Toshiba Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Mar 8, 2016

12471058 (P.T.A.B. Mar. 8, 2016)

Trials@uspto.gov Paper 37
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 IPR2014-01439
Patent RE42,913 E
_______________

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
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I. INTRODUCTION
In this inter partes review trial, instituted pursuant to 35 U.S.C. § 314,
Petitioner, Toshiba Corporation (“Toshiba”), challenges the patentability of
claims 48–53 of U.S. Patent No. RE42,913 E (Ex. 1001, “the ’913 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 met its burden to prove, by
a preponderance of the evidence, that claims 48–53 of the ’913 patent are
unpatentable under 35 U.S.C. § 102 as anticipated by Ando.1 We also deny
Optical Devices’ motion to amend its claims.
A. Procedural History
On September 3, 2014, Toshiba filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claims 48–53 of the ’913 patent. Optical
Devices filed a Patent Owner’s Preliminary Response. Paper 6. On March
9, 2015 we issued a decision instituting an inter partes review directed to
claims 48–53 of the ’913 patent and limited to the ground of anticipation
based on Ando. Paper 7 (“Dec. Inst.”).
After institution of trial, Optical Devices filed a Response to the
Petition (Paper 14, “PO Resp.”), and Toshiba replied (Paper 20, “Pet.
Reply”). Optical Devices filed a contingent Motion to Amend its claims.
Paper 15, “Mot. Amend.” Toshiba opposed. Paper 21, “Opp.” We heard
oral argument on January 12, 2016. Paper 37(“Tr.”).

1 US Patent 3,506,839 to Ando et al., issued April 14, 1970, Ex. 1007.
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B. Real Parties in Interest
Optical Devices states that it is the only real party in interest for the
Patent Owner. Paper 5, 1. Toshiba states the Petitioner’s real parties-in-
interest are Toshiba Corporation and Toshiba America Information Systems,
Inc. Pet. 1.
C. Related Proceedings
Toshiba indicates that the ’913 patent is related by a common parent
to U.S. Patent No. RE40,927 E (“the ’927 patent”) and to U.S. Patent No.
RE43,681 E (“the ’681 patent”), which also are asserted in the above
identified lawsuits. Pet. 1.
The specifications of the Wild patents challenged in IPR2014-01439
(U.S. Patent No. RE42,913 E), IPR2014-01441 (U.S. Patent No. RE43,681
E), and IPR2014-01443 (U.S. Patent No. RE40,927 E) are substantively
identical.
Optical Devices indicates that the following judicial and
administrative matters could affect or be affected by a decision in this
proceeding:
Inter partes review IPR2014-00302 (not instituted) and IPR2014-
01440 (not instituted) (each involving the ’913 patent);
Inter partes review IPR2014-01441 (pending) and IPR2014- 01442
(pending)2 (each involving the ’681 patent);
Inter partes review in IPR2014-00303 (instituted), IPR2014-01443
(pending), and IPR2014-01444 (not instituted) (each involving the ’927
patent);

2 IPR2014-01442 is consolidated with IPR2014-01441.
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In the Matter of Certain Optical Disc Drives, Components Thereof,
and Products Containing The Same, International Trade Commission,
Proceeding No. 337-TA-897;
Optical Devices, LLC v. Toshiba Corp., et. al., Civil Case No. 1:13-
cv-01530 (D. Del. 2013);
Optical Devices, LLC v. Panasonic Corp., et. al., Civil Case No. 1:13-
cv-00726 (D. Del. 2013);
Optical Devices, LLC v. Lenovo Group, Ltd., et. al., Civil Case No.
1:13-cv-01526 (D. Del. 2013);
Optical Devices, LLC v. Nintendo Co., Ltd., et. al., Civil Case No.
1:13-cv-01528 (D. Del. 2013);
Optical Devices, LLC v. Samsung Electronics Co., Ltd., et. al., Civil
Case No. 1:13-cv-01529 (D. Del.); and
Optical Devices, LLC v. LG Electronics, Inc., Civil Case No. 1:13-cv-
01033 (D. Del. 2013).
Paper 5, 1−2.
II. THE ’913 patent (EX. 1001)
A. Described Invention
The ’913 patent is a reissue of U.S. Patent No. 6,603,134 B1 (“the
’134 patent”) which issued from U.S. Patent Application No. 04/623,186
(“the ’186 application”). The ’186 application was filed on March 10, 1967,
but remained subject to secrecy order(s) for many years because of its
potential military use. Pet. 10. The ’913 patent relates to detection of
retroreflective optical systems. Ex. 1001, Abstract. Retroreflective optical
systems are found in many military surveillance systems including
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binoculars, telescopes, periscopes, range finders, cameras, and the like. Id.
at 1:60–63. Retroreflective characteristics of the human eye are described
with respect to Figure 5. Id. at 5:26−44.
Retroreflective optical systems are those in which incident rays and
reflected rays are parallel for any angle of incidence within a field of view.
Ex. 1001, 1:23–26. Retroreflectors are discernible from the background in
which they are positioned.
It should be noted that in almost all cases, the retroreflector will
be disposed within an environment that produces background
radiation in a Lambertian manner. Thus, the radiant intensity of
the retroreflector is so much greater than that of a Lambertian
radiator that it is easily discernible from the background, even
when, (as shown in FIG. 2) a large percentage of the
retroreflected radiant flux is lost due to vignetting.
Ex. 1001, 5:1–6
Figure 1 of the ’913 patent is reproduced below:

Figure 1 of the ’913 patent explains retroreflection. It 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, 3:4–25. 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 3:14–16. For purposes of clarity, Figure 1 of the
’913 shows the incident rays at the top of lens 20 and the reflected rays at
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the bottom of lens 20. Id. at 3:11–14. Incident rays 26 and 28 are refracted
by lens 20 and focused at focal point 32 on mirror 22. Id. at 3:14–16. The
rays are reflected, such that the angle of reflection equals the angle of
incidence, and the reflected rays are refracted again by lens 20 and emerge
therefrom as retroreflected rays 26R and 28R. Id. at 3:21–25.
With reference to Figure 3 of the ’913 patent, which is reproduced
below, the radiant flux density at the reflector surface may vary based on
characteristics of components of the optical system, such as the position of
mirror 22B or an imperfection of lens 20B, or both.

Mirror 22B of Figure 3 is positioned substantially in focal plane 24B, but not
precisely in focal plane 24B. As shown in Figure 3,
the rays 38 and 40 are parallel to the optical axis 30B but are
not focused at a single point on the focal plane 24B, and instead
form an image on the mirror 22B, which image is referred to as
the circle of confusion. In most practical optical systems there
are circles of confusion and the mirror is normally positioned at
the plane of least circle of confusion, herein depicted by the
reference numeral 42. The image formed on the mirror by
means of the rays 38 and 40 can be considered to be a radiant
source, and the retroreflected rays 38R and 40R exit from the
lens 20B substantially parallel to each other.
Id. at 3:44−54.
Retroreflected rays 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
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beam due to the narrowing thereof. This increase in radiant flux density is
herein termed optical gain.” Id. at 4:6–10. “In order to obtain a measure of
the optical gain we must compare the retroreflector to a standard of
reference.” Id. at 4:41–42.
Embodiments of systems taking advantage of retroreflection are
described with respect to Figures 6−14. The embodiment described with
respect to Figure 6 examines spectral and temporal characteristics of the
retroreflected beam to determine characteristics of the optical system being
investigated. Id. at 6:3–8.
The ’913 patent describes an embodiment that directs a laser for
identifying and tracking an object based upon retroreflected radiant energy.
Id. at 8:25–9:32. As shown in Figure 12, reproduced below, radiant energy
is transmitted by optical search device 182 at optical instrument 196 (e.g., an
optical system including a lens and an object exhibiting some degree of
reflectivity when disposed substantially in a focal plane of the lens).

Figure 12 is a block diagram of an embodiment of a system for detecting the
presence of an optical instrument, for tracking the instrument, and for
neutralizing observers utilizing the instrument and/or rendering the
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instrument ineffective. Retroreflected radiant energy is detected by detector
184. The output of detector 184 is provided to utilization system 192 that
controls either scanning and positioning means 188 to track the location of
the object or high energy laser gun 186 to direct laser gun 186 at the object
by means of common power and control means 190. Id. at 8:30–40.
The ’913 patent also describes, with the aid of Figure 13, an apparatus
embodiment for identifying a radar system by scanning an area with a sweep
of frequencies and noting retroreflection from a parabolic antenna of the
radar system. An attenuated frequency received from the scanning area
indicates the presence of a parabolic antenna resonant at a particular
frequency that effectively absorbs the frequency appearing to be attenuated.
Id. at 9:33–65.
B. Illustrative Claim
Toshiba challenges claims 48–53 of the ’913 patent. Claims 48 and
51 are independent. Claim 48 is illustrative and is reproduced below:
48. A method of detecting characteristics of an object within an
optical system, comprising:
transmitting energy at an object included in an optical system
having retroreflective characteristics,
wherein the optical system includes a lens and the object
includes a surface exhibiting some degree of reflectivity
disposed substantially in a focal plane of the lens;
receiving reflected radiant energy with an optical gain after
retroreflection of the radiant energy; and
detecting the reflected radiant energy after retroreflection to
determine at least one characteristic of the object.

Ex. 1001, 14:21–31. Claims 49 and 50 depend from claim 48, and claims 52
and 53 depend from claim 51.
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III. ANALYSIS
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); 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 ’913 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. 22 (citing Ex. 1008 ¶ 32).
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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B. Claim Construction
In an inter partes review, the Board interprets 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 terms discussed below.
1. “Retroreflection”
Toshiba construes “retroreflection” as “reflection of an incident ray in
a manner such that the reflected ray is parallel to the incident ray for any
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angle of incidence within the field-of-view.” Pet. 13. Optical Devices
preliminarily indicated that it did not object to adding to the construction the
phrase “within the field-of-view” as proposed by Petitioner. Prelim. Resp.
11. Optical Devices maintained that position in its Patent Owner Response.
PO Resp. 5. Optical Devices supports its proposed construction by reference
to the ’913 patent. Ex. 1001, 1:20–26, 3:4–4:3, 6:34–46, 7:14–25.
We are persuaded that the broadest reasonable interpretation of
“retroreflection,” consistent with the ’913 patent Specification, is “reflection
of an incident ray in a manner such that the reflected ray is parallel to the
incident ray for any angle of incidence within the field-of-view.”
2. “Optical System”
Both Toshiba and Optical Devices propose to construe “optical
system” as “a collection of optical elements including at least a lens and a
reflective surface.” Pet. 14; Prelim. Resp. 11–12. The ’913 patent supports
this construction. Ex. 1001, 2:41–59, 3:14–16, 5:40–43, 8:44–50; Figs. 1–4,
6–12.
We are persuaded that this construction is the broadest reasonable
construction interpretationwith the Specification of the ’913 patent and adopt
it.
3. “Optical Gain”
In the context of a retroreflecting optical system, Toshiba would have
us construe “optical gain” as “an actual increase in the radiant flux density of
the retroreflected beam due to the narrowing thereof.” Pet. 15. Toshiba
argues that retroreflected light inherently has the attribute of optical gain
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because the lens concentrates rays into a smaller solid angle that otherwise
would be reflected into a larger one. Pet. 15–21.
In support of its position, Toshiba provides the following image
comparing retroreflected light with Lambertian scattered light at Petition
page 20 and at Exhibit 1008 ¶ 46:

According to Toshiba, this comparison demonstrates that light that
would otherwise be scattered into a wide angle (right side) is gathered into a
smaller angle and collimated (left side), thereby increasing flux density of
the reflected light. Pet. 20.
Optical Devices argues for a broader construction of “optical gain”
that would be consistent with all of the embodiments described in the
Specification of the ’913 Patent. PO Resp. 6−18. It proposes that the
broadest reasonable interpretationof the term “optical gain” in the context of
the ’913 patent is “a change in radiant flux density of reflected radiant
energy.” PO Resp. 6 (citing Ex. 2104 ¶¶ 20–21).
James Leger, Ph.D., providing testimony on behalf of Optical
Devices, 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 is compared with the reflected radiant flux density at
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another scanned location. A change in the detected reflected radiant flux
density from one location to another signals the presence or absence of a
retroreflective instrument. Ex. 2104 ¶ 21. According to Dr. Leger, one of
ordinary skill would appreciate that a photodetector signal increase would
represent an increase in the radiant flux density when a scanner moves from
an object having little or no retroreflectivity to an object having a higher
degree of retroreflectivity (e.g., a binocular). Id. On the other hand, a signal
decrease would represent a decrease in radiant flux density when the
scanning radiation is moved from an object associated with a high level of
retroreflectivity to an object associated with little or no retroreflectivity. Id.
The fact that the object has a retroreflective characteristic is determined
when the scanning radiation moves to an adjacent object that does not
exhibit such a characteristic or does so to a lesser degree, thereby resulting
in a decrease in the reflected radiant flux density. Id. In another example, in
order to track an object associated with some level of retroreflectivity, a
decrease in the retroreflectivity is detected when the object moves away
from the initially detected location. Hence, one of ordinary skill would have
understoodd that the concept of “optical gain” as used in the ’913 patent
covers both an increase and a decrease in the reflected radiant flux density.
Id.
Lambertus Hesselink, Ph.D., testifying on behalf of Toshiba, opines
that the ’913 patent inventor acted as a lexicographer and provided a special
meaning for the term “optical gain” as “an actual increase in the radiant flux
density of the retroreflected beam due to the narrowing thereof.” Ex. 1008
¶ 37. Dr. Hesselink refers to the following passage from the ’913 patent to
support his view:
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The rays retroreflected by the optical systems depicted in FIGS.
1 to 4 are in the form of a narrow, substantially collimated
beam having a high radiant density. It is to be noted that there
is an actual increase in the radiant flux density of the
retroreflected beam due to the narrowing thereof. This increase
in radiant flux density is herein termed optical gain.
Ex. 1001, 4:4-9.
Optical Devices 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. 9 (citing Ex. 2104 ¶ 23). Restricting the
construction of “optical gain” 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 ’913 patent. PO Resp. 10.
Optical Devices notes that Dr. Hesselink’s view requires that “optical
gain” be measured relative to a Lambertian radiator. Id. (citing Ex. 1008
¶ 16). Dr. Hesselink refers to the following passage from the ’913 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. ¶ 39
(citing Ex. 1001, 4:42–45). However, Dr. Leger interprets this passage
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 ’913 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 ’913 patent has
chosen the Lambertian radiator as an illustrative reference only in the
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context of the particular example, and not as a way of determining optical
gain in all cases. Id.
Optical Devices further notes that Dr. Hesselink relies upon plain
meaning in construing “optical gain” as implying a positive change. PO
Resp. 10–11 (citing Ex. 1008 ¶ 44). However, according to Optical Devices,
Dr. Hesselink neglects to point out that in various fields of science and
engineering, the term “gain” is employed to denote both positive and
negative change. For example, in the field of microwave antennas, the
“gain” of an antenna can be positive or negative. Id. at 11 (citing Ex. 2104 ¶
25). According to Optical Devices, it is noteworthy that the ’913 patent
states that its teachings are applicable to the detection of microwave
apparatuses, such as antennas. Id. (citing Ex. 1001, 9:13–17). Thus,
according to Optical Devices, one of ordinary skill would have understood
that the concept of “optical gain” as used in the ’913 patent covers both an
increase and a decrease in the reflected radiant flux density as compared to a
standard or reference. Id. (citing Ex. 2104 ¶ 24).
Optical Devices argues that its view is borne out by the cross
examination of Dr. Hesselink. Id. (citing Ex. 2119, 60:10–61:8, 61:13–16).
Optical Devices’ arguments notwithstanding, we conclude that the
strongest evidence for construing the term “optical gain” comes from the
Specification itself which clearly defines the term.
[The claims] are part of a fully integrated written instrument,
consisting principally of a specification that concludes with the
claims. For that reason, claims must be read in view of the
specification . . . . [T]he specification is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed term.
See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the
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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
light of the specification. We give less weight to Optical Devices’
argument that all embodiments should be embraced by the construction.
“‘[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.’” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,689 (Fed. Cir.
2008) (quoting Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d
1173, 1181 (Fed. Cir. 2006)). The ’913 patent includes description of a
radar system embodiment with respect to Figures 13 and 14. Ex. 1001,
9:34–65. It is described that the radar system is detected by means of the
“retroreflection principles” of the invention. 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)3 (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. Challenged claims 48 and 51 are directed a method of or apparatus
for “detecting characteristics of an object within an optical system.” E.g.,

