PTAB

IPR2014-00303

Panasonic Corp v. Optical Devices LLC

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1. Case Identification

2. Patent Overview

  • Title: OPTICAL DETECTION SYSTEM
  • Brief Description: The ’927 patent discloses a system and method for detecting distant, uncooperative optical systems (e.g., binoculars, periscopes) using the principle of retroreflection. The core concept is that any optical system with a focusing means and a reflective surface near its focal plane will act as a retroreflector, returning transmitted energy back to the source with an optical gain.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hock in view of Hock II - Claims 37, 48, and 61

  • Prior Art Relied Upon: Hock (Patent 3,552,857) and Hock II (Patent 3,533,702).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hock discloses the primary elements of the challenged independent claims. Specifically, Hock teaches an apparatus for measuring the retroreflective characteristics of an optical system comprising a radiant energy source, a focusing means, a reflective surface disposed in the focal plane, a detector (photoelectric transducer), and means for directing energy to the optical system. However, Petitioner contended that Hock’s disclosure of the “measuring means” connected to the detector is generic, describing it as implemented by “well-known means.” Hock II, from the same inventors and sharing a priority date, provides the specific details for these well-known means.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA), when implementing Hock’s system, would have been motivated to consult the related Hock II patent to understand the specific implementation of the "well-known" evaluation and measuring means. Hock II explicitly discloses connecting the photoelectric transducer to evaluation devices, such as tuned amplifiers, to process the resulting electronic signals. This combination provides a complete and enabled system as claimed.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination merely involves applying specific, detailed circuits from Hock II to the corresponding functional block described in Hock, a patent from the same inventive entity addressing a similar technical problem.

Ground 2: Obviousness over Zoot in view of Kingsbury or Thomas - Claims 39 and 56

  • Prior Art Relied Upon: Zoot (Patent 3,481,672) in view of Kingsbury (Patent 3,020,792) or Thomas (Patent 3,215,842).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Zoot discloses the fundamental optical system of claim 37, including a light source, a focusing lens, and a detector for a non-contacting distance gauge. However, dependent claims 39 and 56 require that the directing means and detecting means be "substantially concentric." While Zoot mentions a "coaxial laser transmitter and receiver," it does not detail a specific concentric design. The secondary references, Kingsbury and Thomas, explicitly disclose various embodiments of concentric transceivers for optical detection systems.
    • Motivation to Combine: A POSITA would combine the teachings because concentric designs were well-known in the art for improving signal-to-noise ratio, ensuring alignment between transmitted and received beams, and creating a more compact apparatus. To optimize the performance of the Zoot system, a POSITA would have found it obvious to arrange the transmitter and receiver components in a concentric fashion as taught by established prior art like Kingsbury and Thomas, which were cited during the original patent's prosecution.
    • Expectation of Success: Combining these elements was a matter of known design choice with predictable results. The integration of a concentric transceiver architecture into the optical measurement system of Zoot would have been straightforward for a POSITA.

Ground 3: Obviousness over Zoot in view of Electronics - Claims 38, 52, and 53

  • Prior Art Relied Upon: Zoot (Patent 3,481,672) and Electronics (an article from August 1966).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Zoot teaches the core optical system but that dependent claims 38, 52, and 53 require means for transmitting a portion of radiant energy toward the optical system and for transmitting a portion of the retroreflected energy toward the detector (i.e., a beam splitter). Zoot itself incorporates the Electronics article by reference, which discloses systems similar to Zoot’s that use a beam splitter.
    • Motivation to Combine: The motivation is exceptionally strong, as Zoot explicitly incorporates the Electronics article by reference. The article describes a system using a "half mirror" (a beam splitter) to deflect a reflected spot through a lens onto a detector. A POSITA reading Zoot would be directed to Electronics for further technical details and would find it obvious to implement the beam splitter disclosed therein to achieve the claimed functionality of separating the transmitted and received light paths.
    • Expectation of Success: Success would be expected because the combination involves using a standard, well-understood optical component (a beam splitter) for its intended and conventional purpose in a system that is analogous to the one in which it is already disclosed.

  • Additional Grounds: Petitioner asserted numerous additional grounds, including that many claims are anticipated under 35 U.S.C. §102 by either Hock or Zoot individually. Further obviousness grounds relied on similar rationales, combining the primary references Hock or Zoot with secondary art to teach minor claim variations.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 37-39, 48-53, 55-58, 60-61, 63-65, 67-69, and 71 of Patent RE40,927 as unpatentable.