Toshiba Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Mar 9, 2016

09950360 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper 31
Tel: 571-272-7822 Entered: March 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

TOSHIBA CORPORATION,
Petitioner,

v.

OPTICAL DEVICES, LLC,
Patent Owner.
_______________

Case IPR2014-01446
Patent 7,196,979 B2
_______________

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

PERRY, Administrative Patent Judge.

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

IPR2014-01446
Patent 7,196,979 B2

2

I. INTRODUCTION
In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
Petitioner, Toshiba Corporation (“Toshiba”), challenges the patentability of
claims 1, 2, 6, 7, 11, 13, 14, and 16 (“the challenged claims”) of U.S. Patent
No. 7,196,979 B2 to Kadlec et al. (Ex. 1001; “the ’979 patent”), owned by
Patent Owner, Optical Devices, LLC (“Optical Devices”). This Final
Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, addresses issues and arguments raised during trial. For reasons
discussed below, we determine that Toshiba has not met its burden to prove,
by a preponderance of the evidence, that the challenged claims are
unpatentable under 35 U.S.C. § 103(a) based on either the combined
teachings of Baird and Yoshimoto or the combined teachings of Baird,
Yoshimoto, and ST Datasheet.
A. Procedural History
On September 3, 2014, Toshiba filed a Petition (Paper 1, “Pet.”) to
institute an inter partes review of claims 1–18 of the ’979 patent. Optical
Devices filed a Preliminary Response. Paper 6. In a March 10, 2015
Decision on Institution of inter partes review (Paper 7 (“Dec. Inst.”)), we
instituted trial as to claims 1, 2, 6, 7, 11, 13, 14, and 16 on grounds of
obviousness based on Baird and Yoshimoto and on Baird, Yoshimoto, and
ST Datasheet.
After institution, Optical Devices filed a Patent Owner Response to
the Petition (Paper 16, “PO Resp.”), and Toshiba replied (Paper 18, “Pet.
Reply”). Optical Devices moved to exclude Exhibits 1005, 1012, 1015, and
1016. Paper 24 (“Mot.”). Toshiba opposed Patent Owner’s Motion to
IPR2014-01446
Patent 7,196,979 B2

3
Exclude (Paper 27, “Opp.”), and Optical Devices replied (Paper 28, “PO
Opp. Reply”). We heard oral argument on January 13, 2016. Paper 30
(“Tr.”).
B. Related Proceedings
Toshiba indicates that the following judicial and administrative
matters could affect or be affected by a decision in this proceeding: Optical
Devices, LLC v. Toshiba Corp., Case No. 1:13-cv-01530 (D. Del. 2013); and
In the Matter of Certain Optical Disc Drives, Components Thereof, and
Products Containing the Same, Investigation No. 337-TA-897. Pet. 1−2.
Optical Devices indicates that the ’979 patent claims priority to U.S.
Provisional Application No. 60/264,351, as do U.S. Patent Nos. 7,839,729
B2 and 8,416,651 B2, which are involved in inter partes reviews IPR2014-
01445 (pending) and IPR2014-01447 (pending), respectively. Paper 5, 1.
Optical Devices identifies additional litigation that may affect or be
affected by this inter partes review, including Optical Devices, LLC v.
Panasonic Corp., Case No. 1:13-cv-00726 (D. Del. 2013); Optical Devices,
LLC v. Lenovo Group, Ltd., Case No. 1:13-cv-01526 (D. Del. 2013); Optical
Devices, LLC v. Nintendo Co., Case No. 1:13-cv-01528 (D. Del. 2013);
Optical Devices, LLC v. Samsung Electronics Co., Case No. 1:13-cv-01529
(D. Del. 2013); and Optical Devices, LLC v. LG Electronics, Inc., Case No.
1:13-cv-01033 (D. Del. 2013). Paper 5, 1–2.
Further, we instituted inter partes reviews for claims of the following
patents covering related subject matter: U.S. Patent Nos. 7,839,729 B2
(IPR2014-01445, Paper 7) and 8,416,651 B2 (IPR2014-01447, Paper 9).
IPR2014-01446
Patent 7,196,979 B2

4

II. THE ’979 PATENT (EX. 1001)
A. Described Invention
The ’979 patent describes calibration storage for digital focus and
tracking servo systems of an optical disk drive (“ODD”). Calibrated
parameters are maintained for controlling positions of components of a
digital focus and tracking servo system of an ODD. Ex. 1001, Title,
Abstract. The focus and tracking systems must be calibrated so as to
correctly read from and write to the disk along its data track. Ex. 1001,
3:31–36. Once calibrated, operating parameters are stored and utilized by
the optical disk drive until another calibration is carried out. Id.
B. Illustrative Claims
Independent claims 1 and 13 are illustrative and are reproduced
below:
1. A method of maintaining operating parameters for an optical
disk drive, comprising:
providing a digital signal processor configured to receive
digitized optical sensor signals from an optical pickup unit
and form a focusing error signal (FES) and a tracking error
signal (TES) from the digitized optical sensor signals,
the digital signal processor configured with servo algorithms
that process TES and FES to adjust focus and tracking in the
optical disk drive;
calibrating operating parameters of the servo algorithms to form
calibrated parameters;
storing the calibrated parameters; and
operating the servo algorithms with the calibrated parameters.

13. An optical disk drive, comprising:
an optical pick-up unit;
IPR2014-01446
Patent 7,196,979 B2

5
an analog-to-digital converter coupled to digitize signals from
detectors in the optical pick-up unit to provide digital
signals;
at least one processor configured to form a focusing error
signal (FES) and a tracking error signal (TES) from the
digital signals,
the at least one processor being configured with servo
algorithms that process TES and FES to adjust focus and
tracking in the optical disk drive;
wherein the at least one processor executes an algorithm that
calibrates operating parameters for the servo algorithms to
form calibrated parameters; and
stores the calibrated parameters.

