Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: December 18, 2017
`
`
`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.
`
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing
`Institution of Inter Partes Review
`37 C.F.R. §§ 42.71(d) and 42.108
`
`

`

`IPR2017-00618
`Patent 7,355,805 B2
`
`
`INTRODUCTION
`On August 22, 2017, Sony Corporation (“Petitioner”) filed a Request
`for Rehearing (Paper 10, “Rehearing Request” or “Req. Reh’g”) of our
`Decision (Paper 9, “Decision” or “Dec.”) denying institution of an inter
`partes review of claims 1–3 and 10 of U.S. Patent No. 7,355,805 B2
`(Ex. 1001, “the ’805 patent”) on the following grounds:
`Reference(s)
`Basis
`Challenged Claims
`Hennecken1
`§ 102(e) 1–3, 10
`
`Hennecken and Albrecht II2
`Hennecken, Albrecht II, and
`Dugas3
`Albrecht II and Hennecken
`
`§ 103(a) 1–3, 10
`
`§ 103(a) 1–3, 10
`
`§ 103(a) 1–3, 10
`
`
`
`According to Petitioner, the Decision misapprehended or overlooked
`evidence and arguments that claims 1–3 and 10 are unpatentable over the
`cited prior art. Req. Reh’g 1. We have reviewed Petitioner’s Rehearing
`Request and carefully considered Petitioner’s arguments. For the reasons
`discussed below, we grant Petitioner’s Rehearing Request and institute an
`inter partes review of claims 1–3 and 10, as described herein.
`
`
`
`
`
`1 U.S. Patent No. 6,710,967 B2, issued March 23, 2004 (Ex. 1005).
`2 U.S. Patent No. 5,930,065, issued July 27, 1999 (Ex. 1003).
`3 U.S. Patent No. 6,496,328 B1, issued December 17, 2002 (Ex. 1006).
`2
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`IPR2017-00618
`Patent 7,355,805 B2
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`ANALYSIS
`A request for rehearing must identify specifically all matters the party
`believes we misapprehended or overlooked, and the place where each matter
`was addressed previously in a motion, opposition, or reply. 37 C.F.R.
`§ 42.71(d). Additionally, Petitioner, as the party challenging the Decision,
`has the burden of showing the Decision should be modified. Id.
`When rehearing a decision on a petition, the Board will review the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined “if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed.
`Cir. 2002) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)).
`Anticipation by Hennecken
`A.
`Petitioner argues that we misapprehended Petitioner’s contention that
`Hennecken anticipates claims 1–3 and 10 as being based on inherency, and
`misapprehended or overlooked Petitioner’s arguments and evidence that
`establishes that a person having ordinary skill in the art would have
`understood Hennecken “to disclose servo bands with servo band numbers
`that uniquely identify them.” Req. Reh’g 1–13. Specifically, Petitioner
`argues that “[t]he Petition demonstrates that a [person having ordinary skill
`in the art] would have understood Hennecken to anticipate claims 1–3 and
`10 because Hennecken discloses the disputed limitation to a [person having
`ordinary skill in the art], not because the disputed limitation is undisclosed
`but inherent in Hennecken.” Id. at 2 (citing Pet. 23–30). According to
`Petitioner, because Hennecken teaches “that ‘a servo stripe number may be
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`Patent 7,355,805 B2
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`encoded in the servo track for coarse transverse location,’ and establishes
`that ‘servo track’ and ‘servo stripe’. . . are synonymous with ‘servo band’ in
`the ’805 patent,” a person having ordinary skill in the art (“POSA”) “would
`understand that the ‘servo stripe number’ describes a number that identifies
`the respective servo track,’ and that embedding a servo stripe number in
`each servo track means that each servo track will have ‘a different servo
`pattern recorded thereon that specifies the respective servo track.’” Id.
`(quoting Pet. 16, 23–24).
`Petitioner does not dispute that Hennecken does not expressly disclose
`in words “a plurality of servo bands on each of which is written a different
`servo signal for tracking control of a magnetic head” as recited in
`independent claim 1. See Req. Reh’g 8 (stating that the Petition alleges that
`this limitation “is met by the disclosure of Hennecken as understood by a
`POSA” (citing Pet. 24)). As Petitioner notes, Hennecken can be anticipating
`if a POSA would have understood Hennecken as disclosing the claimed
`plurality of servo bands, and could have combined Hennecken’s disclosure
`with his own knowledge to make the claimed invention. Id. at 8–9; see, e.g.,
`Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000).
