Toshiba Corporationv.Optical Devices, LLC

Patent Trial and Appeal Board

Mar 10, 2015

12471058 (P.T.A.B. Mar. 10, 2015)

Trials@uspto.gov Paper No. 7
571-272-7822 Entered: March 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

TOSHIBA CORPORATION,
Petitioner,1

v.

OPTICAL DEVICES, LLC,
Patent Owner.
_______________

Case IPR2014-01440
Patent RE42,913 E
_______________

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

PERRY, Administrative Patent Judge.

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

1 The Notice of Filing Date Accorded, Paper 3, mistakenly included Toshiba
America Information Systems, Inc. as a Petitioner.
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I. INTRODUCTION
A. Background
Toshiba Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
institute an inter partes review of claims 48–53 of U.S. Patent No.
RE42,913 E (Ex. 1001, “the ’913 patent”) pursuant to 35 U.S.C. §§ 311–
319. Pet. 3. Optical Devices, LLC (“Patent Owner”) filed a Preliminary
Response (Paper 6, “Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314,2 which provides that an
inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a).
Petitioner challenges the patentability of claims 48–53 of the
’913 patent as anticipated by Bailey.3 Petitioner’s challenge is supported by
a Declaration executed by Lambertus Hesselink, Ph.D. (Ex. 1008).
For the reasons stated below, we determine that, on this record,
Petitioner has not demonstrated a reasonable likelihood of prevailing in
showing the unpatentability of any challenged claim. Accordingly, the
Petition is denied.
B. Related Proceedings
Petitioner indicates that the ’913 patent is asserted in Optical Devices,
LLC v. Toshiba Corp., Case No. 1:13-cv-10530 (D. Del. 2013). The ’913

2 See Section 6(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
No. 112-29, 116 Stat. 284, 300 (2011).
3 U.S. Patent 3,016,464 – Bailey, filed June 10, 1959, issued January 9, 1962
(“Bailey”).
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patent is also the subject of an investigation before the U.S. International
Trade Commission: In the Matter of Certain Optical Disc Drives,
Components Thereof, and Products Containing the Same, Investigation No.
337-TA-897. Pet. 1.
Petitioner indicates that the ’913 patent is related by common parent,
to U.S. Patent No. RE40,927 (“the ’927 patent”) and to U.S. Patent
RE43,681 No. (“the ’681 patent”) which are also asserted in the above
identified lawsuits. Id.
Petitioner has filed other related petitions for inter partes review
including IPR2014-01440 (the ’913 patent), IPR2014-01441 (the ’681
patent), IPR2014-01442 (the ’681 patent), IPR2014-01443 (the ’927 patent),
IPR2014-01444 (the ’927 patent), IPR2014-01445 (U.S. Patent No.
7,839,729 B2), IPR2014-01446 (U.S. Patent No. 7,196,979 B2), and
IPR2014-01447 (U.S. Patent No. 8,416,651 B2). Id. at 2; see Paper 5, 1.
The ’913 patent was the subject of IPR2014-00302 filed by a different
petitioner (petition denied); and the subject of IPR2014-00303 filed by a
different petitioner (petition granted). Pet. 2.
C. The ’913 Patent
The ’913 patent relates to detection of retroreflective optical systems.
Ex. 1001, Abstract. Retroreflective optical systems are those in which
incident rays (light or other radiant energy) and reflected rays are parallel for
any angle of incidence within a field of view. Ex. 1001, 1:23–26.
Retroreflective optical systems are found in many military surveillance
systems including binoculars, telescopes, periscopes, range finders, cameras,
and the like. Id. at 1:60–63. The application that eventually issued as the
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’913 patent was filed on March 10, 1967, but remained subject to a secrecy
order for many years because of its potential military use. Pet. 10.
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, the ’913 patent
Figure 1 shows the incident rays at the top of lens 20 and the reflected rays
at 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.
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
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
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the optical gain we must compare the retroreflector to a standard of
reference.” Id. at 4:41–42.
Embodiments describe detecting a retroreflective system by
comparing reflected energy with transmitted energy to distinguish energy
that has been retroreflected from energy that has not been retroreflected. For
example, an embodiment shown in Figure 6 illuminates a field of view with
transmitted light. Reflected light is compared with the transmitted light to
determine characteristics of the optical system being investigated. Id. at
5:45–6:7.
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. Figure 12 is reproduced below.