Ex. 1001, 77:19–78:51 (emphases added identifying disputed limitations).
III. CLAIM CONSTRUCTION
In an inter partes review, the Board interprets claim terms in an
unexpired patent according to the broadest reasonable construction in light
of the specification of the patent in which they appear. 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed.
Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84
USLW 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under that standard, and
absent any special definitions, we give claim terms their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
IPR2014-01446
Patent 7,196,979 B2

6

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 certain terms as follows.
A. “digital signal processor”
In the Institution Decision, we construed “digital signal processor”
(“DSP”) as “an integrated circuit structured and arranged for processing
digital signals in accordance with programmed commands.” Dec. Inst. 7.
In its Patent Owner Response, Optical Devices asserts that our initial
construction is “overly broad” because it “encompasses virtually any general
purpose microprocessor or microcontroller unit.” PO Resp. 7. According to
Optical Devices, “[o]ne of ordinary skill in the art would understand that a
digital signal processor or DSP is a specialized microprocessor––one that is
structured and arranged for high speed processing of digital signals––
particularly real-time digital data streams.” Id. at 8. In particular, Optical
Devices asserts that the Specification “frequently relies on the difference
between a general purpose microprocessor and a DSP in describing
embodiments of the invention.” Id. (citing Ex. 1001, 20:66–21:8)
IPR2014-01446
Patent 7,196,979 B2

7
(describing, for example, that “[i]n some embodiments, DSP 416 operates
under instructions from microprocessor 432”) (emphasis omitted).
In further support of its proposed claim construction, Optical Devices
provides two dictionary definitions for a DSP, with one defining the term as
“[a]n integrated circuit designed for high speed data manipulation and used
in audio communications, image manipulation, and other data acquisition
and data control applications” (Ex. 2002, 145) and the other defining the
term as “[a] high-speed coprocessor designed to do real-time manipulation
of signals” (Ex. 2003, 198). PO Resp. 10. In further support of its proposed
construction, Optical Devices relies upon the Declaration of Raymond de
Callafon, Ph.D. (Ex. 2008, “de Callafon Declaration” or “de Callafon
Decl.”). Optical Devices also relies upon the deposition testimony of
Toshiba’s declarant, Dr. Zech that a DSP is a specialized microprocessor
architected and designed to perform high speed processing of digital signals,
particularly real-time data processing. PO Resp. 9.
In the Petitioner’s Reply, Toshiba asserts that Optical Devices’
proposed construction “finds no support in the specification” and attempts
improperly to import two amorphous limitations into that construction –
“specialized” and “high speed.” Pet. Reply 3–6. In particular, Toshiba
asserts that “[n]owhere in the ’979 patent specification or claims is a DSP
described as a ‘high speed’ processor.” Id. at 6.
As in our Institution Decision, here again we agree with Optical
Devices that the Specification of the ’979 patent recognizes that a DSP is
different from a general purpose microprocessor. For example, the
Specification states:

IPR2014-01446
Patent 7,196,979 B2

8

FIG. 4 shows an embodiment of control chip 350 of
control system 300. The embodiment of control chip 350
shown in FIG. 4 includes a microprocessor 432 and a
digital signal processor (DSP) 416. Since DSP 416
operates much faster, but has lower overall capabilities
(e.g., code and data storage space), than microprocessor
432, in some embodiments real time digital servo system
algorithms can be executed on DSP 416 while other
control functions and calibration algorithms can be
executed on microprocessor 432. A control structure for
embodiments of control chip 350, and interactions
between DSP 416 and microprocessor 432, are further
discussed in the System Architecture disclosures.
Ex. 1001, 15:40–52. From this disclosure, we recognize that the
Specification suggests that a DSP operates faster than a microprocessor and,
in some embodiments, real time digital servo algorithms can be executed on
a DSP. The Specification, however, does not expressly define the term.
We note the competing views of Dr. de Callafon (Ex. 2008), on behalf
of Optical Devices, and of Dr. Zech (Ex. 1006), on behalf of Toshiba. In
particular, we recognize Dr. de Callfon’s declaration testimony regarding
Optical Devices’ proposed construction of a DSP as substantially identical to
the discussion in the Petition. See Ex. 2008 ¶ 19. We do not rely heavily on
Dr. Zech’s construction of “DSP” inasmuch as he testified that he had “no
expertise” as to design elements distinguishing a DSP from a general
processor. See, e.g., Ex. 2001, 35:12–13, 44:12–14.
As we seek to give the term “DSP” its ordinary and customary
meaning, as would have been understood by one of ordinary skill in the art
at the time of the invention, we take into account the Microsoft and IBM
dictionary definitions submitted by Optical Devices. We note that each of
IPR2014-01446
Patent 7,196,979 B2

9
those dictionaries define a DSP as designed for “high speed” manipulation
of data/digital signals. Ex. 2002; Ex. 2003. Optical Devices, however, has
not directed our attention to evidence establishing what “high speed”
encompasses.
We note that one of the submitted dictionary definitions characterizes
such digital signal manipulation as “real-time.” Ex. 2003. However, the
Specification’s disclosure describes that some embodiments can execute real
time digital servo algorithms on a DSP. We determine that Optical Devices
has not established persuasively that the broadest reasonable interpretation
of a DSP requires “high speed” processing achieving this “real time” feature.
Indeed, Patent Owner’s “basic” construction for a DSP does not include a
“real time” requirement for “real time” processing. See PO Resp. 10
(providing a minimal definition for a DSP).
We are persuaded that the broadest reasonable interpretation of the
term “digital signal processor,” consistent with the Specification, is “an
integrated circuit structured and arranged for manipulation of digital signals
in accordance with programmed commands, and in a manner that operates
faster than a microprocessor.” We do not adopt Optical Devices’ proposal to
further characterize further an integrated circuit as “specialized.” We find
that proposed modification is superfluous in that our construction describes
that the integrated circuit is structured and arranged to achieve a specific
function, i.e., manipulation of digital signals and operating faster than a
microprocessor.
B. “digital signals”
We construed “digital signals” in the Institution Decision as “signals
using two or more states to represent signal values.” Dec. Inst. 8. The
IPR2014-01446
Patent 7,196,979 B2

