Trials@uspto.gov
`571-272-7822
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` Paper 32
`Entered: December 14, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION
`Patent Owner.
`____________
`
`Case IPR2017-00618
`Patent 7,355,805 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM,
`and MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KOKOSKI, 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
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6, and this Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
`determine that Petitioner has not shown by a preponderance of the evidence
`that claims 1–3 and 10 of U.S. Patent No. 7,355,805 B2 (“the ’805 patent,”
`Ex. 1001) are unpatentable.
`A.
`Procedural History
`Sony Corporation (“Petitioner”) filed a Petition (“Pet.,” Paper 2) to
`institute an inter partes review of claims 1–3 and 10 of the ’805 patent based
`on the following grounds: (1) whether claims 1–3 and 10 are unpatentable
`under 35 U.S.C. § 1021 as being anticipated by Hennecken2; (2) whether
`claims 1–3 and 10 are unpatentable under 35 U.S.C. § 103 as being obvious
`over the combined teachings of Hennecken and Albrecht II3 (according to
`Basis 1 and/or Basis 2); (3) whether claims 1–3 and 10 are unpatentable
`under 35 U.S.C. § 103 as being obvious over the combined teachings of
`Hennecken, Albrecht II, and Dugas4 (according to Basis 1 and/or Basis 2);
`and (4) whether claims 1–3 and 10 are unpatentable under 35 U.S.C. § 103
`as being obvious over the combined teachings of Albrecht II and
`Hennecken. Pet. 4. FUJIFILM Corporation (“Patent Owner”) filed a
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including §§ 102
`and 103. Because the ’805 patent has an effective filing date prior to the
`effective date of the applicable AIA amendments, we refer herein to the pre-
`AIA versions of §§ 102 and 103.
`2 U.S. Patent No. 6,710,967 B2, issued March 23, 2004 (Ex. 1005).
`3 U.S. Patent No. 5,930,065, issued July 27, 1999 (Ex. 1003).
`4 U.S. Patent No. 6,496,328 B1, issued December 17, 2002 (Ex. 1006).
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`Preliminary Response. Paper 7. We denied the Petition and did not institute
`an inter partes review based on our determination that the information
`presented in the Petition did not demonstrate a reasonable likelihood that
`Petitioner would prevail on its challenge that claims 1–3 and 10 are
`unpatentable. Paper 9 (“Decision Denying Institution”), 1, 21.
`Petitioner filed a Request for Rehearing of our Decision Denying
`Institution. Paper 10 (“Req. Reh’g). We granted Petitioner’s Request and
`instituted an inter partes review of claims 1–3 and 10 based on a subset of
`the asserted grounds. Paper 11 (“Dec. on Inst.” or “Institution Decision”),
`11. We subsequently modified our Institution Decision to include review of
`“all of the grounds presented in the Petition.” Paper 15, 2.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(“PO Resp.,” Paper 14) and a Supplemental Patent Owner Response (“Supp.
`PO Resp.,” Paper 17), and Petitioner filed a Reply (“Pet. Reply,” Paper 22).
`Petitioner relies on the Declaration of Dr. Thomas R. Albrecht (“the
`Albrecht Declaration,” Ex. 1016). Patent Owner relies on the Declaration of
`Dr. William C. Messner (“the Messner Declaration,” Ex. 2003), the
`Supplemental Declaration of Dr. William C. Messner (“the Supplemental
`Messner Declaration,” Ex. 2008), and the Second Supplemental Declaration
`of Dr. William C. Messner (“the Second Supplemental Messner
`Declaration,” Ex. 2011).
`An oral hearing was held on September 25, 2018, and a transcript is
`included in the record. Paper 31 (“Tr.”).
`B.
`Related Proceedings
`The parties identify Certain Magnetic Data Storage Tapes and
`Cartridges Containing the Same (ITC Investigation No. 337-TA-1012) as a
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`related matter. Pet. vi; Paper 4, 2. Petitioner also states that “[a] decision in
`this proceeding could affect or be affected by” Sony Corp. v. Fujifilm
`Holdings Corp., Civil Action No. 1:16-cv-05988-PGG (S.D.N.Y). Pet. vi.
`C.
`The ’805 Patent
`The ’805 patent, titled “Magnetic Tape and Method of Manufacturing
`Magnetic Tape, Servo Writer, and Method of and Apparatus for Specifying
`Servo Band,” is directed to, inter alia, magnetic tape “wherein specifying a
`servo band where the magnetic head positions can be performed without
`comparing servo signals written on adjacent servo bands,” and a method of
`manufacturing such magnetic tape. Ex. 1001, 1:49–55. Figure 1 of the ’805
`patent is reproduced below.