`We are persuaded that we misapprehended Petitioner’s anticipation
`rationale set forth in the Petition as being based on inherent anticipation.
`We find that the Petition at pages 24–25 (and the cited testimony in the
`Declaration of Dr. Thomas Albrecht (Ex. 1016, “Albrecht Declaration”))
`sets forth Petitioner’s argument that a POSA would have understood
`Hennecken to be disclosing different servo stripe numbers on each servo
`track. Because we denied institution of inter partes review with respect to
`claims 1–3 and 10 based on this misapprehension, we grant Petitioner’s
`
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`Patent 7,355,805 B2
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`Rehearing Request with respect to this contention. Consequently, we now
`analyze Petitioner’s challenge that Hennecken anticipates claims 1–3 and 10
`of the ’805 patent.4
`Petitioner relies on the Albrecht Declaration to support its argument
`that a POSA would have understood Hennecken to disclose “a plurality of
`servo bands on each of which is written a different servo signal for tracking
`control of a magnetic head.” See Pet. 23–25 (citing Ex. 1016 ¶¶ 106–108,
`157, 163, 175–177, 182, 186, 187). For example, Dr. Albrecht testifies that
`a POSA would have understood that Hennecken’s servo stripe number
`“describes a number that identifies the respective servo track,” and would
`further understand “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:
`In particular, Hennecken points out that the servo stripe number
`varies between servo tracks. Id. 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 that read the unique servo stripe number embedded in a
`servo track to identify it.
`Id. ¶ 108.
`
`
`4 We provided an overview of the ’805 patent and Hennecken in our
`Decision. Dec. 2–6, 8–9.
`
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`Patent 7,355,805 B2
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`
`Relying on the Declaration of Dr. William C. Messner (Ex. 2003,
`“Messner Declaration”), Patent Owner argues that, as of the filing date of
`the ’805 patent, “it was well-known to a POSA that coarse (or gross)
`transverse positioning did not require unique servo signals” and “a POSA
`would have understood that Hennecken does not require each servo signal
`for tracking control, or the data embedded therein, to be unique.” Prelim.
`Resp. 30–31 (citing Ex. 2003 ¶ 91). Patent Owner further argues that, “to
`the extent that Hennecken can be said to describe servo stripe numbers that
`vary among the servo tracks at all, the reference is, at best, ambiguous on
`whether the servo stripe numbers necessarily differ among all the servo
`tracks.” Id. at 32.
`At this stage of the proceeding, Petitioner sets forth evidence in the
`Albrecht Declaration that a POSA would have understood Hennecken to be
`disclosing “a plurality of servo bands on each of which is written a different
`servo signal for tracking control of the magnetic head” as required by
`independent claim 1, and Patent Owner provides evidence in the Messner
`Declaration that a POSA would have understood that Hennecken does not
`teach that a different servo signal is written on each servo band for tracking
`control. See, e.g., Pet. 22–25; Ex. 1016 ¶¶ 105–113, 174–177; Prelim. Resp.
`29–33; Ex. 2003 ¶¶ 88–98. This conflicting expert testimony creates a
`genuine issue of material fact regarding how a POSA would have
`understood Hennecken. For purposes of deciding whether to institute an
`inter partes review, we must view any issues of material fact created by
`testimonial evidence in the light most favorable to Petitioner. See 37 C.F.R.
`§ 42.108(c). Thus, for purposes of this Decision, we must resolve the
`
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`IPR2017-00618
`Patent 7,355,805 B2
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`dispute between Dr. Albrecht and Dr. Messner regarding how a POSA
`would have understood Hennecken in Petitioner’s favor.