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
instrument ineffective. Radiant energy is transmitted by optical search
device 182 toward 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). Retroreflected radiant energy is
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detected by detector 184. The output of detector 184 is provided to
utilization system 192 that controls scanning and positioning means 188 to
track the location of the object or high energy laser gun 186 to direct laser
gun 186 at the object by means of common power and control means 190.
Id. at 8:30–40.
The ’913 patent also describes, with the aid of Figure 13, an
embodiment for identifying a radar system by scanning an area with a sweep
of frequencies and noting retroreflection from a parabolic antenna. An
attenuated frequency received from the scanning area indicates the presence
of a resonant parabolic antenna system that absorbs the frequency appearing
as attenuated. Id. at 9:33–65.
D. Illustrative Claim
Petitioner challenges claims 48–53 of the ’913 patent. Claims 48 and
51 are independent. Claims 49 and 50 depend from claim 48. Claims 52
and 53 depend from claim 51. Claim 48 is illustrative and is reproduced
below, with disputed terms emphasized:

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.
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II. CLAIM CONSTRUCTION
Consistent with the statute and the legislative history of the AIA, we
interpret claims of an unexpired patent using the broadest reasonable
construction in light of the specification of the patent. 37 C.F.R.
§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,766 (Aug. 14, 2012). There is a presumption that claim terms are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the specification. See In re
Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An applicant
may rebut that presumption by providing a definition of the term in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
definition, limitations are not to be read from the specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
At least one of the parties proposes a specific construction for each of
the following terms. Pet. 11–21; Prelim. Resp. 8–20.
A. “Focal Plane”
The panel that denied institution in the IPR2014-00302 (Ex. 1006)
(“the 302 panel”) construed this term. Ex. 1006, 8. The parties agree that
the term “focal plane” should be construed here, as it was construed by the
302 panel, to mean “a plane through the focus perpendicular to the axis of an
optical element.” Pet. 13; Prelim. Resp. 10. We are persuaded that, for
purposes of this decision, the 302 panel’s construction is the broadest
reasonable construction consistent with the ordinary and customary meaning
of the term and with the Specification of the ’913 patent and adopt it.
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B. “Retroreflection”
The 302 panel construed this term in connection with the previous
IPR proceeding. Ex. 1006, 8. The parties agree that this term should be
construed here, as it was construed by the IPR panel, such that
“retroreflection” means “reflection of an incident ray in a manner such that
the reflected ray is parallel to the incident ray for any angle of incidence.”
Pet. 13; Prelim. Resp. 11. However, Petitioner maintains that this
construction is correct for any angle of incidence within the “field of view”
of the retroreflector. See Pet. 13. For purposes of this decision, Patent
Owner does not object to Petitioner’s proposed modification of the 302
panel’s construction of “retroreflection.” Prelim. Resp. 11. We are
persuaded that, for purposes of this decision, the broadest reasonable
construction of “retroreflection, consistent with the Specification of the ’681
patent, 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 of the retroreflector.”
C. “Optical System”
The IPR panel construed this term in connection with the ’302 IPR
proceeding. Ex. 1006, 9. The parties agree that this term should be
construed here, as it was construed by the 302 panel, such that “optical
system” means “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.
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We are persuaded, for purposes of this decision, that the ’302 panel’s
construction also is the broadest reasonable construction consistent with the
Specification of the ’913 patent.
D. “An Optical System Having Retroreflective Characteristics”
(claims 48–53)
Petitioner and Patent Owner agree on the construction of “an optical
system having retroreflective characteristics” as
an optical system as defined above having a focusing element
and reflective surface that is located substantially in the focal
plane of the focusing element, wherein the system is configured
so that a ray incident on the focusing element and focused on
the reflective surface is reflected along a path parallel to the
incident ray for any angle of incidence.