`
`
`Figure 1 is a plan view illustrating a magnetic tape described in the ’805
`patent. Id. at 4:15–16. In Figure 1, magnetic tape MT includes five servo
`bands SB1–SB5 along the longitudinal direction of the tape. Id. at 4:45–47.
`Data bands DB1–DB4 are arranged between servo bands SB1–SB5, which
`are positioned at equally-spaced intervals along the width direction of
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`magnetic tape MT. Id. at 4:47–50. Predetermined servo signals S1–S5 are
`written on servo bands SB1–SB5 for tracking control of the magnetic head.
`Id. at 4:50–52.
`Figure 2 of the ’805 patent is reproduced below.
`
`
`Figure 2 is an enlarged plan view of a servo signal of Figure 1. Ex. 1001,
`4:17–18. Servo signals S1–S5 consist of first servo pattern 1 and second
`servo pattern 2 that are arranged arbitrarily for a plurality of sets along the
`longitudinal direction of the tape. Id. at 4:53–56. First servo pattern 1
`includes first subframe 11 and second subframe 12 as nonparallel stripes,
`and second servo pattern 2 includes first subframe 21 and second subframe
`22 as nonparallel stripes. Id. at 4:56–60.
`First subframes 11 and 21 include five line patterns L1–L5 that incline
`against the longitudinal direction of the tape, and five line patterns L6–L10
`that incline symmetrically to line patterns L1–L5. Id. at 4:61–65. Pairs of
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`line patterns (L1, L6), (L2, L7), (L3, L8), (L4, L9), and (L5, L10) are
`referred to as nonparallel patterns P1–P5. Id. at 5:3–7. In first subframe 11,
`nonparallel patterns P2 and P4 are spaced apart with respect to nonparallel
`pattern P3, and in first subframe 21, nonparallel patterns P2 and P4 are close
`to nonparallel pattern P3. Id. at 5:8–14.
`Second subframes 12 and 22 include four line patterns L11–L14 that
`incline against the longitudinal direction of the tape, and four line patterns
`L15–L18 that incline symmetrically to line patterns L11–L14. Ex. 1001,
`5:15–18. Nonparallel patterns P6–P9, consisting of line patterns L11–L18,
`are arranged at equally spaced intervals along the longitudinal direction of
`the tape. Id. at 5:18–21.
`The ’805 patent explains that first subframes 11 and 21 “are formed
`differently so that the data indicating ‘1’ is embedded in the first servo
`pattern 1 and the data indicating ‘0’ is embedded in the second servo pattern
`2.” Id. at 5:24–28. Due to the “arbitrary arrangement of these first and
`second servo patterns 1, 2 along the longitudinal direction of the tape, it is
`possible to read out a predetermined data, upon reading out, for example, the
`whole servo signal S1.” Id. at 5:28–32.
`Figure 6 of the ’805 patent is reproduced below.
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`Figure 6 is a plan view illustrating a servo write head of a servo writer as
`described in the ’805 patent. Id. at 4:26–27. Servo write head WH has a
`plurality of pairs of nonparallel gap patterns G that are formed in the
`position corresponding to each of servo bands SB1–SB5, and records servo
`signals S1–S5 by gap patterns G. Id. at 6:50–54. Head cores HC are
`independently provided for each gap pattern G, and each head core HC is
`wound by coil C. Id. at 7:3–4. Pulse generation circuit SW4 connected to
`each coil C converts the data that is encoded by controller SW5 (not
`pictured) to each of servo bands SB1–SB5 into a recording current pattern,
`and supplies the recording current patterns to coil C. Id. at 7:4–9. In this
`way, a characteristic ID is embedded in each of servo signals S1–S5 in
`accordance with the respective servo bands SB1–SB5. Id. at 7:11–13.
`According to the ’805 patent, “because data indicating the respective
`servo bands SB1 to SB5 are embedded in the corresponding servo signals S1
`to S5 written on a plurality of servo bands SB1 to SB5, it is possible to
`specify the servo band without comparing the servo signals written on the
`adjacent servo bands.” Id. at 8:27–33. The ’805 patent further explains that
`“because the servo band can be specified from one servo signal,” if one
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`servo read head malfunctions, a reserve servo read head can specify the
`servo band to reliably determine that the head unit is positioned on the
`correct data band. Id. at 8:33–37.