3 This decision does not reference Ex. 3001.
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Ex. 1001, 14:21–22 (claim 48; emphasis added). In this context, we
conclude that “optical gain” is limited to the optical spectrum and does not
apply to other portions of the 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.”
4. Additional terms
In view of our analysis, we do not find it necessary to construe
expressly any additional terms.
C. Prior Art Challenge Based on Ando (Ex. 1007)
Toshiba argues that claims 48–53 of the ’913 patent are anticipated by
Ando and presents a detailed reading of claims 48–53 on Ando at Petition
pages 25–37, supported by the testimony of Dr. Hesselink in the form of a
declaration (Ex. 1008). We have reviewed Toshiba’s analysis and adopt it
except to the extent clarified below.
Optical Devices challenges certain aspects of Petitioner’s analysis and
argues that Ando does not anticipate claims 48–53. PO Resp. 33–36.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
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1. Ando Generally
Ando’s Figure 1 is reproduced below.

Figure 1 shows an embodiment of a “contactless probe system” that
determines the contour of the surface of object 20 without contact. Ex.
1007, 1:15–19. It does so 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. Servo control of the probe system is effected by
superimposing a frequency on the radiation reflected from object 20 and
passing through lens 24 by vibrator 28 vibrating pinhole 27 through which
the received radiation passes. The probe system is moved so as to minimize
the frequency imposed by vibrator 28. This effectively keeps the surface of
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object 20 in focus, thereby mapping the contour of object 20, i.e., a three
dimensional configuration.
2. Claim 48-50
Toshiba argues that retroreflection occurs in Ando. Toshiba
demonstrates this by reversing a portion of Ando’s Figure 1 and juxtaposing
it with respect to Figure 1 of the ’913 patent (Pet. 24) as follows:

Both figures show incoming collimated light being focused onto a surface in
the focal plane of the lens, whereby reflected light is collimated by the lens,
so that outbound reflected light rays are parallel to the incoming light rays.
Pet. 24–25 (citing to Ex. 1008 ¶ 52).
Light entering lens 18 of Ando is collimated by virtue of light from
source 12 passing through slit 15 and lens 16. According to Toshiba, light
reflected from object 20 back through lens 18 ultimately is received by
photosensitive device 30. A servo system (oscillator 34, vibrator 28, slit 27,
photosensitive device 30, phase comparator 36, amplifier 38, and servo
motor 40) moves the probe system so as to continuously re-focus light on
object 20, thereby mapping its contour.
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Toshiba argues that light reflected from object 20 is received with
optical gain because retroreflection is occurring and optical gain is “an
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. 19. When optical gain is present in the retroreflected light, then the
retroreflected light ultimately received by photosensitive device 30 must
necessarily have optical gain. Id. We find the figure set forth at Petition
page 20 and at Exhibit 1008 ¶ 46 to be persuasive and find that
retroreflection occurs based upon a the structural arrangement of lens and
reflecting surface.
Optical Devices argues that one of ordinary skill would have
understood that the “detecting” step of claim 48 requires detecting an optical
gain of the retroreflected energy, namely detecting a change in the radiant
flux density of the retroreflected energy. PO Resp. 33. Optical Device
argues that because Ando does not disclose detecting optical gain, it would
not anticipate this limitation. Optical Devices 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. at
34. Dr. Leger explains that the operation of Ando’s comparator 36 does not
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 30 (citing Ex. 2104 ¶ 65).
We agree with Optical Devices’ description of Ando, but not with
Optical Devices’ conclusion. We do not read into the “detecting” step of
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claim 48 a requirement of detecting an optical gain. The ’913 patent
invention lies in 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 48.
Claim 48 requires “receiving reflected radiation energy with an
optical gain after retroreflection of the radiant energy.” However, the
“detecting” step that follows simply requires detecting the reflected radiant
energy after retroreflection to determine at least one characteristic of the
object. Ando does indeed detect reflected radiant energy after
retroreflection. It also determines at least one characteristic of the object,
namely its contour. Ex. 1007 at Abstract. We “determine that there is no
reasoned basis to read into the “detecting” step of claim 48 a requirement of
detecting an optical gain. We, therefore, conclude that Ando meets the
limitations of claim 48.
Optical Devices does not separately argue dependent claims 49 and
50, each depending from claim 48. PO Resp. 35. We conclude that they are
unpatentable as well. Claim 49 further requires that the “characteristic”
includes any optically detectable property of the object. The Ando object’s
contour is optically detectable. Ex. 1007, Abstract, Fig. 1. Claim 50 further
requires that the “characteristic includes a relative position of the object
within the optical system.” Ando detects position of the object within its
optical system. See Id. Fig. 1. Servo motor 40 moves the optical apparatus
to maintain focus on the surface of object 20, thereby contouring the surface
of object 20.
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3. Claim 51
Claim 51 is reproduced below.
51. An apparatus for detecting characteristics of an object
within an optical system, the apparatus comprising:
a radiant energy source for transmitting energy at an object
included in an optical system having retroreflective
characteristics, wherein the optical system includes a lens
and the object includes a surface exhibiting some degree of
reflectivity disposed substantially in a focal plane of the
lens; and
a detector for detecting received reflected radiant energy with
an optical gain after retroreflection of the radiant energy to
determine at least one characteristic of the object.
Optical Devices makes an argument similar to that made with respect
to claim 48, namely that one of ordinary skill would have understood from
the language of the claim that the claimed apparatus includes a detector for
detecting an optical gain of the retroreflected radiant energy. PO Resp. 36.
We are not persuaded to read into the “detector” limitation of claim 51
a requirement that optical gain is detected. The detector limitation requires
the detection of “received radiant energy with an optical gain after
retroreflection . . . to determine at least one characteristic of the object.”
[Cite] It requires nothing further.
Ando determines a characteristic (contour) of an object based on light
reflected from its surface. Ex. 1007, Abstract. Without the benefit of
reflected energy, the Ando system could not servo focus on the surface of
object 20, thereby mapping the contours of that surface. Ando uses the
reflected radiant energy as a carrier on which to impose a modulation by
vibrating a slit through which the reflected light passes. See Id. Fig. 1. The
focus of the system on the object being contoured is adjusted to minimize
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the frequency component introduced by the vibrating slit, thus gaining better
focus. In this way the position of the measuring device mirrors the contour
of the object being characterized. Id. at 3:73−4:24. Thus, Ando would not
operate without the reflected radiant energy. Based on the preponderance of
evidence, we conclude that claim 51 is unpatentable as anticipated by Ando.
Claims 52 and 53 are not argued separately. In view of our evaluation
of independent claim 51, we conclude that they are unpatentable as well.
Claim 52 depends from claim 51 and further requires that the
“characteristic” includes any optically detectable property of the object. The
Ando object contour is optically detectable. Ex. 1007, Abstract, Fig. 1.
Claim 53 also depends from claim 51 and further requires that the
“characteristic includes a relative position of the object within the optical
system.” Ando detects position of the object within its optical system. See
Id. Fig. 1. Servo motor 40 moves the optical apparatus to maintain focus on
the surface of object 20, thereby contouring the surface of object 20.
D. Motion to Amend
Having concluded that claims 48–53 are anticipated by Ando, we
consider Optical Devices’ contingent Motion to Amend the claims of the
’913 patent. Paper 15 (“Mot. Amend.”). Proposed amended claims are set
forth in an Appendix to the Motion, filed as Paper 16. Optical Devices
proposes to substitute new claims 54−59 for challenged claims 48–53.
1. Proposed Substitute Claims
Optical Devices proposes to substitute, one-for-one, new claims 54–
59 for challenged claims 48–53. Differences between the proposed and
challenged claim are shown in the following tables, reproduced from the
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Appendix to the Motion to Amend.

’913 Claim Proposed Substitute Claim
48. A method of detecting
characteristics of an object within an
optical system, comprising:
54. A method of detecting
characteristics of an object within an
optical system, comprising:
transmitting energy at an object
included in an optical system having
retroreflective characteristics, wherein
the optical system includes a lens and
the object includes a surface
exhibiting some degree of reflectivity
disposed substantially in a focal plane
of the lens;
transmitting energy at an object
included in an optical system having
retroreflective characteristics, wherein
the optical system includes a lens and
the object includes a surface
exhibiting some degree of reflectivity
disposed substantially in a focal plane
of the lens;
receiving reflected radiant energy
with an optical gain after
retroreflection of the radiant energy;
and
receiving reflected radiant energy with
an optical gain after retroreflection of
the radiant energy; and
detecting the reflected radiant energy
after retroreflection
detecting the reflected radiant energy
after retroreflection;
to determine at least one characteristic
of the object.
to determine determining, from the
optical gain, at least one characteristic
of the object based on a change in a
radiant flux density of the reflected
radiant energy over time; and
tracking the object based on the
determined characteristic.

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49. The method of claim 48,
wherein the at least one
characteristic includes any optically
detectable property of the object.
55. The method of claim [[48]] 54,
wherein the at least one characteristic
includes any optically detectable
property of the object.
50. The method of claim 48,
wherein the at least one
characteristic includes a relative
position of the object within the
optical system.
56. The method of claim [[48]] 54,
wherein the at least one characteristic
includes a relative position of the
object within the optical system.

