor’s of Science Degree in Physics, Optics, Electrical
Engineering, or a related field with coursework 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. 26–27 (citing Ex. 1008 ¶ 32) (emphasis added).
Patent Owner asserts that one of ordinary skill in the art 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.” PO Resp. 4 (citing Ex. 2104 ¶ 10) (emphasis added).
Based on our consideration of the record, we find that the evidence as
a whole supports Petitioner’s broader description of the level of ordinary
skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary
skill in the art.
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II. ANALYSIS
Petitioner contends that claims 37, 38, 48, 49, 51–53, 55–58, 60, 61,
63, 64, 67–69, and 71 of the ’927 patent are anticipated by Ando. Pet. 27;
Pet. Reply 9–15. In the Patent Owner’s Response, Patent Owner challenges
Petitioner’s contentions only with respect to claims 37, 38, 58, and 69, i.e.,
only the challenged claims requiring that “the reflected radiant energy has an
optical gain.” PO Resp. 33–37. As explained in the Scheduling Order, “any
arguments for patentability not raised in the response will be deemed
waived.” Paper 9, 3 (discussing due date for Patent Owner’s Response).
Accordingly, Patent Owner has waived arguments relating to Petitioner’s
challenge of claims 48, 49, 51–53, 55–57, 60, 61, 63, 64, 67, 68, and 71.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
A. Ando
Ando is directed to “[a] contactless probe system for determining the
configuration of an object comprising a laser scanner scanning the surface of
the object with a beam of light focused at a point which is a fixed distance
from the scanner.” Ex. 1007, 1:15–19.
Ando’s Figure 1 is reproduced below.
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Figure 1 is a block diagram of a “contactless probe system” constructed in
accordance with the teachings of Ando’s specification. Ex. 1007, 2:30–32.
Ando explains that its “contactless probe system” determines the contour of
the surface of object 20 by using servo control to adjust the probe system so
as to keep light focused on the surface of the object as it is scanned. Ex.
1007, 2:18–26. Light source 12 may be an electric lamp or a laser. Id. at
1:15–19, 2:43–44. Servo control of the probe system is affected by
superimposing a frequency on the radiation reflected from the object and
passing through lens 24 by vibrating 28 pinhole 27 through which the
received radiation passes. The probe system is moved so as to minimize the
frequency imposed by vibrator 28. Ando states,
More specifically, when an illuminated point on the surface of
the object 20 is at a distance from the lens 18 substantially equal
to the focal length f1 thereof, the corresponding beam of light
passing through the lens 24 has a minimum diameter at the center
of vibration about which the pinhole 27 is vibrating. This causes
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the output from the photocell 30 to have no component of the
fundamental frequency at which the pinhole 27 is vibrating
whereby the phase comparator 34 provides a null output.

Id. at 3:49–57 (emphasis added). The movement of table 10 of the probe
system, while object 20 is kept in focus, maps the contour, i.e., three-
dimensional configuration, of object 20. Id. at 4:19–25. Thus, a
characteristic, i.e., the surface contour, of object 20 is determined from the
reflected light and manipulation of the probe system so as to maintain focus.
B. Independent Claim 37 and Dependent Claim 38
Claims 37 and 38 of the ’927 patent are directed to apparatus for
measuring the retroreflective characteristics of an optical system. Petitioner
asserts that Ando discloses each limitation of claims 37 and 38, as set forth
in its claim charts. Pet. 30–35. In particular, referring to Ando’s Figure 1,
Petitioner asserts that the claim limitation, “radiant energy is retroreflected
with an optical gain by said optical system” is met by Ando’s disclosure of a
retroreflector having a reflective surface 20 in the focal plane of lens 18,
wherein the incoming light to the lens 18 is collimated, “which shows
radiant energy retroreflected with optical gain.” Id. at 34. To illustrate this
point, Petitioner reverses a portion of Ando’s Figure 1 and juxtaposes it with
Figure 1 of the ’927 patent (Pet. 29), as follows:
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According to Petitioner, both figures show incoming collimated light
focused onto a surface of an object substantially in the focal plane of a lens,
whereby reflected light is collimated by the lens, so that retroreflected light
rays are parallel to the incoming light rays. Pet. 29–30 (citing Ex. 1008
¶ 60).