10

parties do not challenge this construction, and we do we find any reason to
depart from it.
C. “focusing error signal”
We construed “focusing error signal” in the Institution Decision as “a
digital signal representing an out-of-focus condition.” Id. at 8−9. The
parties do not challenge this construction, and we do we find any reason to
depart from it.
D. “tracking error signal”
We construed “focusing error signal” in the Institution Decision as “a
digital signal representing an off-track condition.” Id. at 9−10. The parties
do not challenge this construction, and we do we find any reason to depart
from it.
E. Additional Terms
Optical Devices proposes construction of “a digital signal processor
configured to … form a focusing error signal (FES) and a tracking error
signal (TES) from the digitized optical sensor signals” and construction of
“at least one processor configured to form a focusing error signal (FES) and
a tracking error signal (TES) from the digital signals.” PO Resp. 12.
For purposes of this decision it is not necessary to construe these
phrases expressly. It is sufficient to rely on the terms already construed.
Based on our analysis, we determine that no express claim construction is
necessary for any remaining claim terms.
IPR2014-01446
Patent 7,196,979 B2

11
IV. PRIOR ART CHALLENGES
Toshiba relies upon the following references in support of its
challenges.
References Date Exhibits 
Patent No. US 6,204,787 B1
to Baird (“Baird”)
Mar. 30, 2001 (filed
Mar. 31, 1999)
Ex. 1003

Patent No. US 5,251,194 to
Yoshimoto et al.
(“Yoshimoto”)
Oct. 5, 1993
(filed Apr. 12, 1990
Ex. 1004 
Product Preview for ST
TDA7522, “Digital Servo and
Decoder” (the “ST
Datasheet”)
(not established) Ex. 1005

Toshiba also relies upon the Declaration of Richard Zech, Ph.D. (Ex.
1006, “Zech Declaration” or “Zech Decl.”).
A. 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)).
Toshiba asserts that one of ordinary skill in the art at the time of the
filing of the ’979 patent as having:
(1) a Bachelor’s of Science Degree in Electrical Engineering,
Mechanical Engineering, Physics or a related field and at least
two years of additional experience in control system technology,
optical disk servo technology, magnetic disk servo technology, or
related technologies, either in industry or research[,] or (2) at least
a Master’s of Science Degree in Electrical Engineering,
Mechanical Engineering, Physics or a related field with
IPR2014-01446
Patent 7,196,979 B2

12

coursework in control system technology, optical disk servo
technology, magnetic disk servo technology, or related
technologies.
Pet. 33 (citing Ex. 1006 ¶ 67) (emphases added).
Optical Devices asserts that one of ordinary skill in the art would have “a
Bachelor of Science in Mechanical or Electrical Engineering and at least two
years of experience in control systems technology.” PO Resp. 6 (citing Ex.
2008 ¶¶ 9–11) (emphasis added).
Based on our consideration of the record, we find that the evidence as
a whole supports Toshiba’s description of the level of ordinary skill in the
art. Accordingly, we adopt Toshiba’s statement of the ordinary skill in the
art.
B. Challenges Based on Baird and Yoshimoto
Toshiba provides a detailed reading of claims 1–18 on Baird and
Yoshimoto. Pet. 36–55, with citations to the Zech Declaration.
1. Baird (Ex. 1003)
Baird is directed to circuits and methods for gain ranging in an analog
modulator and systems using the same. Ex. 1003, 1:33–35. Baird’s Figure
1 is reproduced below.
IPR2014-01446
Patent 7,196,979 B2

13

Baird’s Figure 1 is a conceptual and block diagram of an exemplary personal
computer based optical disk playback system. Ex. 1003, 2:59–60. Optical
pick-up unit 101 includes photodetectors A–F which provide six respective
signals to a “drive manager integrated circuit” (“IC”) 100. IC 100 includes
“servo channel” 300, which provides servo control for motors and actuators
associated with mechanical manipulation of the optical playback system.
Integrated circuit 100 also includes “data channel” 200 for processing data
signals read from disk 105. Id. at 3:24–61. The “servo channel” is shown in
more detail in Baird’s Figure 3, reproduced below.
IPR2014-01446
Patent 7,196,979 B2

14

Baird’s Figure 3 is a diagram showing further detail of the servo control path
shown in Baird Figure 1. Ex. 1003, 2:64–65. Servo data is received from
six photodiodes 101 (i.e., photodetectors A–F) and converted into digital
signals by analog to digital converters (“ADCs”) 302. Id. at 5:63–65. Servo
data processing is performed by on-board servo control processor (“SCP”)
304. Id. at 6:12–15. SCP 304 operates according to an instruction set
provided by microcontroller 106 (Figure 1). Id. at 6:12–15.
2. Yoshimoto (Ex. 1004)
Yoshimoto describes techniques for controlling beam position
(tracking) and focus in optical disk drives. Ex. 1004, Title. Toshiba relies
upon Yoshimoto as describing calibration including determining tracking
offsets, focus offset values, servo deviation threshold values, and sensor gain
values. Pet. 36 (citing Ex. 1004, Abstract). According to Yoshimoto’s
Abstract:
The disk surface is divided into a plurality of regions, and
calibration values for adjusting the servo circuits are determined
IPR2014-01446
Patent 7,196,979 B2

15
in each region. The calibration values are stored in a memory
and are used to adjust the servo circuits during tracking on a
predetermined track. The calibration values include tracking
offset values, focus offset values, servo deviation threshold
values and sensor gain values. A number of techniques are
disclosed for automatically determining the calibration values.
Ex. 1004, Abstract.
3. Baird’s Servo Control Processor as a DSP
According to Toshiba, Baird discloses an “on-board control processor
(SCP) 304 which receives the claimed digital signals from the analog-to-
digital converters.” Pet. 39 (citing Ex. 1003, 6:12–15). Specifically,
Toshiba asserts that the SCP receives six separate digitized photodetector
signals, each of which have been amplified using six separate VGAs and
amplified using separate analog to digital converters (“ADCs”) 302. Id.
(citing Ex. 1003, 5:63–6:11). Additionally, Toshiba asserts that Baird
discloses the SCP as part of an “integrated servo system that operates four
control loops: focus, tracking[,] sled, and spindle, using an intermal servo
control processor requiring little external microcontroller intervention.” Id.
at 39 (quoting Ex. 1003, 5:59–62 (citing Ex. 1006 ¶ 77). Toshiba asserts
that Baird also discloses that the servo data processing “is performed by on-
board servo control processor (SCP) 304, which receives its instruction set
from the user selected local microcontroller 106 through interface 107 and
RAM 305.” Id. (quoting Ex. 1003, 6:12–15). Based on those disclosures,
Toshiba asserts that one of ordinary skill in the art would have understood
that Baird’s SCP is a (1) DSP used for performing servo functions and (2) a
non-dedicated programmable device that is optimized for processing
received digital signals using programmed commands. Id. at 39–40.
IPR2014-01446
Patent 7,196,979 B2