Pet. 14–15; Prelim. Resp. 12–13. The agreed upon construction is supported
by the ’913 patent Specification. Ex. 1001, 2:41–59, 3:14–16, 5:40–43,
8:44–50; Figs. 1–4, 6–12.
We are persuaded, for purposes of this decision, that this construction
is the broadest reasonable construction consistent with the Specification of
the ’913 patent and adopt it.
E. “Optical Gain” (in the context of a retroreflecting optical
system)(claims 48–53)
In the context of a retroreflecting optical system, Petitioner 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.
Petitioner argues that retroreflected light necessarily has the attribute
of optical gain because the lens concentrates rays that would otherwise be
reflected into a larger solid angle into a smaller one. Pet. 15–21. Petitioner
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III. ANALYSIS
Petitioner contends that claims 48–53 are anticipated by Bailey.
Pet. 4.
A. Overview
Petitioner argues that claims 48–53 of the ’913 patent are anticipated
by Ando. See supra Sec. I.A. “A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). On this record and for
the reasons set forth below, we are persuaded that Petitioner demonstrates a
reasonable likelihood of prevailing in the challenges to claims 48–53 of the
’913 patent.
B. Bailey (Ex. 1007)
Bailey describes an apparatus for determining the location and
thickness of a reflecting object. Ex. 1007, Title. Bailey’s Figure 2 is
reproduced below.
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15
Petitioner relies only on the Bailey’s Figure 3 drawing as demonstrating
incident and reflected light rays and a supposed focal point on object 12 .
There is no text in Bailey that explicitly states that retroreflection is taking
place. Nor is there any text in Bailey that states that object 12 is located at a
focal point of Bailey’s lens 57. Petitioner relies soley on Bailey’s Figure 3
schematic diagram. Prelim. Resp. 27–28.
Based on our review of Bailey’s specification, and our construction of
the claim terms “retroreflected” and “retroreflection,” we agree with Patent
Owner. Contrary to Petitioner’s assertions, Bailey does not describe Figure
3 as exhibiting retroreflected radiant energy or retroreflection. Nor does
Bailey explain that object 12 is at the focal point of lens 57, or that the
reflection of an incident ray is in a manner such that the reflected ray is
parallel to the incident ray for any angle of incidence. Further, Petitioner has
not identified in Bailey a description that its Figure 2 embodiment generates
a collimated beam of light. See Prelim. Resp. 32. Moreover, although we
recognize the apparent expertise of Dr. Hesselink (see Ex. 1008 ¶¶ 2–4), we
note that his testimony regarding retroreflection relies only upon
assumptions made with respect to Bailey’s Figure 3 (see id. ¶ 33). As Patent
Owner correctly notes, it is insufficient to rely on a schematic diagram alone
to define precise proportions of elements shown in such a diagram. Id. ¶¶
32–33 (citing Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d
951, 956 (Fed. Cir. 2000)). For these reasons, we determine that Petitioner
has not established that radiant energy is retroreflected in Bailey.
Patent Owner argues additionally that Bailey doesn’t receive
retroreflected light with an optical gain. Prelim. Resp. 30–33. Because we
are not persuaded that retroreflection is taking place in Bailey, we likewise
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16
are not convinced that light reflected from the surface of object 12 is
received with an optical gain.
Consequently, based on the information presented, Petitioner has not
established sufficientyly that Bailey discloses every limitation of
independent claims 48 and 51. Therefore, on this record, we determine that
Petitioner has not set forth a reasonable likelihood of prevailing in
establishing that independent claims 48 and 51, or their respective dependent
claims 49, 50, 52, and 53 are are anticipated by Bailey.
IV. CONCLUSION
For the foregoing reasons, we conclude that based on the information
presented in the Petition, Petitioner has not established a reasonable
likelihood of prevailing in showing that any claim of the ’913 patent is
unpatentable based upon the asserted anticipation ground.

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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to claims 48–53 of the ’913
patent under 35 U.S.C. § 102(b) as anticipated by Bailey; and
FURTHER ORDERED that no inter partes review is instituted.

For PETITIONER:

Alan A. Limbach
Brent K. Yamashita
DLA Piper, LLP
Alan.kimbach@dlapiper.com
Brent.yamashita@dlapiper.com
OD-Toshiba-DLA-IPR@dlapiper.com

For PATENT OWNER:

Thomas Engellenner
Reza Mollaaghababa
Andrew Schultz
Andy Chan
Yue (Lily) Li
PEPPER HAMILTON LLP
engellennert@pepperlaw.com
mollaaghababar@pepperlaw.com
schultza@pepperlaw.com

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