Light from electric lamp 12 passes through pinhole 15, enters lens 16,
and is collimated and directed through lens 18. Ex. 1007, 2:8–13, 37–52.
Lens 18 then focuses this collimated light onto the surface of object 20. Id.
at 2:52–63. Petitioner asserts that light reflected from the object 20 back
through lens 18 is split by half-silvered reflector plate 22 and ultimately is
received by photosensitive device 30. Pet. 28–30. A servo system
comprising oscillator 34, vibrator 28, slit 27 of aperture plate 26,
photosensitvie device 30, phase comparator 36, amplifier 38, and servo
motor 40 moves table 10 of the probe system so as to re-focus light
continuously on object 20, thereby mapping its contour.
Petitioner argues that light reflected from object 20 is received with an
optical gain because retroreflection is occurring and optical gain is “an
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inherent necessary result from a retroreflector having a lens and a surface
disposed in the focal plane of that lens for collimated incoming light.” Pet.
20, 34 (citing Ex. 1008 ¶¶ 45–48). According to Petitioner, when optical
gain is present in the retroreflected light, then the retroreflected light
ultimately received by photosensitive device 30 necessarily must have an
optical gain also. Id. We agree.
Patent Owner asserts that Ando fails to disclose at least one limitation
of claim 37. PO Resp. 35. In particular, Patent Owner asserts that one of
ordinary skill would understand the recitation in claim 37 that “radiant
energy is retroreflected with an optical gain by said optical system and
detected by said detecting means” requires the “detecting means” to detect
an optical gain of the retroreflected energy, i.e., detecting a change in the
radiant flux density of the retroreflected energy. Id. at 33. According to
Patent Owner, because Ando does not disclose detecting optical gain, it
would not anticipate this limitation. Id. at 34. In particular, Patent Owner
notes that Ando relies upon analyzing the frequency content of an oscillatory
output of the photosenitive device 30 rather than comparing flux density of
two illuminated spots. Id. Further, Patent Owner relies on Dr. Leger’s
explanation that
the operation of Ando’s comparator 36 does not even depend on
the amplitude of the output of the photosensitive device 30 so
long as the output of the photosensitive device 30 exhibits
sufficient signal-to-noise ratio (SNR) to allow the phase
comparator 36 to operate properly in analyzing the frequency and
phase content of the oscillatory output of the photosensitive
device.
Id. at 35 (citing Ex. 2104 ¶ 65).
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Although we agree with Patent Owner’s description of Ando’s
operation, we disagree with Patent Owner’s conclusion that Ando does not
disclose the disputed claim limitation. Specifically, we do not find sufficient
evidence to read into claim 37 a requirement of detecting optical gain. The
invention of the ’927 patent involves discerning a retroreflector from its
background. The retroreflector provides a brighter spot than does its
background because of the concentration of flux caused by the retroreflector
that makes it appear brighter. However, that key feature is missing from
claim 37.
Claim 37 recites “whereby said radiant energy is retroreflected with
an optical gain by said optical system.” However, the detection that follows
simply requires detection of said retroreflected radiant energy. Because
Ando detects such retroreflected radiant energy, we find that Ando discloses
the single limitation of claim 37 disputed by Patent Owner.
Patent Owner asserts that claim 38 is not anticipated by Ando for at
least the reasons provided in connection with claim 37. PO Resp. 35. Thus,
we remain unpersuaded by Patent Owner’s contention regarding claim 38
for the same reasons discussed regarding claim 37.
Based on our review of the record, as a whole, and our claim
interpretations, we find that Petitioner has established by a preponderance of
the evidence that Ando discloses each limitation of claims 37 and 38.
Accordingly, we conclude that the preponderance of the evidence establishes
that Ando anticipates claims 37 and 38.