16

In further support for its contention that one skilled in the art would
have understood Baird’s servo processor is a DSP, Toshiba refers to the ’729
patent file history wherein Applicant stated the following:
Applicant appreciates the suggested replacement title provided
by the examiner. However, it is respectfully noted that prior art
optical disk drive servos also use digital signal processors —
that use is old. What is not old, however, is the provision of a
servo processor (e.g., a DSP) that receives versions of the
photodetector signals such that the servo processor is the
component that calculates the resulting servo algorithm error
signals (FES for focus and TES for tracking).
Pet. 40 (quoting Ex. 1008, 139; Ex. 1002, 139 in IPR2014-01445). Toshiba
draws support also from a second statement made by that Applicant:
Thus, just as the Examiner would hear a version of a caller’s
voice on the telephone (as opposed to the actual sound of the
caller’'s voice that would be heard by the Examiner in a face-to-
face conversation) so does the claimed servo processor receive
processed versions of the photodetector signals.
Id. at 41 (quoting Ex. 1008, 140–141 in IPR2014-01445). According to
Toshiba, Applicant’s use of the terms “digital signal processor” and “servo
processor” interchangeably establishes persuasively that Baird’s SCP also
must be considered a DSP. Id.
Optical Devices asserts that Baird’s SCP does not constitute “a digital
signal processor (DSP).” PO Resp. 16. According to Optical Devices, a
“DSP typically comes with additional flash memory and/or RAM,” and is
distinguished from a general purpose microprocessor and/or microcontroller
“due to the specialized architecture for the computational needs in digital
signal processing.” Id. at 18 (citing Ex. 2008 ¶ 29). Optical Devices asserts
IPR2014-01446
Patent 7,196,979 B2

17
that “[t]he specialization ensures that calculations can be done as fast as
possible with as little latency as possible.” Id. at 19 (citing Ex. 2008 ¶ 31).
Optical Devices asserts that Baird’s Figure 3 shows that “the RAM
(memory) is separate from the SCP and data flow would go through the SCP
to the RAM.” Id. at 23−24. According to Optical Devices, because the
memory to process data is not part of the processor architecture, “the SCP is
inconsistent with a typical DSP architecture.” Id. In other words, Optical
Devices asserts that Baird’s SCP “does not consitute a DSP, since hardware
assisted computations would have to have direct memory access to qualify
as a DSP programmed command.” Id. (citing 2008 ¶ 39).
Based on our review of Baird, we disagree with Optical Devices’
characterization of the SCP depicted in Figure 3 as not having direct access
to RAM. Although the RAM is separated from the SCP, Figure 3 depicts a
two-way arrow positioned directly between the two elements. Optical
Devices has not explained persuasively why a skilled artisan would not have
understood that the two-way arrow as indicating direct access to RAM by
the SCP. See Tr. 46:16–50:8. Moreover, we note that Dr. de Callafon
characterizes a DSP as “typically” having RAM, and because Baird’s RAM
is separate from the SCP, it is inconsistent with “typical” DSP architecture.
Ex. 2008 ¶¶ 29, 38. Thus, neither Dr. de Callafon’s declaration nor our
construction of DSP prohibits RAM from being separate from the DSP.
Further, based upon our review of the record, Optical Devices has not
addressed either of Applicant’s statements referenced by Toshiba wherein
the terms “digital signal processor” and “servo processor” were used
interchangeably, suggesting that Baird’s SCP may be considered a DSP.

IPR2014-01446
Patent 7,196,979 B2

18

Based on our review of the record as a whole, and in view of our
claim construction for the claim term “digital signal processor,” we find that
the preponderance of the evidence establishes that one of ordinary skill in
the art would have understood Baird’s SCP to be a DSP used to perform
servo functions.
4. Whether Baird Discloses a DSP Determining an FES and TES
Optical Devices argues that Baird fails to disclose a DSP that determines
an FES and TES. PO Resp. 24–33.
Toshiba asserts that “[i]t is inherent that the servo control processor of
Baird determines focus error signal and tracking error signal.” Pet. 41–42
(emphasis added). Toshiba reasons that because Baird discloses that the
SCP performs focus and tracking control loops, “it is necessarily the case
that a focus error and tracking error signal are generated” in order to perform
that function. Id.; Ex. 1006 ¶ 81; see Tr. 20:21–23:5. According to Toshiba
and Dr. Zech, one of ordinary skill in the art would have understood that
those error signal calculations must occur within the SCP because Baird
does not disclose any other circuitry or block in its design that could perform
that function. Pet. 41–42; Ex. 1006 ¶ 81. Additionally, Toshiba asserts that
Baird’s SCP necessarily determines FES and TES because Baird’s
disclosure that the SCP receives digitized photodetector signals and
generates servo control signals requires a determination of the error signals.
Pet. 41–42 (citing Ex. 1006 ¶ 81).
Optical Devices contends that it is not inherent that the servo control
processor of Baird is further configured to determine a focus error signal
(FES) and a tracking error signal (TES) from the digital signals it receives,
IPR2014-01446
Patent 7,196,979 B2

19
as required by both independent claims. PO Resp. 24–25. Optical Devices
asserts that “Baird is silent with respect to the operations and locations of the
four control loops, as well as any generation of focus or tracking error
signals.” Id. at 25.
Regarding Baird’s disclosure that the SCP processes the servo loops
to create control signals, Optical Devices asserts that “Baird fails to provide
any description of how its control loops operate” or even if the loops are
“open” or “closed.” Id. at 28. According to Optical Devices, “a person of
ordinary skill in the art would also understand that there are different types
of servo control loops, including, but not limited to, ‘open’ and ‘closed’
servo control loops.” Id. at 27; Ex. 2008 ¶ 47. Optical Devices asserts that
one of ordinary skill in the art also would have understoods that open loops
operate without any feedback and, thus, do not require the determination of
error signals. PO Resp. 28; Ex. 2008 ¶ 47.
For example, Optical Devices asserts that “[o]ne example of ‘open
loop’ control system is one which reacts before an error actually occurs,
which is called feedforward control or predictive control.” Id. (citing Ex.
2008 ¶ 49). Optical Devices and Dr. de Callafon explain that “[f]eedforward
control is not error-based, but instead is based on knowledge about the
process in the form of a mathematical model of the process or knowledge
about or measurements of the process disturbances.” Id. at 28–29; Ex. 2008
¶ 49. According to Optical Devices and Dr. de Callafon, such knowledge is
useful for a servo system wherein the process and process disturbances have
a repetitive nature, making it easier to predict and react before any error
occurs. PO Resp. 28–29; Ex. 2008 ¶ 49. Optical Devices and Dr.
deCallafon explain further that “[r]epetitive movements and repetitive
IPR2014-01446
Patent 7,196,979 B2

