Takeaway: Expert testimony relying only upon assumptions made with respect to a prior art figure was not found to be sufficient to set forth a reasonable likelihood of prevailing in establishing anticipation.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any of challenged claims 48-53 of the ’913 patent. The ’913 patent “relates to detection of retroreflective optical systems.”

The Board began with claim construction, noting that the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent. The Board noted that the parties proposed specific constructions for the following terms: (1) “focal plane”; (2) “retroreflection”; (3) “optical system”; (4) “optical system having retroreflective characteristics”; and (5) “optical gain.” The Board construed “focal plane” and “optical system” as those terms were construed by the panel in the IPR2014-00302. The Board also construed “retroreflection” as it was construed by the panel in the IPR2014-00302 with a slight modification. The Board agreed with the parties’ agreed upon construction of “an optical system having retroreflective characteristics.”

Petitioner proposed construing “optical gain” as “an actual increase in the radiant flux density of the retroreflected beam due to the narrowing thereof.” Patent Owner proposed construing “optical gain” as “a change in radiant flux density of reflected radiant energy.” Based on the record without the benefit of Patent Owner’s formal response, the Board accepted that optical gain is an inherent property of retroreflected light, and that Petitioner’s proposed construction is the broadest reasonable construction consistent with the Specification of the ’913 patent.

The Board then assessed the anticipation ground. The Board determined that Petitioner provided a detailed read of claims 48-53 on Bailey using claim charts. Patent Owner argued that Bailey does not disclose retroreflective characteristics. There is no text in Bailey that states that retroreflection is taking place, and Petitioner relies solely on Bailey’s Figure 3 schematic diagram. Based on or review of Bailey’s specification and the Board’s construction of the claim terms “retroreflected” and “retroreflection,” the Board agree with Patent Owner. Further, the Board noted that Petitioner’s expert’s testimony regarding retroreflection relies only upon assumptions made with respect to Bailey’s Figure 3. Accordingly, the Board determined that Petitioner had not established sufficiently that Bailey discloses every limitation of independent claims 48 and 51, and thus determined that Petitioner did 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 anticipated by Bailey.

Toshiba Corporation v. Optical Devices, LLC, IPR2014-01440
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: March 10, 2015
Patent: RE42,913 E
Before: Erica A. Franklin, Glenn J. Perry, and James B. Arpin
Written by: Perry
Related Proceedings: Optical Devices, LLC v. Toshiba Corp., Case No. 1:13-cv-10530 (D. Del. 2013); In the Matter of Certain Optical Disc Drives, Components Thereof, and Products Containing the Same, Investigation No. 337-TA-897; IPR2014-01441 (RE43,681); IPR2014-01442 (RE43,681); IPR2014-01443 (RE40,927); IPR2014-01444 (RE40,927); IPR2014-01445 (7,839,729); IPR2014-01446 (7,196,979); and IPR2014-01447 (8,416,651); also the ’913 patent was the subject of IPR2014-00302 and IPR2014-00303 filed by different petitioners