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C. Independent Claim 48 and Dependent Claims 49, 51–53, 55, 57,
and 60
Claims 48, 49, 51–53, 55, 57, and 60 of the ’927 patent are directed to
methods of detecting characteristics or properties of an optical system based
on a retroreflected beam. Petitioner asserts that Ando discloses each
limitation of those claims, as set forth in its claim charts. Pet. 35–44. In
particular, Petitioner asserts that Ando’s photosensitive device 30 detects
radiant energy retroreflected from the optical system, and Ando’s phase
comparator 36 compares the output of the photosensitive device with the
output of an oscillator to determine the displacement of the object from the
focal plane of the lens. Id. at 39. In the Patent Owner Response, Patent
Owner does not address claims 48, 49, 51–53, 55, 57, and 60.
Having considered the record as a whole, we agree with Petitioner that
Ando discloses the elements of the challenged claims. In particular, we find
that Ando determines a characteristic of an object based on light reflected
from its surface. Specifically, Ando determines the contour of the object,
i.e., “a three dimensional configuration of an object.” See Ex. 1007, 1:69.
Without the benefit of the reflected radiant energy, the Ando system could
not servo focus on the surface of object 20, thereby mapping the contours of
that surface. As noted above, when the portion of the surface of object 20,
from which radiant energy is retroreflected, is in the focal plane, the
retroreflected radiant energy is focused by lens 24 through the center of slit
27. Ando uses the reflected radiant energy as a carrier on which to impose a
modulation by vibrating the slit 27 through which the reflected light passes.
Thus, as Petitioner has explained (Pet. 39 (citing Ex. 1007, 2:18–26)), the
reflected radiant energy detected by photosensitive device 30 is used by the
phase comparator to determine at least the displacement of the object from
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the focal plane of the lens, which is a characteristic or property of the optical
system. Pet. 40 (citing Ex. 1007, 3:49–57).
Therefore, we find that Petitioner has demonstrated by a
preponderance of the evidence that Ando’s disclosure meets the claim
limitation requiring “detecting the reflected radiant energy after
retroreflection to determine at least one characteristic or property of the
optical system.”
Further, based on our review of the record, as a whole, and our claim
interpretations, we find that Petitioner has demonstrated by a preponderance
of the evidence that Ando discloses the remaining elements of claims 48, 49,
51–53, 55, 57, and 60. Accordingly, we conclude that the preponderance of
the evidence establishes that those claims are anticipated by Ando.
D. Dependent Claim 58
Claim 58 of the ’927 patent recites that “[t]he method of claim 48,
wherein the reflected radiant energy has an optical gain.” Because claim 48
recites, in part, “detecting the reflected radiant energy after retroreflection,”
Patent Owner asserts that one of ordinary skill in the art would have
understood that claim 58 requires detecting optical gain of the retroreflected
radiant energy. PO Resp. 36. Patent Owner relies on the same rational
asserted regarding the detection limitation of claim 37. Id. As discussed,
Petitioner has established by a preponderance of the evidence (a) that Ando
discloses detecting the reflected radiant energy after retroreflection, and (b)
that the reflected radiant energy has an optical gain. Further, for the same
reasons discussed with respect to claim 37, we do not find sufficient
evidence to read into claim 58 a requirement of detecting optical gain.
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Therefore, based on our review of the record, as a whole, and our
claim interpretations, we find that Petitioner has demonstrated by a
preponderance of the evidence that Ando discloses each and every element
of claim 58. Accordingly, we conclude that the preponderance of the
evidence establishes that claim 58 is anticipated by Ando.
E. Independent Claim 61 and Dependent Claims 63, 67, 68, and 71
Claims 61, 63, 64, 67, 68, and 71 of the ’927 patent are directed to
apparatus for detecting characteristics or properties of an optical system
based on a retroreflected beam. Petitioner asserts that Ando’s disclosure of
each limitation of the claims is demonstrated in its claim charts. Pet. 30, 44–
50. Patent Owner does not raise any contentions regarding these claims in
the Patent Owner Response.