51. An apparatus for detecting
characteristics of an object within an
optical system, the apparatus
comprising:
57. An apparatus for detecting
characteristics of an object within an
optical system, the apparatus
comprising:
a radiant energy source for
transmitting energy at an object
included in an optical system having
retroreflective characteristics,
wherein the optical system includes
a lens and the object includes a
a radiant energy source for
transmitting energy at an object
included in an optical system having
retroreflective characteristics, wherein
the optical system includes a lens and
the object includes a surface
a detector for detecting received
reflected radiant energy with an
optical gain after retroreflection of
the radiant energy
a detector for detecting received
reflected radiant energy with an
optical gain after retroreflection of the
radiant energy; and
to determine at least one
characteristic of the object.
to determine a utilization system for
determining, from the optical gain, at
least one characteristic of the object
based on a change in a radiant flux
density of the reflected radiant energy
over time; and for tracking the object
based on the determined
characteristic.

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52. The apparatus of claim 51,
wherein the at least one
characteristic includes any optically
detectable property of the object.
58. The apparatus of claim [[51]] 57,
wherein the at least one characteristic
includes any optically detectable
property of the object.
53. The apparatus of claim 51,
wherein the at least one
characteristic includes a relative
position of the object within the
optical system.
59. The apparatus of claim [[51]] 57,
wherein the at least one characteristic
includes a relative position of the
object within the optical system.
As the moving party, Optical Devices 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 Optical Devices has not met its burden with respect
to proposed substitute new claims 54−59.
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 its Motion to Amend, Patent Owner proposes claim 54
as a substitute for claim 48, claim 55 as a substitute for claim 49, claim 56 as
a substitute for claim 50, claim 57 as a substitute for claim 51, claim 58 as a
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substitute for claim 52, and claim 59 as a substitute for claim 53. Mot.
Amend. 1–6. Each claim includes all of the limitations of the corresponding
claim for which it is a substitute, and adds additional limitations. No
limitations are removed. Toshiba in its Opposition does not dispute Optical
Devices’ assertion that the proposed substitute claims do not enlarge the
scope of the claims of the ’913 patent. We are persuaded that the proposed
substitute claims do not enlarge the scope of the original patent claims.
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 its Motion to Amend, Optical Devices explains how the subject
matter of proposed substitute claims 54–59 have written description support
in the disclosure of Reissue Application No. 12/471,058 (Ex. 1002) and in
its priority document, Utility Application No. 04/623,186 (Ex. 2118), which
share the same disclosure.4 Mot. Amend. 2–6. Optical Devices further
argues that based on the disclosures of these applications, one of ordinary
skill in the art would have understood that the inventors had possession of

4 The challenged patent (U.S. Patent No. RE42,913 E) is a reissue of a patent
issuing from U.S. Patent Application No. 12/471,058, which was a division
of U.S. Patent Application No. 11/197,731 (now U.S. Patent No. RE40,927
E). In both instances, the application as filed was a copy of U.S. Patent No.
6,603,134 B1, which issued from U.S. Patent Application No. 04/623,186
filed March 10, 1967. References are made to page and line numbers of the
1967 application as filed (Ex. 2118).
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the methods and apparatus of claims 54-57. Id.
Toshiba disagrees and argues that there is insufficient support for the
added limitations in the substitute claims. Opp. 3−9.
Optical Devices finds support for claim 54 in reissued claim 48 and in
the ’913 patent Specification. Mot. Amend. 2 (citing Ex. 2118, 3:4–6, 7:20–
24, Abstract, 1−6).
Optical Devices argues support for the additional step of “determining,
from the optical gain, at least one characteristic of the object based on a change in
a radiant flux density of the reflected radiant energy over time” in reissue claim
48, which recited “detecting the reflected radiant energy after retroreflection to
determine at least one characteristic of the object,” as well as in the ’913 patent
specification. Id. at 3 (citing Ex. 2118 at 9:10–12, 10:30–31, claim 37, 43).
Optical Devices argues that the additional recitation that an object
characteristic is determined based on a change in a radiant flux density of the
reflected radiant energy after retroreflection over time also finds support in the
’913 patent Specification as filed. Id. (citing Ex. 2118, 10:30–31).
Optical Devices argues support for the second additional step in claim 54
is “tracking the object based on the determined characteristic” also is found in the
’913 patent Specification. Id. at 3 (citing Ex. 2118, 15:7–27).
Optical Devices argues that the Declaration of James Leger, Ph.D.,
confirms that a person having ordinary skill in the art at the time of the invention
would have understood the Specification of the ’913 patent to teach that a
characteristic of an object can be determined based on a change in a radiant flux
density of the reflected radiant energy over time and that the object could thereby
be tracked:

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In my opinion, substitute claims 54 and 57 find support at page 3,
lines 5-7; page 5, lines 14-22, page 7, lines 20-24, page 8, lines 15-
16, page 15, lines 11-16 of the priority document of the ‘913 Patent.
In particular, one of ordinary skill would have understood that the
priority document discloses embodiments in which a retroreflective
optical system, e.g., binoculars, is detected based on a change in the
radiant flux density of reflective radiant energy as an area is
scanned. In other words, the retroreflective optical system is
detected based on a change in the radiant flux density of the
reflected radiant energy over time. The priority document discloses
that such a detection of an optical system can be followed by
tracking it. See, e.g., page 15, line 27 to page 16, line 1.
Id. at 3–4 (quoting Ex. 2104 ¶ 119).
Optical Devices argues that substitute dependent method claims 55 and 56
present the language of reissue claims 49 and 50 verbatim (except for
renumbering) and are also supported by the ’913 patent specification as filed. See
Ex. 2118, 9:10–12, 10:30–31, claim 28 (claim 37), 29 (claim 43).
Optical Devices argues that the first two elements of substitute apparatus
claim 57 (radiant energy source and detector) were recited in reissue claim 51 and
find support throughout the ’913 Patent specification (see Ex. 2118, 15:11–16,
Fig. 12). Substitute claim 54 recites a utilization system for determining from the
optical gain, at least one characteristic of the object based on a change in a radiant
flux density of the reflected radiant energy after retroreflection over time and for
tracking the object based on the determined characteristic. Optical Devices
argues that this recitation is supported, in part, by reissue claim 51 that recited “a
detector for detecting received reflected radiant energy with an optical gain after
retroreflection of the radiant energy to determine at least one characteristic of the
object.” Mot. Amend. 5 (citing Ex. 2118, 15:11–16, Fig. 12, claims 37, 43).

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Optical Devices argues that the additional recitation that the utilization
system determines an object characteristic based on a change in a radiant flux
density of the reflected radiant energy after retroreflection over time also finds
support in the ‘913 patent specification. Id. (citing Ex. 2118, 15:20–29). Optical
Devices also argues that the additional recitation that the utilization system
performs the additional function of tracking the object based on the determined
characteristic is also supported by the ’913 patent Specification. Id.
Optical Devices argues that the Declaration of Dr. Leger confirms that a
person having ordinary skill in the art at the time of the invention would have
understood the Specification of the ’913 patent to teach that a utilization system
can determine an object characteristic based on a change in a radiant flux density
of the reflected radiant energy after retroreflection over time and that the
utilization system also can track the object based on the determined characteristic.
Id. (citing Ex. 2104 ¶¶ 120–121).
Optical Devices argues that substitute dependent claims 58 and 59 present
the language of reissue claims 52 and 53 verbatim (except for renumbering) and
are supported by the ’913 patent specification. Id. at 6 (citing Ex. 2118, 9:10–12,
10:30–31, claims 37, 43).
Toshiba argues that the passages cited by Optical Devices do not establish
written description support for the proposed new claims. Opp. 3–11.
Toshiba argues that the ’913 patent does not describe determining
optical gain or an object characteristic based on a change in radiant flux
density. Opp. 4-6. According to Toshiba, the only reference to “radiant flux
density” in the ’913 patent Specification is found in the following single
paragraph:

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The rays retroreflected by the optical systems depicted in F IGS.
1 to 4 are in the form of a narrow, substantially collimated
beam having a high radiant flux density. It is to be noted that
there is an actual increase in the radiant flux density of the
retroreflected beam due to the narrowing thereof. This increase
in radiant flux density is herein termed optical gain.

Opp. 4–5 (citing Ex. 1001, 4:4–9). Toshiba argues that aside from this
passage explaining why retroreflectors direct more light back to the source
than background objects, the radiant flux density of the retroreflected light is
not further referenced, explained, utilized or incorporated anywhere else in
the specification.5 Opp. 6 (citing Ex. 1010 ¶ 32). Toshiba argues that
discussion following this passage describes calculating optical gain based on
radiant flux of the retroreflected light per steradian (i.e. power per unit solid
angle), not radiant flux per unit area (i.e. radiant flux density). Id. at 5
(citing Ex. 1001, 4:10–60; Ex. 1009, 16:19–21; Ex. 1010 ¶ 32).
Toshiba argues (Opp. 6) that Optical Devices’ citation to 10:30–31 of
the priority document as purportedly disclosing determinations based on radiant
flux density changes (Mot. Amend. 3) is to no avail. That passage, according to
Toshiba, only refers to “energy,” not radiant flux density. Toshiba argues (id.)
that Optical Devices’ citation to of the priority document (Ex. 2118 at 15:20–29)
as purportedly disclosing a utilization system that determines object
characteristics based on a change in radiant flux density (Mot. Amend. 5) is also