20

control signals are found in an optical disk drive where the disk is constantly
rotating creating repetitive and predictable error signals.” PO Resp. 29; Ex.
2008 ¶ 50. Optical Devices asserts that it was known in the art that
repetitive control signals needed for such a repetitive system could be
designed via iterative learning or a repetitive control algorithm and that one
of skill in the art would have understood that the repetitive control signals
are applied in an open loop fashion to control the actuator in the optical disk
drive. PO Resp. 29. Therefore, according to Optical Devices and Dr. de
Callafon, Baird’s disclosure of a servo system “does not imply
unequivocally that the servo system is either ‘open’ or ‘closed’.” Id.
Further, Optical Devices asserts that one of skill in the art would have
understood that, although closed loops operate based upon feedback, “that
feedback need not result in the determination of error signals.” Id. at 30; Ex.
2008 ¶ 51. In such cases, Optical Devices asserts that servo control can be
done on the basis of feedback of the measurement of the actual reference
signal as opposed to a measurement of the difference between the reference
and the output. PO Resp. 30 (citing Ex. 2008 ¶ 51). Thus, Optical Devices
contends that Baird’s teaching that the servo system uses the SCP to operate
focus and tracking control loops does not inherently disclose that the SCP
determines any error signals, much less FES and TES. Id. at 33; see Tr.
64:16–65:14.
In its Reply, Toshiba asserts that Optical Devices has not provided
any evidence that alternative control methods could be used for an optical
disk system, such as the system disclosed in Baird. Pet. Reply 13.
According to Toshiba, Optical Devices’s declarant, Dr. de Callafon, testified
IPR2014-01446
Patent 7,196,979 B2

21
that photodetector signals are not used in open loop systems. Id. at 12
(citing Ex. 1017, 110:24–111:6). Because Baird discloses receiving servo
data from photodetector signals, Toshiba asserts that “by Patent Owner’s
own admission, Baird teaches away from using an open loop system for
servo control.” Id. (emphasis added). Further, Toshiba asserts that optical
disks contain imperfections, such that an open loop control system would
lack the necessary feedback to adjust for those imperfections. Id. at 12–13
(citing Ex. 1006 ¶¶ 25, 32–35). We take Toshiba’s argument to be that
Optical Devices makes a weak argument in suggesting that Baird may use
open loop control.
Having considered the arguments and evidence, we are not persuaded
that Toshiba has established by a preponderance of the evidence that Baird
inherently discloses a DSP configured to determine a FES and a TES from
digital signals received by the SCP. In particular, Toshiba’s primary
contention with respect to inherency is that one of ordinary skill in the art
would have understood that Baird must determine a FES and TES in order
for the SCP to operate focus and tracking control loops. Pet. Reply 14
(citing Ex. 1006 ¶ 81). However, neither Toshiba nor Toshiba’s declarant,
Dr. Zech, provides any explanation why that is true. When asked for an
explanation during his deposition, Dr. Zech responded in a manner that
relied upon a probability that Baird’s SCP determines FES and TES. For
example, the following is an excerpt from Dr. Zech’s deposition:
Q Can you explain to me why it is your
opinion that it is inherent that a servo control
processor in Baird determines a focus error signal
and a tracking error signal?
A Well, because the way he designed it, it
does. And I can’t imagine why somebody, an engineer
IPR2014-01446
Patent 7,196,979 B2

22

at Cirrus Logic, would swim against the current and
come up with something entirely new. The chip
surely would not sell. I know that from pretty
broad experience in sales and marketing.
Once you tell me optical disk drive --
I’ve explained to you the statistics of it --
99 percent plus are probably using continuous
composite servoing. When you use continuous
composite servoing, you need to have a tracking
error and a focus error signal. So it’s not much of
a leap for me to conclude that that’s what’s going
on here.

Ex. 2001, 151, 3–20 (emphases added). Dr. Zech’s deposition testimony
describes what functions and systems optical disk drives “are probably
using” and that “it’s not much of a leap” for him to conclude what is
occuring in Baird with respect to whether error signals are determined Id.;
See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (inherency is not to be established by probabilities or possibilities).
Moreover, both in his declaration and at the deposition, Dr. Zech bases his
opinion regarding that issue on assumptions unsupported by evidence. See
Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14,
2012) (“Affidavits expressing an opinion of an expert must disclose the
underlying facts or data upon which the opinion is based. . . . Opinions
expressed without disclosing the underlying facts or data may be given little
to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s
unsupported opinions persuasive weight.
Further, based upon our review of the record, we find that Optical
Devices has presented a credible challenge to Toshiba’s assertion that
Baird’s SCP necessarily determines FES and TES. See PO Resp. 24–32
IPR2014-01446
Patent 7,196,979 B2

23
(discussed supra). In particular, Optical Devices and Dr. de Callafon have
provided reasonable explanations and examples demonstrating that Baird’s
SCP may operate using (a) an open loop that is not dependent upon the
determination of FES or TES, or (b) a closed loop that is based upon
feedback not requiring the determination of those error signals. Id. We
disagree with Toshiba’s assertion that Optical Devices has not provided
examples or explained how or why open loop systems could be used in a
servo control system in an optical disk drive system. See Pet. Reply 13.
Optical Devices and Dr. de Callafon explained that in an optical disk drive,
where the disk is constantly rotating, repetitive control signals are found.
PO Resp. 28–29: Ex. 2008 ¶ 50. Optical Devices and Dr. de Callafon also
explained that it was known in the art that a repetitive system could be
designed via iterative learning or a repetitive control algorithm to produce
repetitive control signals needed for such a repetitive system. PO Resp. 29;
Ex. 2008 ¶ 50. Further Optical Devices and Dr. de Callafon explained that
the repetitive control signals are applied in an open loop fashion to control
the actuator in the optical disk drive. Id.
We also do not agree with Toshiba’s assertion that Dr. de Callafon’s
testimony amounts to an admission by Optical Devices that Baird “teaches
away” 1 from using an open loop system for servo control. Pet. Reply 12. In
support of that contention, Toshiba relies on Dr. de Callafon’s deposition