Having considered the record, as a whole, and our claim
interpretations, we agree with Petitioner that Ando discloses each and every
element of the challenged claims. Accordingly, we conclude that the
preponderance of the evidence establishes that claims 61, 63, 64, 67, 68, and
71 are anticipated by Ando.
F. Dependent claim 69
Claim 69 of the ’927 patent recites, “[t]he apparatus of claim 61,
wherein the reflected radiant energy has an optical gain.” Because claim 61
recites, in part, “an optical system that directs radiant energy from the source
toward a retroreflective surface that returns reflected radiant energy to the
detector; wherein the detector determines at least one characteristic or
property of [a retroreflective] optical system,” Patent Owner asserts that one
of ordinary skill in the art would have understood that claim 69 requires the
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detector to detect the optical gain associated with the reflected radiant
energy received from the retroreflective surface. PO Resp. 37. Patent
Owner relies on the same rational asserted regarding the detection limitation
of claim 37. Id. As discussed, Petitioner has established by a preponderance
of the evidence that Ando discloses (a) an optical system that directs radiant
energy from a source toward a retroreflective surface that returns reflected
radiant energy to the detector, (b) a detector that determines at least one
characteristic or property of a retroreflective optical system, i.e., contour,
and (c) that the reflected radiant energy has an optical gain. Further, for the
same reasons discussed with respect to claim 37, we do not find sufficient
evidence to read into claim 69 a requirement of detecting optical gain.
Therefore, based on our review of the record, as a whole, and our
claim interpretations, we find that Petitioner has demonstrated by a
preponderance of the evidence that Ando discloses each and every element
of claim 69. Thus, we conclude that the preponderance of the evidence
establishes that claim 69 is anticipated by Ando.
For the foregoing reasons, we conclude that Petitioner has established
by a preponderance of the evidence that claims 37, 38, 48, 49, 51–53, 55, 57,
58, 60, 61, 63, 64, 67–69, and 71 are unpatentable under 35 U.S.C. § 102(e)
(pre-AIA) as anticipated by Ando.
III. MOTION TO AMEND
Having concluded that claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60,
61, 63, 64, 67–69, and 71 are anticipated by Ando, we consider Patent
Owner’s Contingent Motion to Amend the claims of the ’927 patent.
Proposed amended claims are set forth in Appendix A to the Motion, filed as
Paper 17 (“App.”). Patent Owner supports its motion with the declaration of
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Dr. Leger (Ex. 2104). Mot. 1.
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
demonstrating, by a preponderance of the evidence, the patentability of the
proposed substitute claims. Nike, Inc. v. Adidas AG, 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.”); see Idle Free Systems,
Inc. v. Bergstrom, Inc., IPR2012-00027, slip op. at 7–8 (PTAB June 11,
2013) (Paper 26, “Idle Free”) (Informative). For the reasons explained
below, we conclude that Patent Owner has not met its burden with respect to
proposed substitute new claims.
1. One-For-One Substitutions
Patent Owner’s proposed claims 72–89 represent a one-for-one
substitution for original claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63,
64, 67–69, and 71, respectively. Mot. 1; App. 1–10; see Idle Free, Case
IPR2012-00027, slip op. at 3–6 (Paper 26). Thus, the proposed substitutions
satisfy 37 C.F.R. § 42.121(a)(3).
2. 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 the Motion to Amend, each of the proposed substitute
claims only add to the limitations of each corresponding original claim. No
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limitations are removed. Thus, each proposed substitute claim properly
narrows the scope of each respective original claim that it replaces.
3. Written Description Support
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 particular, 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)(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).
Patent Owner asserts that each substitute claim finds written
description support in the disclosure of U.S. Reissue Application No.
11/197,731 (Ex. 1002)(“the reissue application”) and in its priority
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document, U.S. Patent Application No. 04/623,186 (Ex. 2118)(“the ’186
application”) which share the same disclosure.2 Mot. 2. According to Patent
Owner, based on the disclosure of the ’186 application, one of ordinary skill
in the art would understand that the inventors had possession of the methods
and apparatus of claims 72–89. Id. Petitioner disagrees. Opp. 2–10.