`Patent Owner raises other arguments indicating potential flaws in
`Petitioner’s arguments or disputing Petitioner’s interpretation of the
`disclosures in Hennecken. For example, Patent Owner argues that
`Hennecken does not suggest “embedding unique data in each servo signal to
`specify the servo band, which would have been a significant departure from
`the known methods of band identification.” Prelim. Resp. 34 (citing
`Ex. 2003 ¶ 101). We have considered these and the other arguments that
`Patent Owner raises, and although they cast doubt on certain elements of
`Petitioner’s contentions and create a genuine issue of material fact, we are
`persuaded, based on the current record, that Petitioner’s discussion of the
`teachings of Hennecken, and the explanations in the Petition and the
`Albrecht Declaration, are sufficient to establish a reasonable likelihood that
`Petitioner would prevail in demonstrating that claim 1 is unpatentable as
`anticipated by Hennecken. We have considered Petitioner’s arguments and
`evidence with respect to dependent claims 2, 3, and 10 (see Pet. 25–30, 35–
`37; Ex. 1016 ¶¶ 191–209), and are likewise persuaded, on this record, that
`Petitioner has established a reasonable likelihood that it would prevail as to
`those claims as well. The parties will have the opportunity to further
`develop these facts and arguments during trial, and the Board will evaluate
`the fully-developed record at the close of the evidence.
`Obviousness Grounds
`B.
`Petitioner also requests rehearing of our Decision denying institution
`on the grounds that claims 1–3 and 10 would have been obvious over the
`combined teachings of Hennecken and Albrecht II (Ground 2), Hennecken,
`
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`IPR2017-00618
`Patent 7,355,805 B2
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`Albrecht II, and Dugas (Ground 3), and Albrecht II and Hennecken (Ground
`4). Req. Reh’g 15. Petitioner argues that, for Grounds 2–4, the Petition
`alleges that the “plurality of servo bands on each of which is written a
`different servo signal for tracking control of a magnetic head” limitation “is
`asserted to be met by Hennecken” “for the same reasons as in Ground 1”
`(i.e., anticipation by Hennecken). Id. Petitioner, therefore, requests
`rehearing of Grounds 2–4 for the same reasons as it did with respect to
`Ground 1 because “[t]he Decision denied institution of these grounds for the
`same reasons as Ground 1.” Id. (citing Dec. 16–21).
`With respect to Ground 2, Petitioner specifically points to page 42 of
`the Petition, where Petitioner argues that Hennecken “discloses each
`limitation recited in claims 1 and 2 (see Ground 1 above), and the
`combination of Hennecken and Albrecht II disclose each limitation recited
`in claims 1 and 2 for at least the same reasons under a first basis (Basis 1).”
`Pet. 42. Thus, we understand Petitioner’s Request for Rehearing to be
`directed to Basis 1.5 We stated in the Decision that,
`[i]n the claim chart provided in the Petition, for “Basis 1”
`Petitioner relies solely on the disclosures in Hennecken (and the
`arguments made with respect to Petitioner’s contention that
`Hennecken anticipates claims 1 and 2) to support its contention
`that the combination of Hennecken and Albrecht II discloses all
`of the elements of claims 1 and 2. We already determined that
`Petitioner did not demonstrate a reasonable likelihood of
`showing that claims 1 and 2 are anticipated by Hennecken. For
`the same reasons, Petitioner has not established a reasonable
`
`
`5 In the Petition, Petitioner also alleges a second basis (“Basis 2”) of
`obviousness based on Hennecken and Albrecht II. See Pet. 42–52. We
`denied institution on Basis 2 for reasons other than whether Hennecken
`discloses the claimed plurality of servo bands. Dec. 17–20.
`
`
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`likelihood of prevailing in showing that claim 1 (and claim 10
`that depends therefrom) and claim 2 (and claim 3 that depends
`therefrom) would have been obvious over the combined
`teachings of Hennecken and Albrecht II under Basis I.
`Dec. 16–17 (citing Pet. 48–50). Having now determined that Petitioner has
`established a reasonable likelihood of prevailing in showing that claims 1–3
`and 10 are anticipated by Hennecken, for the same reasons, we determine
`that Petitioner also has established a reasonable likelihood of showing that
`claims 1–3 and 10 would have been obvious over the combined teachings of
`Hennecken and Albrecht II under Basis 1.
`Relying on Dr. Albrecht’s testimony, Petitioner provides several
`reasons as to why a POSA would have been motivated to combine the
`teachings of Hennecken and Albrecht II. Pet. 39–41; Ex. 1016 ¶¶ 231–237.