5 Toshiba notes that even though the term “radiant flux density” appears in
cancelled claims 1, 17, 40, 42, and 43), it was added improperly to these
claims during the prosecution of the parent patent, U.S. Patent No. 6,603,134
B1. This term is not in any of the originally filed claims in the priority
document. (Ex. 2118, 19–29.) Therefore, Optical Devices can only rely on
the ’913 patent Specification in support of the substitute claims.
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to no avail. That passage merely states that the utilization system can be
programmed to track an optical instrument; there is no mention of radiant flux
density let alone making any determination based upon changes thereof.
Toshiba argues that Optical Devices cites several passages identified by its
expert. (Id. at 3-6.) In particular, Toshiba notes that besides the above quoted
paragraph, none of these passages make any reference to radiant flux density,
measuring changes in radiant flux density, or making any determinations based
thereon. Ex. 1010 ¶32.
Toshiba further argues that Optical Devices relies on Dr. Leger’s
conclusion that the ’913 patent discloses embodiments in which retroreflective
optical systems are detected based on a change in the radiant flux density of the
reflective radiant energy as an area is scanned. Mot. Amend. 4. However, when
cross-examined about the foundation of that conclusion, Dr. Leger made a
number of admissions that undermine his conclusion and Optical Devices’
allegations that the substitute claims are supported by the ’913 patent
Specification. Dr. Leger’s admissions include:
• Making a determination “based on a change in radiant flux density” as
recited in claims 54 and 57 requires measuring radiant flux density twice and
comparing the measured values. Ex. 1009, 112:11–113:2, 50:5–8.
• 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
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84:5–85:4.)
• It is not possible to practice “based on a change in radiant flux density”
using only a detector that measures radiant flux. Id. at 114:17–21.
• Detector 82 in Figure 6, and detectors 92, 92A and 92B in Figures 7,
7a and 7b, respectively, of the ’913 patent only measure radiant flux. Id. at
82:6-10, 85:18–86:6.
• There is no disclosure in the ’913 patent that detector 184 in Fig. 12
measures radiant flux density. Id. at 148:22–25.
• The ’913 patent does not disclose a detector that itself compares
radiant flux density values. Id. at 163:20–25.
• The ’913 patent does not disclose a utilization means that compares
radiant flux density values. Id. at 164:20–24.
Toshiba argues that these admissions support its view that the ’913 patent
does not disclose measuring radiant flux density, changes in radiant flux density,
or making any determinations based on changes in radiant flux density. We find
this argument to be credible.
Toshiba further argues that while the embodiments of Figures 6, 7, 7a, 7b,
and 12 include detectors that detect retroreflected light, none of these
embodiments involve or are capable of detecting radiant flux density and/or
changes in radiant flux density, let alone making any determinations based upon
measured changes in radiant flux density. Opp. 8–9 (citing Ex. 1010 ¶ 33).
Toshiba argues furthermore that the specification makes no disclosure of any
known area from which the density of the retroreflected light could be calculated,
and that no apertures of known size, nor beam size or detector size measurements
or capabilities, are disclosed. Id. Toshiba also argues that there is no disclosure
of providing size information regarding any known area to any of the disclosed
utilization means to enable calculation of radiant flux density. Id.
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The preponderance of the evidence supports Toshiba’s position that the
substitute claims discussed above do not find adequate written support in the
priority document. The portions of the specification of the priority document
relied upon by Optical Devices do not mention detecting changes in radiant
flux density or comparing these changes in radiant flux density to determine
optical gain. See, e.g., PO Resp. 5 (citing Ex. 2118, 7:20–29, 8:15–26,
10:30–11:5). Exhibit 2118, 7:20–29, states that “[t]his increase in radiant
flux density is herein termed optical gain.” That seems to support the idea
that a change/increase in radiant flux density is “optical gain.” However,
Ex. 2118, 8:15–26, teaches that “[i]n order to obtain a measure of optical
gain we must compare the retroreflector to a standard or reference” and that
“[t]his reference has been taken to be a diffuse surface known in the art as a
Lambertian radiator.” Moreover, the priority specification only describes
calculating optical gain based on radiant flux, not radiant flux density. Ex.
2118, 8:17–21. Finally, Ex. 2118, 10:30–11:5 states that “[t]he energy
obtained by the utilization means can be used to obtain the spectral and
temporal characteristics of the retroreflected beam, and the same may then
be compared with the transmitted beam to determine various characteristics
of the optical system being investigated.” But neither spectral nor temporal
characteristics clearly describe radiant flux density.
Dr. Hesselink opines that the additional limitations of the substitute
claims are not taught by the ’913 patent. Ex. 1010 ¶¶ 36–37. We find his
testimony to be persuasive.
Further, under cross-examination in his deposition Dr. Leger testified
that (1) the detectors described in the ’913 patent could not detect radiant
flux density because they do not know the size of the spot hitting the
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detector (Ex. 1009, 50:9–51:4, 53:21–54:1) and measuring radiant flux
density cannot be done with detectors that only measure radiant flux like
those described in the ‘913 patent (Id. at 82:6–10, 85:18–86:6, 145:14–
146:4, 148:22–25) and (2) the ’913 patent does not describe a detector or
utilization means that compares radiant flux density values to determine a
change (Id. at 163:20–25, 164:20–24).
4. Conclusions
Considering and weighing the priority document references, the
testimony of Dr. Hesselink, and the testimony of Dr. Leger, we conclude
that preponderance of evidence compels a determination there is insufficient
written description in the specification of the ’913 patent to support the
proposed claims. We, therefore, deny Optical Device’s Motion to Amend.
IV. CONCLUSIONS
For the foregoing reasons, we conclude that claims 48–53 of the ’913
patent are unpatentable because they are anticipated by Ando. We further
conclude that there is insufficient written description support for the
proposed substitute claims.
V. ORDER
In consideration of the foregoing, it is
ORDERED that Toshiba has shown by a preponderance of the
evidence that claims 48–53 of the ’913 patent are unpatentable;
FURTHER ORDERED that, Optical Devices’ Motion to Amend is
denied; and
FURTHER ORDERED that, that, because this is a final written
decision, parties to the proceeding seeking judicial review of the decision
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must comply with the notice and service requirements of 37 C.F.R. § 90.2.

For PETITIONER:

Alan A. Limbach
Brent K. Yamashita
DLA Piper, LLP
Alan.limbach@dlapiper.com
Brent.yamashita@dlapiper.com

For PATENT OWNER:

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