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 either the reissue application or the ’186 application.3
a. Proposed Amended Independent Claim 72
Patent Owner proposed the following amended claim 72 as a
substitute for independent claim 37, wherein the added limitations are
underlined, and the removed portions are bracketed:
72. Apparatus for measuring the retroreflective characteristics
of an optical system consisting of at least a focusing means and
a surface exhibiting some degree of reflectivity disposed
substantially in the focal plane of said focusing means, said
apparatus comprising a radiant energy source, detection means,
[a] measuring means connected to said detection means, and [a]
means for scanning an area to direct[[ing]] said radiant energy

2 Patent Owner states, “[t]he ’927 Patent is a reissue from the ‘731
Application, which was filed as a copy of U.S. Patent No. 6,603,134, which
issued based on the ’186 Application, filed March 10, 1967.” Mot. 2 n.1.
References are made to the page and line numbers of the ’186 Application,
as filed. Id.
3 Because of the 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.
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produced by said source at said optical system, whereby said
radiant energy is retroreflected with an optical gain by said
optical system, and wherein a radiant flux density of the
retroreflected radiant energy is detected by said detecting means
and the output thereof is coupled to said measuring means,
wherein a characteristic of the optical system is determined
based on the optical gain by comparing the radiant flux density
of the retroreflected radiant energy to that of a reference in the
scanned area.
App. 1–2.
Patent Owner asserts that “[s]upport for the proposed amendments to
substitute claim 72, as well as [] the claim as a whole, can be found
throughout the ’186 Application as filed.” Mot. 4. Patent Owner refers only
to the following disclosure as an example of that support: “page 4, lines 5-8
and FIG. 12 of Exhibit 2118.” Id. Further, Patent Owner asserts that the
declaration of Dr. Leger confirms that a person of ordinary skill in the art
would have understood that the Specification of ’927 patent taught the
invention recited in claim 72. Id. at 6. Specifically, Patent Owner quotes
the following portion from Dr. Leger’s declaration:
In my opinion, substitute claims 72, 74, and 83 find support at
page 2, lines 4-10, page 4, lines 5-8; page 5, lines 14-22, page
7, lines 5-24, page 8, lines 10-12, page 14, line 11 through page
15, line 5 of the priority document of the ‘927 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 identified
based on detecting optical gain by comparing a radiant flux
density of the retroreflected radiant energy to the radiant flux
density of the reflected radiant energy as an area is scanned
(e.g., by comparing radiant flux density of retroreflected radiant
energy to that of another scanned area (e.g., with little or no
retroreflectivity)) and that a characteristic of the retroreflective
optical system can be determined based on the optical gain.
Id. at 6–7 (quoting Ex. 2104 ¶ 134).
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Petitioner asserts that none of the references to detectors in the ’927
patent are shown or described as detecting radiant flux density. Opp. 4.
According to Petitioner, one skilled in the art would understand all of the
disclosed detectors “detect radiant flux, not radiant flux density.” Id. (citing
Ex. 1010 ¶ 35). Petitioner asserts that Dr. Leger admitted this fact by
acknowledging that the figures in the ’927 patent depicting detectors do not
measure radiant flux density. Id. (citing Ex. 1009, 82:6–10, 85:18–
86:6,148:22–25).
Petitioner asserts further that Dr. Leger’s declaration testimony that
the ’927 patent discloses embodiments in which retroreflective optical
systems are detected based on a comparison of radiant flux densities of the
reflective radiant energy and reflected radiant energy from the scanned area
is undermined by a number of admissions made by Dr. Leger during his
cross-examination. Id. at 6–7. For example, Petitioner asserts that Dr. Leger
admitted that it is not possible to practice “comparing the radiant flux
density of the retroreflected radiant energy to that of a reference in the
scanned area” using only a detector that measures radiant flux. Id. at 7
(citing Ex. 1009, 158:7–159:5).