`In the Preliminary Response, Patent Owner argues that “a POSA would not
`have been motivated to use the techniques of embedding information in the
`low frequency transitions, as disclosed in Albrecht II, in order to embed a
`servo stripe number, as disclosed in Hennecken for the simple reason that
`Hennecken plainly teaches away from such a combination.” Prelim. Resp.
`38. Patent Owner relies on Dr. Messner’s testimony to support its
`contentions. Id. at 38–41; Ex. 2003 ¶¶ 109–116.
`The conflicting expert testimony creates a genuine issue of material
`fact regarding whether a POSA would have been motivated to combine the
`teachings of Hennecken and Albrecht II as Petitioner proposes. For
`purposes of this Decision, we must resolve this dispute between Dr. Albrecht
`and Dr. Messner in Petitioner’s favor. See 37 C.F.R. § 42.108(c). The
`parties will have the opportunity to further develop these facts and
`
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`arguments during trial, and the Board will evaluate the fully-developed
`record at the close of the evidence.
`With respect to Ground 3, Petitioner draws our attention to pages 54–
`56 of the Petition, where Petitioner argues that the combination of
`Hennecken, Albrecht II, and Dugas meets the limitations of claims 1–3 and
`10 for the same reasons as set forth for Ground 2, Bases 1 and 2. Req.
`Reh’g 15. Based on the arguments in the Petition and the Preliminary
`Response, and the evidence of record, and for the reasons set forth above
`with respect to Grounds 1 and 2, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing in showing that claims 1–
`3 and 10 would have been obvious over the combined teachings of
`Hennecken, Albrecht II, and Dugas (as relying on the reasoning in Ground 2,
`Basis 1 only).
`In Ground 4, Petitioner alleges that claims 1–3 and 10 would have
`been obvious over the combined teachings of Albrecht II and Hennecken.
`Pet. 57–59. As set forth in the claim chart, Petitioner relies on the
`disclosures set forth with respect to Ground 2, Basis 2 to support its
`contentions with respect to the combination of Albrecht II and Hennecken.
`Id. at 59. Petitioner does not explain how its challenge to claims 1–3 and 10
`based on the combined teachings of Albrecht II and Hennecken differs from
`its challenge to claims 1–3 and 10 based on the combined teachings of
`Hennecken and Albrecht II (Ground 2). Moreover, we do not understand
`Petitioner’s Request for Rehearing to be directed to Ground 2, Basis 2,
`which we denied for reasons other than whether Hennecken discloses the
`claimed plurality of servo bands. See Dec. 17–20. Accordingly, we do not
`revisit our Decision with respect to Ground 4.
`
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`CONCLUSION
`For the foregoing reasons, we grant Petitioner’s Request for
`Rehearing and determine, based on the record before us, that Petitioner has
`demonstrated a reasonable likelihood that it would prevail on its challenge to
`claims 1–3 and 10 of the ’805 patent.
`
`
`ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the Petitioner’s Request for Rehearing (Paper 10) is
`granted;
`FURTHER ORDERED that an inter partes review is granted as to
`claims 1–3 and 10 of the ’805 patent on the following grounds:
`Whether claims 1–3 and 10 are unpatentable under 35 U.S.C. § 102(e)
`as anticipated by Hennecken;
`
`Whether claims 1–3 and 10 are unpatentable under 35 U.S.C. § 103(a)
`as obvious over the combined teachings of Hennecken and Albrecht II
`(Basis 1); and
`Whether claims 1–3 and 10 are unpatentable under 35 U.S.C. § 103(a)
`as obvious over the combined teachings Hennecken, Albrecht II, and Dugas
`(Basis 1);
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this Decision; and
`
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`FURTHER ORDERED that no ground other than that specifically
`granted above is authorized for an inter partes review as to the claims of the
`’805 patent.
`
`
`
`
`PETITIONER:
`Richard F. Giunta
`Randy J. Pritzker
`Marc S. Johannes
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`MJohannes-PTAB@wolfgreenfield.com
`
`
`
`PATENT OWNER:
`
`Eliot D. Williams
`Robert C. Scheinfeld
`Neil P. Sirota
`Eric J. Faragi
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`robert.scheinfeld@bakerbotts.com
`neil.sirota@bakerbotts.com
`eric.faragi@bakerbotts.com
`
`
`
`
`12
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