1 “Teaching away” arguments, moreover, are not appropriate in the context
of anticipation. Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998) (The prior art was held to anticipate the claims even
though it taught away from the claimed invention. “The fact that a modem
with a single carrier data signal is shown to be less than optimal does not
vitiate the fact that it is disclosed.”).
IPR2014-01446
Patent 7,196,979 B2

24

testimony relating to some “very simple open loop solutions for optical
drives that didn’t use any error measurement.” Ex. 1017, 110:24–111:6.
Toshiba asked whether “those systems utilize photodetector signals for the
purposes of servo?” Id. at 110:24–111:1. Dr. de Callafon answered, “If they
are purely open loop, probably not.” Id. at 111:3–6 (emphasis added).
However, prior to that conditional statement, Dr. de Callafon explained that
the photodetector signals received by the SCP in Baird would be useful in an
open loop servo because those signals can provide information about the
repetitive motion of the disk. Id. at 75:17–76:24. Dr. de Callafon explained
further that the repetitive motion need not be a FES or TES, but, instead, a
“reference signal,” that is not based upon any error signal. Id. at 76:14–77:2.
In view of the evidence, arguments, and Baird’s silence with respect
to how focus and tracking control are accomplished by the SCP, and, in
particular, whether such control relies upon determining any error signals,
or, even if the servo operates in an open or closed loop, we are not persuaded
that the preponderance of the evidence establishes that Baird’s SCP
determines, calculates, or otherwise provides FES and TES, as required by
each of the challenged claims.
Optical Devices notes that Toshiba does not contend that Yoshimoto
discloses the claimed DSP and, therefore, does not cure the deficiencies of
Baird. PO Resp. 34–37.
We agree that Toshiba does not rely on Yoshimoto to supply missing
limitations from Baird. Pet. 38−55. Toshiba relies upon Yoshimoto only
with respect to its teachings regarding details of calibration. Id.

IPR2014-01446
Patent 7,196,979 B2

25
Toshiba argues that, to the extent we find that Baird does not
inherently disclose determining an FES and TES, the ST Datasheet explicitly
discloses determining an FES and a TES. PO Reply, 15. However, as
discussed infra, we conclude that ST Datasheet has not been established as a
reference against the ’979 patent in this proceeding.
5. Conclusion
We, therefore, conclude that Petitioner has not established by a
preponderance of the evidence that Baird and Yoshimoto render claims 1–18
of the ’979 patent unpatentable.
C. Obviousness based on Baird, Yoshimoto, and ST Datasheet (Ex. 1005)
Toshiba contends that claims 1–18 of the ’979 patent are rendered
obvious by the combination of Baird, Yoshimoto, and the ST Datasheet.
Pet. 56–60. Optical Devices disagrees. PO Resp. 34–50. In particular, our
analysis focuses on Optical Devices’ assertion that the ST Datasheet does
not qualify as a prior art. Id. at 38–42.
1. ST Datasheet
The ST Datasheet describes a TDA7522 Digital Servo and Decoder
having a built in microcontroller. Ex. 1005, 1. The ST Datasheet is a
twenty-three page document that contains the date of “May 1998” at the
bottom of the first page. Id. Below the date is a statement that characterized
the document as containing “preliminary information on a new product now
in development. Details are subject to change without notice.” Id.
(emphasis added). On the last page of the document is a statement that the
“[i]nformation furnished is believed to be accurate and reliable.” Id. at 23.
Additionally, the last page of the document states, “Specifications mentioned
IPR2014-01446
Patent 7,196,979 B2

26

in this publication are subject to change without notice. This publication
supersedes and replaces all information previously supplied.” Id.
2. Whether ST Datasheet is a “printed publication”
For a reference to be considered a “printed publication” so as to
qualify as a prior art printed publication under 35 U.S.C. § 102, the reference
must be shown to have been “sufficiently accessible to the public interested
in the art” prior to the earliest effective filing date. In re Cronyn, 890 F.2d
1158, 1160 (Fed. Cir. 1989).
Toshiba contends in the alternative that the ST Datasheet discloses a
digital signal processor, which, combined with the other cited prior art,
renders the challenged claims obvious. Pet. 56–60 (citing Ex. 1005, 1, 7).
According to Toshiba, the ST Datasheet qualifies as a printed publication
under pre-AIA 35 U.S.C. § 102(b) with respect to the ’979 patent because
the ST Datasheet “was published in May 1998 in the United States.” Id. at
56. In support of its alleged publication date, Toshiba relies upon the “May
1998” date on the front page of ST Datasheet, a Technical/Product Press
Announcement (Ex. 1012) dated May 18, 1998, describing the TDA7522
Digital Servo and Decoder (Pet. 56), and the declaration testimony of Dr.
Zech (Ex. 1006 ¶ 123). At the institution phase, we determined that Toshiba
provided sufficient evidence tending to show that the ST Datasheet was
publicly available and accessible as of May 1998. Dec. Inst. 23.
In the Patent Owner Response, Optical Devices argues that the ST
Datasheet “does not qualify as a prior art printed publication because there is
no evidence to prove that it was made sufficiently accessible to the public”
during “May 1998,” or at any time prior to the critical date of the ’979
IPR2014-01446
Patent 7,196,979 B2