In addition, Petitioner asserts that the portions of the priority
document cited by Patent Owner in support of the proposed amendments
only describes the lens configurations of Figures 3 and 4, and that the cited
Figure 12 is simply a block diagram showing detector 184 receiving
reflected light. Id. at 5 (citing Mot. 4). According to Petitioner, none of the
cited portions of the priority document “disclose a detector for detecting
radiant flux density, nor comparing radiant flux densities to determine
optical gain or a characteristic of the optical system.” Id. at 5–6.
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In the Reply to Petitioner’s Opposition, Patent Owner continues to
assert that the priority document discloses radiant flux density detectors, and
further asserts that a skilled artisan “would easily be able to determine
radiant flux density from a measure of radiant flux through the known
physical relationships and laws relating [to] the quantities,” and that
replacing a detector that detects radiant flux with one that detects radiant
flux density “would have yielded very predictable and successful results.”
Reply 6 (citing Ex. 2125 ¶ 65; quoting Ex. 1010 ¶ 45).
Having considered the arguments and evidence, we agree with
Petitioner that Patent Owner has not demonstrated adequate written
description support for proposed amended claim 72. In particular, Patent
Owner fails to establish that the ’186 application supports the proposed
added limitations reciting “wherein a radiant flux density of the
retroreflected radiant energy is detected by said detecting means” and
“wherein a characteristic of the optical system is determined based on the
optical gain by comparing the radiant flux density of the retroreflected
radiant energy to that of a reference in the scanned area.” As Petitioner
asserted, the portions of the ’186 application cited by Patent Owner do not
describe those limitations. Opp. 5–6. Nor has Patent Owner explained how
one of skill in the art would have understood from those cited portions of the
’186 application that the inventor possessed the claimed subject matter.
Contrary to Patent Owner’s assertion, Dr. Leger’s declaration does
not confirm that each of the proposed amendments find support in the
’186 application. To begin, the portion of Dr. Leger’s declaration cited by
Patent Owner contains a conclusory opinion that is allegedly supported by
disclosures in the ’186 application. Ex. 2104 ¶ 134. Dr. Leger, however,
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does not explain or otherwise justify why one of skill in the art would
have understood from those cited portions of the ’186 application that the
inventor possessed the claimed subject matter. Further, we agree with
Petitioner that Dr. Leger’s testimony on cross-examination undermined his
credibility with respect to written description support for the amended
claim.
In particular, we consider Dr. Leger’s cross-examination testimony
regarding detecting radiant flux density and comparing radiant flux
density that Petitioner listed:
 Making a determination “by comparing the radiant flux density
of the retroreflected radiant energy to that of a reference in the
scanned area” as recited in claims 72, 74 and 83 requires
measuring radiant flux density twice and comparing the
measured values. ([Ex.]-1009 at 155:20-160:4.)
 Measuring radiant flux density requires measuring radiant flux
through a known area, and dividing the radiant flux by the
known area. (Id. at 50:9-51:4.)
 Without knowing the area (e.g. spot size hitting detector),
radiant flux density cannot be measured or determined. (Id. at
53:21-54:1.)
 Even if the beam completely fills the detector, 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. (Id. at 84:5-85:4.)
 It is not possible to practice “by comparing the radiant flux
density of the retroreflected radiant energy to that of a
reference in the scanned area” using only a detector that
measures radiant flux. (Id. at 158:7-159:5.)
 Detector 82 in Fig. 6, and detectors 92, 92A and 92B in Figs. 7,
7a and 7b, respectively, of the ’927 patent only measure radiant
flux. (Id. at 82:6-10; 85:18-86:6.)
 There is no disclosure in the ’927 patent that detector 184 in
Fig. 12 measures radiant flux density. (Id. at 148:22-25.)
 The ’927 patent does not disclose a detector that itself compares
radiant flux density values. (Id. at 163:20-25.)