`Claim 1 is the only challenged independent claim, and is reproduced
`below.
`
`1. A magnetic tape comprising:
`a plurality of servo bands on each of which is written a
`different servo signal for tracking control of a magnetic
`head, and
`data is embedded in each servo signal for specifying the
`servo band corresponding to the data,
`wherein reading the data enables a servo read head of the
`magnetic head to specify on which servo band the servo
`read head is currently positioned without referring to
`other servo bands.
`Ex. 1001, 9:27–36.
`
`A.
`
`II. ANALYSIS
`Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art at the
`time of the ’805 patent would have had “a bachelor’s degree in electrical
`engineering, mechanical engineering, physics, materials science (or a related
`field), plus two years of experience working with magnetic storage systems
`or media,” an advanced degree in any of the recited fields “either with an
`emphasis in magnetic storage technology or equivalent experience working
`with magnetic storage systems, or media,” or “work experience equivalent to
`the prior qualifications.” Pet. 16–17.
`Patent Owner’s declarant, Dr. Messner, opines that a person having
`ordinary skill in the art would have had “a bachelor’s degree in electrical
`engineering, mechanical engineering, or physics, or an equivalent education
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`or level of knowledge, and one year of industrial experience relating to
`magnetic information storage and retrieval,” a master’s degree in the same
`fields, “or an equivalent level of knowledge based on education and/or
`industrial experience relating to magnetic information storage and retrieval.”
`Ex. 2003 ¶ 25.
`We do not observe meaningful differences between the parties’
`assessment of a person having ordinary skill in the art. We further note that
`both assessments appear consistent with the level of ordinary skill in the art
`at the time of the invention as reflected in the prior art in this proceeding.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining
`that specific findings regarding ordinary skill level are not required “where
`the prior art itself reflects an appropriate level and a need for testimony is
`not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
`F.2d 158, 163 (Fed. Cir. 1985))). Our determination regarding the
`patentability of the challenged claims does not turn on the differences
`between these definitions. We adopt Petitioner’s assessment, but note that
`our conclusions would be the same under Dr. Messner’s assessment.
`Claim Interpretation
`B.
`We interpret claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016)5; see Cuozzo
`
`
`5 The Office recently changed the claim construction standard applicable to
`an inter partes review. See Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018). The rule changing the claim
`construction standard, however, does not apply to this proceeding because
`Petitioner filed its Petition before the effective date of the final rule, i.e.,
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`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with
`the broadest reasonable construction, claim terms are presumed to have their
`ordinary and customary meaning as understood by a person of ordinary skill
`in the art in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`For the purposes of the Decision Denying Institution (Paper 9, 7–8)
`and the Institution Decision, we determined that, based on the record at that
`time, no claim term required express construction. We see no reason to
`modify that determination in light of the record developed during trial.
`C.
`Principles of Law
`To prevail on its challenges to the patentability of the claims, a
`petitioner must establish facts supporting its challenge by a preponderance
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter
`partes review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`
`
`November 13, 2018. Id. at 51,340 (rule effective date and applicability
`date), 51,344 (explaining how the Office will implement the rule).
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`each claim”)). This burden of persuasion never shifts to the patent owner.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–
`79 (Fed. Cir. 2015) (discussing the burdens of persuasion and production in
`inter partes review).
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). Although the elements must be arranged in the same way as in the
`claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity
`of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed.
`Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious to a person
`having ordinary skill in the art to which the subject matter pertains. KSR
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) objective evidence of nonobviousness. See Graham
`v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`D. Overview of the Prior Art
`1.
`Hennecken
`Hennecken is directed to “servo tracks written on magnetic tape to
`assist tape access machines in locating and positioning tape access heads on
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`the magnetic tape and to otherwise access the magnetic tape.” Ex. 1005,
`1:8–11. In a section of the specification entitled “Background Art,”
`Hennecken states that “[i]n order to increase the accuracy of positioning the
`tape head relative to the tape, servo tracks or stripes may be used to provide
`one or more reference points,” and that “[o]ne or more servo tracks may be
`used depending upon the number of data tracks which are placed upon the
`tape, the number of tracks simultaneously accessed, and the like.” Id. at
`1:40–45. Hennecken then describes “[o]ne type of servo pattern allowing
`the positions of a servo read element across the width of a servo track” that
`“uses two sets of low frequency transitions in each servo frame,” where
`“[t]he two sets of low frequency transitions are recorded at a relative angle
`to each other at a given transverse location across the servo track.” Id. at
`1:51–56. “Thus, a time difference between accessing transitions in the first
`set and accessing transitions in the second set provides an indication of the
`servo read element location across the width of the servo track.” Id. at 1:56–
`59.