27
patent. PO Resp. 38–39. According to Optical Devices, that date printed on
the lower left portion of the datasheet “is inadequate on its face to
demonstrate availability and accessibility to the public.” Id. at 39. With
respect to the press announcement2 (Ex. 1012), Optical Devices asserts,
among other things, that the announcement also “does not provide any
evidence to prove that the ST Datasheet was made sufficiently accessible to
the public interested in the art before the critical date.” Id. at 40–41. Rather,
Optical Devices asserts that the press announcement only suggests the
availability of a purported product, i.e., the ST TDA 7522 chip, and not the
availability or accessibility of the document at issue, i.e., ST Datasheet, on a
particular date. Id. at 42.
In its Petitioner Reply, Toshiba responds to Optical Devices’
argument by asserting that the disclaimer information included at the end of
the datasheet “is evidence of clear intent for the publisher to share the
document with potential customers.” Pet. Reply 18 (emphasis added).
Toshiba argues that it is clear from this evidence along with the details of the
datasheet itself and the release of the product in May 1998, that the ST
Datasheet was available for interested parties to access well before the
priority date of the ’979 patent. Id. at 18–19.
After considering the admissible evidence and arguments,3 we find
that Optical Devices has challenged persuasively Toshiba’s assertion that the
ST Datasheet was publicly accessible prior to the critical date. While the ST

2 Ex. 1012 is printed from the Internet Archive’s “Wayback Machine.”
3 See infra Section V (addressing the Motion to Exclude with respect to
Exhibits 1015 and 1016).

IPR2014-01446
Patent 7,196,979 B2

28

Datasheet contains a May 1998 date and refers to itself as a “publication,”
(see Ex. 1005, 23), the reference does not provide any definitive statement or
identification that it was accessible to the public interested in the art in May
1998. At most, Toshiba has established that the version of ST Datasheet
provided as Exhibit 1005 was printed in May 1998. In other words, the
document represents a May 1998 version of the “preliminary information”
compiled for the TDA7522 product that was in development. See Ex. 1005,
1 (“This is preliminary information of a new product now in development.”).
We also note that the ST Datasheet contains a statement that “[t]his
publication supersedes and replaces all information previously supplied.”
Id. at 23. However, the ST Datasheet does not state or otherwise indicate to
whom the information was supplied or made available, much less when.
Upon further consideration of the press announcement, dated May 18,
1998, describing the TDA7522 chipset (Ex. 1012), we agree with Optical
Devices that the press announcement describes the availability of a
product, i.e., the ST TDA 7522 chip, (see Ex. 1012, 1 (“a special version of
the TDA 7522 is available”)), but not the availability or accessibility of the
ST Datasheet at that time. The press announcement does not refer to the ST
Datasheet or mention that such information regarding the product was
available.
Indeed, Toshiba’s declarant, Dr. Zech, acknowledges that the press
announcement refers only to the availability of the TDA7522 chip in May
1998. Ex. 1006 ¶ 123. Beyond that acknowledgement, Dr. Zech offers only
conjecture stating that “it stands to reason that the ST Datasheet also was
available in May 1998, as chip companies typically disseminate a datasheet
IPR2014-01446
Patent 7,196,979 B2

29
when they introduce a new chip.” Id. (emphasis added). Dr. Zech, however,
did not provide testimony or evidence to support that reasoning. Nor did Dr.
Zech assert that he had knowledge specifically relating to ST Micro’s
business practices in 1998. Thus, we do not afford persuasive weight to Dr.
Zech’s statements regarding the apparent availability of the ST Datasheet.
See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763 (“Affidavits
expressing an opinion of an expert must disclose the underlying facts or data
upon which the opinion is based. . . . Opinions expressed without disclosing
the underlying facts or data may be given little or no weight.”) (citations
omitted).
Without more, for example, a declaration from a knowledgeable
representative of ST Micro regarding the normal business practice in May
1998 of making datasheets available for download on or near the date
provided on the publication, we do not find that Toshiba has supported
adequately its contention that ST Micro made the ST Datasheet submitted as
Exhibit 1005 available for download on its public website or otherwise
publicly accessible, prior to the critical date. See, e.g., In re Enhanced
Security Research, LLC, 739 F.3d 1347, 1354–55 (Fed. Cir. 2014) (finding
dated manual was publically available based, in part, upon the declaration of
the Chief Executive Officer of the company that produced the product
described in the manual averring that the version of the manual relied upon
was accessible to public on the date inscribed on the manual).
A determination whether a particular reference qualifies as a printed
publication “must be approached on a case-by-case basis.” In re Hall, 781
F.2d 897, 899 (Fed. Cir. 1986). In this case, based on the foregoing facts
and discussion, we determine that Toshiba has not established that the ST
IPR2014-01446
Patent 7,196,979 B2

30

Datasheet was publicly accessible prior to the critical date so as to render it a
“printed publication” for the purposes of 35 U.S.C. § 102(b). Thus, the ST
Datasheet does not qualify as prior art.
Accordingly, Toshiba has not shown by a preponderance of the
evidence that the challenged claims would have been obvious over the
combination of Baird, Yoshimoto, and the ST Datasheet because the ST
Datasheet is not available as prior art.
V. MOTION TO EXCLUDE
Optical Devices filed a Motion to Exclude Exhibits 1005, 1012, 1015,
and 1016. Mot. 24. In its motion, Optical Devices characterizes its
challenge of Exhibit 1005 (the ST Datasheet) and Exhibit 1012 (the Press
Announcement) as “lacking authentication, inadmissible hearsay, and/or
irrelevant.” Id. at 1. It is apparent, however, from Optical Devices’
argument in support of those contentions that the issue instead relates to a
sufficiency of the evidence with respect to whether Exhibits 1005 and 1012
establish that Exhibit 1005 qualifies as a “printed publication.” For
example, Optical Devices asserts that Exhibits 1005 and 1012 are
inadmissible because “there is insufficient evidence to support finding that
[those exhibits] are documents that were publicly available at the time
[Toshiba] purports they were.” Id. at 2. That issue is properly addressed in
our analysis above, rather than in the context of a Motion to Exclude.
Accordingly, we deny the Motion to Exclude with respect to Exhibits 1005
and 1012.
Regarding Exhibits 1015 and 1016, Optical Devices asserts that those
exhibits should be excluded as “untimely” because Toshiba submitted them
IPR2014-01446
Patent 7,196,979 B2