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 The ’927 patent does not disclose a utilization means that
compares radiant flux density values. (Id. at 164:20-24.)

Opp. 6–7. We find that testimony fails to provide a reasonable basis for Dr.
Leger’s conclusory opinion that the priority document adequately supports the
additional limitations of the amended claim.
We remain unpersuaded by Patent Owner’s assertion that one of skill in
the art “would easily be able to determine radiant flux density from a measure of
radiant flux through the known physical relationships and laws relating [to] the
quantities,” and that replacing a detector that detects radiant flux with one that
detects radiant flux density “would have yielded very predictable and successful
results.” Reply 6. Even if true, those assertions do not establish that written
description exists. See Ariad, 598 F.3d at 1352 (“a description that merely
renders the invention obvious does not satisfy the [written description]
requirement”).
Thus, considering and weighing the priority application, the
testimonial evidence, and the parties’ arguments, we conclude that a
preponderance of evidence compels a determination that there is insufficient
written description in the priority application for the ’927 patent to support
claim 72 with regard to the additional limitations individually or the
substitute claim as a whole. Because claim 73 depends from independent
claim 72, claim 73 also is not supported for at least the same reasons
discussed regarding claim 72.
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b. Proposed Amended Independent Claim 74
Patent Owner proposed the following amended claim 74 as a
substitute for independent claim 48, wherein the added limitations are
underlined:
74. A method of detecting characteristics or properties of an
optical system based on a retroreflected beam, comprising:
transmitting radiant energy at an optical system having
retroreflective characteristics by scanning an area; receiving
reflected radiant energy after retroreflection of the radiant
energy; detecting an optical gain of the reflected radiant energy
after retroreflection by comparing a radiant flux density of the
radiant energy after retroreflection to that of a reference in the
scanned area to determine at least one characteristic or property
of the optical system.
App. 3–4.
Patent Owner asserts that “[s]upport for the proposed amendments, as
well as to claim 74 as a whole, can be found throughout the ’186 Application
as filed.” Mot. 5. Patent Owner refers only to the following disclosure as an
example of that support: “page 7, lines 5-24 and FIG. 12 of Exhibit 2118.”
Id. Further, Patent Owner asserts that the same paragraph of Dr. Leger’s
declaration cited in support of claim 72 also confirms that a person of
ordinary skill in the art would have understood that the Specification of ’927
patent taught the invention recited in claim 74. Id. at 6.
Petitioner asserts that the Specification of the ’927 patent does not
describe detecting an optical gain by comparing radiant flux densities. Opp.
4. Rather, the Specification describes “calculating optical gain based on
radiant flux of a retroreflected light per steradian (i.e. power per unit solid
angle).” Id. (citing Ex. 1001, 3:66–4:44; Ex. 1009, 16:19–21; Ex. 1010
¶ 34). Further, Petitioner asserts that the portions of the priority document
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cited by Patent Owner in support of claim 74 only describe the lens
configuration of Figures 3 and 4, and that retroreflectors direct more light
back to the source than background objects. Id. at 3–4. In addition, as
discussed regarding claim 72, Petitioner asserts that Dr. Leger’s declaration
testimony is undermined by his admissions on cross-examination, which
Petitioner asserts make clear that the ’927 patent does not disclose
comparing radiant flux density values, or making any determinations based
upon such comparisons. Id. at 7.
Having considered the arguments and evidence, and for similar
reasons discussed with respect to claim 72, we agree with Petitioner that
Patent Owner has not demonstrated adequate written description support for
proposed amended claim 74. In particular, Patent Owner has not provided
adequate support for the additional limitation of detecting an optical gain by
comparing radiant flux densities.