`
`The Background Art section of Hennecken further explains that
`information other than fine transverse location can be encoded on the servo
`track, such as a longitudinal value that indicates position of the access head
`along the tape length. Id. at 1:60–65. This additional information can be
`encoded by “vary[ing] the spacing between one or more low frequency
`transitions in each set of transitions,” for example, by moving the second
`transition in each set closer to the first transition to indicate a binary one, or
`spacing the second transition equally between the first and third transitions
`to indicate a binary zero. Id. at 1:65–2:4.
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`
`Albrecht II
`2.
`Albrecht II is directed to “timing based servos for longitudinal
`recording.” Ex. 1003, 1:12–13. In particular, Albrecht II describes “a
`magnetic tape media having data information superimposed on prerecorded
`track following servo information, which data information may comprise
`longitudinal addressing or tachometer information.” Id. at 2:27–30.
`Figure 4 of Albrecht II is reproduced below.
`
`
`Figure 4 “is a representation of a combined servo and encoded data pattern
`in accordance with an embodiment” described in Albrecht II. Id. at 3:33–35.
`A first set of stripes (or “chevrons”) extends across the width of the servo
`track, having a first orientation slanted with respect to the longitudinal
`direction of the track. Id. at 5:33–35. A second set of stripes, or chevrons,
`also extends across the width of the servo track, slanted opposite that of the
`first set of chevrons. Id. at 5:36–38. Each chevron in the first set and its
`corresponding chevron in the second set comprises a pair of transitions
`separated by predetermined distance A0, A1, A2, and A3. Id. at 5:39–41. The
`transitions are separated by predetermined distance B0, B1, B2, and B3. Id. at
`5:65–65. These “A and B intervals are used to generate a position signal
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`that is independent of tape speed,” where “only the A intervals, which are
`between chevrons at the opposite sides of the diamond-shaped patterns,
`hereinafter, the ‘diamonds,’ vary with transverse position” and “[t]he B
`intervals are constant, regardless of position.” Id. at 5:65–6:3. In this way,
`“the position signal is generated by timing the intervals and calculating their
`ratio.” Id. at 6:3–5. To encode data into the servo track, “ones of the
`transitions are shifted longitudinally with respect to the tape,” and “data may
`be encoded in any manner so long as the servo timing remains correct.” Id.
`at 6:13–15.
`Albrecht II teaches that “[a] key is that the chevrons be shifted in pairs
`in the same or opposite directions or in such a manner that any changes in
`the pattern offset one another from a servo timing standpoint” so that “data
`can be encoded into the location of the chevron patterns without impacting
`the performance of the servo.” Id. at 7:30–36. “The encoded data may be
`used to encode address information, such as tachometer information, or
`sector identification number, or to encode other information about the
`cartridge, such as length of tape, manufacturer, media type, etc.” Id. at
`7:36–40.
`Figure 30 of Albrecht II is reproduced below.
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`Figure 30 “is a schematic and block diagram representation of a multi-track
`servo and data system” described in Albrecht II. Id. at 4:25–27. Duplicate
`servo tracks 27 and 27ʹ are read by servo heads 26 and 26ʹ of head assembly
`24ʹ. Id. at 14:54–55. “The servo tracks are read simultaneously and provide
`a more accurate positioning of the data head 28a and 28b by servoing the
`servo heads over both servo track centerlines 30 and 30ʹ, whose average or
`combined position is more accurate than that of a single head.” Id. at 14:55–
`60. Signal decoders 36 and 36ʹ may be identical to each other, and may
`provide additional information by employing the identical superimposed
`data decoding arrangement. Id. at 14:60–63. For example, Albrecht II states
`that “servo track 27 may provide addressing data, and servo track 27ʹ may
`provide a description of the tape which may be employed for indexing, such
`as the tape length, or may indicate the type of media, the manufacturer, etc.”
`Id. at 14:63–67.
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`Dugas
`3.
`Dugas “relates to a low inductance, high efficiency sub-gap, surface
`thin film magnetic recording head and a method of fabricating the same.”
`Ex. 1006, 4:28–30. Dugas describes a “multi-channel head having five
`independent channels,” wherein “each channel can be individually triggered
`and caused to write, independent of the other four channels.” Id. at 9:17–20.
`E.