31
in response to Optical Devices’ objections to Exhibits 1005 and 1012 more
than ten business days after being served with those objections. Id. at 8–10
(citing 37 C.F.R. § 42.64(b)). Additionally, Optical Devices asserts that
Exhibits 1015 and 1016 should be excluded because Toshiba failed to seek
authorization to file a motion to submit supplemental information pursuant
to 37 C.F.R. § 42.123(b). Id. at 10.
Petitioner submitted Exhibits 1015 and 1016 for the first time with its
Reply Brief, without authorization. Petitioner describes Exhibit 1015 as a
current STMicro webpage containing a link to a downloadable datasheet for
a digital UV index sensor, i.e., “UNIS25.” Reply 19. Petitioner describes
Exhibit 1016 as an “Internet Archive screenshot of one of STMicro’s
websites as of December 4, 2000” purportedly displaying a list of
downloadable ST Micro datasheets describing “Audio & Radio” products,
including the datasheet for “part number ‘TDA7522.’” Id. Exhibit 1016
includes a declaration by an employee at the Internet Archive stating that the
screenshots submitted as Exhibit 1016 “are true and accurate copies of
printouts of the Internet Archive’s records of the HTML files for URLs and
the dates specified in the footer of the printout.” Ex. 1016, 1.
Petitioner admits that those exhibits were neither served nor filed
under 37 C.F.R. § 42.64(b) in response to Patent Owner’s evidentiary
objections (see Ex. 2009 (serving objections to Exhibits 1005 and 1012 on
Mar. 24, 2015); Ex. 2010 (serving objections to Exhibits 1015 and 1016 on
Sept. 21, 2015)), nor filed under 37 C.F.R. § 42.123(b) as “supplemental
information.” Opp. 14–15. Instead, according to Petitioner, Exhibits 1015
and 1016 “were introduced for purposes of responding to Patent Owner’s
arguments in its Response (Paper 16) pursuant to 37 C.F.R. § 42.23.” Id.
IPR2014-01446
Patent 7,196,979 B2

32

Petitioner’s reliance on 37 C.F.R. § 42.23 as justification for
submitting evidence not initially part of the record is misplaced. Section
42.23(b) states that “[a] reply may only respond to arguments raised in the
corresponding opposition or patent owner response.” That section does not
authorize or otherwise provide a means for supplementing the evidence of
record. As explained in the Office Patent Trial Practice Guide, “a reply that
. . . belatedly presents evidence will not be considered and may be returned.”
77 Fed. Reg. at 48,767.
An inter partes review is subject to strict statutory deadlines at both
the institution stage and at the final decision. 35 U.S.C. §§ 314(b),
316(a)(11). Unnecessary delay in the presentation of arguments or evidence
by either party impedes the Board in fulfilling its mandate “to secure a just,
speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
§ 42.1(b); see Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435,
445 (Fed Cir. 2015) (“The guiding principle for the PTAB in making any
determination is to ‘ensure efficient administration of the Office and the
ability of the Office to complete IPR proceedings in a timely manner.’”
(citations omitted)). The Petition represents Petitioner’s case-in-chief, and
Petitioner is tasked with presenting the evidence, upon which Petitioner
relies in support of its challenges to Patent Owner’s claims in its Petition. 35
U.S.C. § 312(a)(3); see 37 C.F.R. § 42.104(b)(5).
Nevertheless, our Rules expressly provide procedures for introducing
supplemental evidence or supplemental information into a proceeding. See
37 C.F.R. §§ 42.64(b)(2) (supplemental evidence), 42.123(a)–(c)
(supplemental information). Petitioner was aware of Patent Owner’s
IPR2014-01446
Patent 7,196,979 B2

33
challenge to the public accessibility of the ST Datasheet by December 11,
2014, the filing date of the Preliminary Response (see Prelim. Resp. 19–23),
and certainly by no later than March 24, 2015, the service date of Exhibit
2009 noting objections to Exhibits 1005 and 1012. See Ex. 2010 (serving
objections to Exhibits 1015 and 1016 on Sept. 21, 2015). Although
Petitioner was aware early on of the possible need for such supplemental
evidence or information in this proceeding, Petitioner made no apparent
effort to take advantage of available procedures. See Avocent Huntsville
Corp. v. Cyber Switching Patents, LLC, Case IPR2015-00690, slip op. at 5–
7 (PTAB Oct. 2, 2015) (Paper 28) (“Supplemental evidence, served in
response to an evidentiary objection, is offered solely to support
admissibility of the originally filed evidence and to defeat a motion to
exclude that evidence, and not to support any argument on the merits (i.e.,
regarding the patentability or unpatentability of a claim).”); Palo Alto
Networks, Inc. v. Juniper Networks, Inc., Case IPR2013-00369, slip op. at
2–3 (PTAB Feb. 5, 2014) (Paper 37) (granting a motion to submit
supplemental information regarding public accessibility of references
serving as a basis for instituted grounds). Petitioner does not contend that
Exhibit 1015 or 1016 was not available to Petitioner prior to the filing of
Petitioner’s Reply (Opp. 14–15; see Pet. Reply 17–20 (discussing Exhibits
1015 and 1016)), and Petitioner has not provided any other persuasive
explanation for the undue delay in submitting Exhibits 1015 and 1016, other
than that it believed it simply could wait until it filed its final substantive
paper (Opp. 14–15).
Accordingly, we grant Patent Owner’s Motion to Exclude with
respect to Exhibits 1015 and 1016. We exclude Exhibits 1015 and 1016, and
IPR2014-01446
Patent 7,196,979 B2

34

we do not consider those exhibits or the arguments in the Reply Brief
addressing those exhibits, in this proceeding.
VI. CONCLUSIONS
For reasons stated above, we conclude that
1. Toshiba has not established the ST Datasheet as being a printed
publication citable against the ’979 patent;
2. Toshiba has not established by a preponderance of the evidence that
claims 1, 2, 6, 7, 11, 13, 14, and 16 are unpatentable based on Baird and
Yoshimoto or based on Baird, Yoshimoto, and ST Data.
VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Toshiba has not established that claims 1, 2, 6, 7, 11,
13, 14, and 16 of the ’913 patent are unpatentable;
FURTHER ORDERED that Optical Devices’ Motion to Exclude is
denied as to Exhibits 1005 and 1012;
FURTHER ORDERED that Optical Devices’ Motion to Exclude is
granted as to Exhibits 1015 and 1016; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-01446
Patent 7,196,979 B2

35
For PETITIONER:

Brent K. Yamashita
Alan A. Limbach
DLA PIPER, LLP
Brent.yamashita@dlapiper.com
Alan.kimbach@dlapiper.com

For PATENT OWNER:

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