Thus, considering and weighing the priority application, the
testimonial evidence, and the parties’ arguments, we conclude that
preponderance of evidence compels a determination that there is insufficient
written description in the priority application for the ’927 patent to support
claim 74 with regard to the additional limitations individually or the
substitute claim as a whole. Because claims 75–82 depend from
independent claim 74, those claims also are not supported for at least the
same reasons discussed regarding claim 74.
c. Proposed Amended Independent Claim 83
Patent Owner proposed the following amended claim 83 as a
substitute for independent claim 61, wherein the added limitations are
underlined, and the removed portions are bracketed:
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83. An apparatus for detecting characteristics or properties of
a[[n]] retroreflective optical system based on a retroreflected
beam, comprising: a source of radiant energy; a detector; and an
optical system that scans an area to direct[[s]] radiant energy
from the source toward a retroreflective [[surface]] optical
system and returns reflected radiant energy to the detector;
wherein the detector detects an optical gain of the reflected
radiant energy to determine[[s]] at least one characteristic or
property of the retroreflective optical system by comparing a
radiant flux density of the retroreflected radiant energy to that of
a reference in the scanned area.
App. 7–8.
Patent Owner asserts that “[s]upport for the proposed amendments, as
well as to claim 83 as a whole, can be found throughout the ’186 Application
as filed.” Mot. 6. Patent Owner refers only to the following disclosure as an
example of that support: “page 7, lines 5-24 and FIG. 12 of Exhibit 2118.”
Id. Further, Patent Owner asserts that the same paragraph of Dr. Leger’s
declaration cited in support of claims 72 and 74 also confirms that a person
of ordinary skill in the art would have understood that the Specification of
’927 patent taught the invention recited in claim 83. Id. at 6–7.
As previously discussed, Petitioner asserts that one skilled in the art
would have understood all of the disclosed detectors detect radiant flux, do
not detect radiant flux density, and do not compare radiant flux densities to
detect optical gain. Opp. 4–5, 7 (citing Ex. 1010 ¶ 35; Ex. 1009, 163:20–
25). Rather, the Specification describes calculating optical gain based on
radiant flux. Id. at 4 (citing Ex. 1001, 3:66–4:44; Ex. 1009, 16:19–21; Ex.
1010 ¶ 34).
Further, Petitioner asserts that the portions of the priority document
cited by Patent Owner in support of claim 83 only describe the lens
configuration of Figures 3 and 4, and that retroreflectors direct more light
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back to the source than background objects. Id. at 5. Additionally, as
discussed regarding claims 72 and 74, Petitioner asserts that Dr. Leger’s
declaration testimony is undermined by his admissions on cross-
examination, which Petitioner asserts make clear that the ’927 patent does
not disclose comparing radiant flux density values, or making any
determinations based upon such comparisons. Id. at 7.
Having considered the arguments and evidence, and for similar
reasons discussed with respect to claims 72 and 74, we agree with Petitioner
that Patent Owner has not demonstrated adequate written description support
for proposed amended claim 74. In particular, Patent Owner has not
provided adequate support for the additional limitation of a detector that
detects an optical gain by comparing radiant flux densities.
Thus, considering and weighing the priority application, the
testimonial evidence, and the parties’ arguments, we conclude that
preponderance of evidence compels a determination that there is insufficient
written description in the priority application for the ’927 patent to support
claim 83 with regard to the additional limitations individually or the
substitute claim as a whole. Because claims 84–88 depend from
independent claim 83, those claims also are not supported for at least the
same reasons discussed regarding claim 83.
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IV. CONCLUSIONS
For the foregoing reasons, we conclude that Petitioner has established
by a preponderance of the evidence that 37, 38, 48, 49, 51–53, 55, 57, 58,
60, 61, 63, 64, 67–69, and 71 are unpatentable under 35 U.S.C. § 102(e)
(pre-AIA) as anticipated by Ando. We conclude further that Patent Owner
has not demonstrated sufficient written description support for any of the
proposed substitute claims.
V. ORDER
For the reasons given, it is:
ORDERED that claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63,
64, 67–69, and 71 of the ’927 patent are unpatentable under 35 U.S.C.
§ 102(e) (pre-AIA) as anticipated by Ando;
FURTHER ORDERED that Patent Owner’s Contingent Motion to
Amend is denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

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
tedt@optical-devices.com
sjt@optical-devices.com