`Anticipation by Hennecken
`Petitioner contends that claims 1–3 and 10 of the ’805 patent are
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Hennecken.
`Pet. 20–37; Pet. Reply 2–25. Patent Owner disagrees with Petitioner’s
`assertions. PO Resp. 31–58.
`Petitioner asserts, with supporting testimony from Dr. Albrecht, that
`the Background Art section of Hennecken teaches all of the elements of
`independent claim 1. Pet. 22–25, 33–35. For example, Petitioner asserts
`that Hennecken discloses “a plurality of servo bands on each of which is
`written a different servo signal for tracking control of a magnetic head”
`because it explains, in the Background Art section, “that it was known to
`encode the servo track number into conventional timing-based servo patterns
`recorded on each servo track to provide co[a]rse transverse location of the
`servo read head across the width of magnetic tape.” Id. at 23.
`In particular, Petitioner points to two statements in the Background
`Art of Hennecken: (1) “A servo track may contain information in addition to
`fine transverse location. For example, a servo stripe number may be
`encoded in the servo track for coarse transverse location” (Ex. 1005, 1:60–
`63); and (2) “Fourth, the low frequency pattern is typically written by a
`single current driver, and thus cannot contain any information that varies
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`between the servo tracks, such as a servo stripe number” (id. at 2:17–19).
`Pet. 34. Petitioner asserts that, because “Hennecken uses the terms ‘servo
`track’ and ‘servo stripe’ interchangeably to refer to the servo band on which
`tracking patterns are written,” “one of ordinary skill in the art would
`understand that the ‘servo stripe number’ describes a number that identifies
`the respective servo track.” Id. at 23–24 (citing Ex. 1005, 1:41–49; Ex. 1016
`¶¶ 106–107). Petitioner further asserts that, “[b]y embedding in each servo
`track its respective servo stripe number, each servo track will necessarily
`have a different servo pattern recorded thereon that specifies the respective
`servo track.” Id. at 24 (citing Ex. 1016 ¶¶ 107–108, 175–177).
`Patent Owner responds that “Petitioner relies on nothing more than
`Dr. Albrecht’s interpretation of the Background Art section to import a
`missing claim limitation, i.e., that Hennecken’s reference to ‘a servo stripe
`number’ necessarily means unique servo stripe numbers.” PO Resp. 37.
`Patent Owner argues that “[t]he Background Art section of Hennecken
`mentions the term ‘servo stripe number’ only twice,” and “this scant
`disclosure would not have been understood by a [person having ordinary
`skill in the art] as disclosing that servo stripe numbers are unique.” Id. at 38
`(citing Ex. 1005, 1:61–62, 2:16–19).
`The dispute between the parties, therefore, is whether a person having
`ordinary skill in the art (“POSA”) would have understood the express
`disclosure in the Background Art of Hennecken to teach a servo stripe
`number that uniquely identifies its respective servo track. See Pet. Reply 13
`(“The disputed issue in this trial is how a POSA would have understood this
`express disclosure in Hennecken.” (emphasis omitted)); PO Resp. 34
`(“Petitioner’s argument boils down to an allegation that a POSA would have
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`understood the disclosure of ‘a servo stripe number’ as conveying a unique
`servo stripe number for each servo track.” (emphasis omitted)). Based on
`our review of the record, we determine that Petitioner has not shown
`sufficiently that a person having ordinary skill in the art would have
`understood Hennecken as Petitioner contends.
`Petitioner relies on the testimony of Dr. Albrecht to support its
`contention that a POSA would have understood that Hennecken teaches
`servo stripe numbers that uniquely identify their respective servo tracks. See
`Pet. 23–24 (citing Ex. 1016 ¶¶ 106–108, 175–177). In that regard,
`Dr. Albrecht testifies that a person having ordinary skill in the art would
`have understood that Hennecken’s servo stripe number “describes a number
`that identifies the respective servo track,” and would further have understood
`“that by encoding the servo track number into each servo track, a read
`element can identify the servo track being read without needing to reference
`any other servo track.” Ex. 1016 ¶ 107. Dr. Albrecht further testifies that
`Hennecken points out that the servo stripe number varies
`between servo tracks. [Ex. 1005] at C2:L16–19 (“Fourth, the
`low frequency pattern is typically written by a single current
`driver, and thus cannot contain any information that varies
`between the servo tracks, such as a servo stripe number.”).
`Thus, Hennecken describes providing each servo track with a
`different respective servo stripe number, which necessarily
`enables a servo read element to identify the servo track being
`read without referencing other servo tracks. That is, a servo
`read element need do nothing more than read the unique servo
`stripe number embedded in a servo track to identify it.
`Id. ¶ 108. According to Dr. Albrecht, because “Hennecken discloses a servo
`pattern comprising two sets of low frequency transitions in each servo frame
`of the respective servo track to allow for tracking of the servo read element
`across the width of the servo track into which the servo track number is
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`encoded by” varying the spacing between adjacent transitions to encode a
`zero or a one into each frame, “each servo pattern will be different by virtue
`of having different data encoded therein.” Id. ¶ 177.
`Neither Petitioner nor Dr. Albrecht, however, provide adequate
`explanation or evidence as to why a POSA would have understood
`Hennecken’s characterization of servo stripe numbers as information that
`“varies between the servo tracks” to be disclosing servo stripe numbers that
`uniquely identify their respective servo tracks. See Pet. Reply 3 (“[A] POSA
`would have understood this disclosure as referring to a number that uniquely
`identifies its respective servo track.” (citing Pet. 24–25; Ex. 1016 ¶¶ 107–
`108, 175–177)). Dr. Albrecht merely repeats the disclosures in Hennecken
`and concludes, without further explanation or reference to objective
`evidence, that Hennecken discloses unique servo stripe numbers as claim 1
`requires. See Ex. 1016 ¶¶ 106–108, 175–177. Absent underlying facts or
`data to support Dr. Albrecht’s opinion, Dr. Albrecht’s testimony does not
`persuade us that a POSA would have understood Hennecken’s disclosures as
`Petitioner contends. 37 C.F.R. § 42.65(a) (“Expert testimony that does not
`disclose the underlying facts or data on which the opinion is based is entitled
`to little or no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories,
`Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support
`for an expert opinion “may render the testimony of little probative value in
`[a patentability] determination”).
`Petitioner also directs us to “another portion” of Hennecken’s
`disclosure, which Petitioner argues “explicitly describes the servo track
`number as information different for each servo stripe.” Pet. Reply 3 (citing
`Ex. 1005, 9:23–27) (emphasis omitted). Specifically, Petitioner points to the
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`Detailed Description of the Invention section of Hennecken, where
`Hennecken describes high frequency transition writing according to an
`embodiment of Hennecken’s invention as follows:
`If high frequency field 66 includes servo data indicating servo
`track number or other gross transverse positioning information,
`each third write gap 162 must have a separate high frequency
`driver 192 since at least a portion of the high frequency signal
`written will be different amongst the third write gaps 162.
`Ex. 1005, 9:23–27. Based on this disclosure, Petitioner argues that
`“Hennecken is explicit that when servo track numbers are embedded in the
`servo tracks, each servo track number is different.” Pet. Reply 4; see
`Ex. 1016 ¶ 180. Petitioner further argues that, at his deposition,
`“Dr. Messner conceded that Hennecken’s plain language ‘says’ the servo
`stripe number is different for each servo track.” Pet. Reply 5 (citing
`Ex. 1017, 190:5–16) (emphasis omitted).
`As was the case with Petitioner’s argument based on the disclosures in
`the Background Section of Hennecken, Petitioner does not adequately
`explain why a POSA would have understood Hennecken to be disclosing
`servo stripe numbers that uniquely identify their respective servo stripes.
`Dr. Albrecht again merely repeats the disclosures in Hennecken and
`concludes, without further explanation or reference to objective evidence,
`that Hennecken discloses unique servo stripe numbers as claim 1 requires.
`Ex. 1016 ¶ 180.
`Moreover, we disagree with Petitioner’s assertion that Dr. Messner’s
`testimony that Hennecken says that a different driver is used when there is
`different information written to the servo tracks is a concession that
`Hennecken discloses servo stripe numbers that uniquely identify the servo
`tracks. See Ex. 1017, 190:5–16. Instead, Dr. Messner’s testimony raises the
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`possibility that “different information” could mean “merely enough
`[information] needed to identify the servo band,” which is not necessarily
`unique to the respective servo tracks. Id. at 190:17–23; see also Ex. 2003
`¶ 94 (Dr. Messner testifying that U.S. Patent App. Pub. No. 2004/0032685
`(Ex. 1007, “Trabert”) “informs my opinion of how a POSA would have
`understood coarse transverse positioning disclosed in Hennecken,” and that
`Trabert discloses “servo bands that are adjacent to the data bands are written
`with different, but not unique, servo patterns that, when taken in
`combination, provide for the unique identification of the data band be