Trials@uspto.gov
`571-272-7822
`
`Paper No. 8
`
` Entered: July 10, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORP.,
`Petitioner,
`
`v.
`
`FUJIFILM CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00625
`Patent 6,641,891 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`

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`Case IPR2017-00625
`Patent 6,641,891 B2
`
`
`I. INTRODUCTION
`Sony Corporation (“Petitioner”) filed a Petition seeking inter partes
`review of claims 1, 4–9, 11, and 14 of U.S. Patent No. 6,641,891 B2
`(Ex. 1001, “the ’891 patent”). Paper 2 (“Pet.”). Fujifilm Corporation
`(“Patent Owner”) filed a Patent Owner Preliminary Response to the Petition.
`Paper 6 (“Prelim. Resp.”). After considering the Petition and the
`Preliminary Response, we determine that Petitioner has not established a
`reasonable likelihood of prevailing with respect to any of the challenged
`claims of the ’891 patent. See 35 U.S.C. § 314(a). Accordingly, we deny
`the Petition, and do not institute inter partes review.
`II. BACKGROUND
`A. Related Proceedings
`The parties indicate that the ’891 patent is involved in Certain
`Magnetic Data Storage Tapes and Cartridges Containing the Same (ITC
`Investigation No. 337-TA-1012). Pet. vii; Paper 4, 2. Petitioner further
`identifies the following litigation as related: Sony Corporation v. Fujifilm
`Holdings Corporation, Civil Action No. 1:16-cv-05988-PGG (S.D.N.Y).
`Pet. vii.
`
`B. The ’891 Patent
`The ’891 patent, titled “Magnetic Recording Medium,” issued on
`Nov. 4, 2003. Ex. 1001, [54], [45]. The ’891 patent discloses “particulate
`high-density magnetic recording media” comprising “a magnetic layer, an
`essentially nonmagnetic lower layer, and an uppermost layer comprising a
`ferromagnetic powder in the form of a ferromagnetic metal powder,
`hexagonal ferrite powder, or the like.” Id. at 1:5–11. To overcome
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`limitations and problems in the area of higher-density recording, the ’891
`patent states:
`layer and heightened
`the magnetic
`thinning of
`further
`dispersion of ferromagnetic powder were examined to achieve a
`magnetic recording medium corresponding to high density
`recording. As a result, it was determined that, as shortening
`recording wavelength, the magnetic particles aggregate and
`behave like a single large magnetic member (magnetic cluster),
`causing problems. That is, as recording is conducted at
`increasingly shorter wavelengths and the magnetic layer is
`made ever thinner, magnetic clusters make their appearance.
`As a result, there are problems in that the medium noise
`increases, causing the [signal-to-noise (“S/N”)] and [carrier-to-
`noise (“C/N”)] ratios to drop.
`Id. at 3:16–27.
`According to the ’891 patent, the inventors discovered that it was
`possible to achieve good high-density characteristics by limiting the mean
`size of the magnetic clusters to a certain range. Id. at 3:37–42. The ’891
`patent teaches that when average cluster size increases, medium noise
`increases, but when magnetic clusters are eliminated entirely,
`electromagnetic characteristics deteriorate due to dispersion. Id. at 4:44–50.
`Therefore, the ’891 patent discloses that “the average size of magnetic
`clusters during DC erasure is equal to or higher than 0.5×104 nm2 and less
`than 5.5×104 nm2.” Id. at 4:42–44.
`The ’891 patent also teaches improving the performance of the
`magnetic recording media by maintaining (1) the thickness of the magnetic
`layer between 0.01 and 0.15 µm, (2) the coercivity of the magnetic layer
`above 159 kA/m (2000 Oe), and (3) the mean particle size of the
`ferromagnetic powder at a value of less than about 0.25 µm. Id. at 3:44–58,
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`4:27–63. Improvements include high S/N or C/N ratios and suppression of
`medium noise. Id. at 31:26–28.
`
` The ’891 patent discloses several embodiments of the invention
`disclosed therein and comparative examples, in the form of magnetic tapes
`and disks, and provides tables comparing measured properties of each. Id. at
`22:39–28:24, Tables 2, 3, 29:50–31:35. The measured properties include the
`thickness of the magnetic layer, coercivity of the magnetic layer, magnetic
`cluster size, S/N ratio (for magnetic disks), and C/N ratio (for magnetic
`tapes). Id. at col. 28, Tables 2, 3. The ’891 patent sets forth procedures for
`measuring these properties, and states that a S/N ratio equal to or greater
`than 20 db and a C/N ratio equal to or greater than 0.0 db are both
`considered “good.” Id. at 29:1–49.
`C. Challenged Claims
`Petitioner challenges claims 1, 4–9, 11, and 14 of the ’891 patent.
`Independent claim 1 is illustrative, and is reproduced below:
`1. A magnetic recording medium, comprising:
`an essentially nonmagnetic lower layer; and a magnetic
`layer comprising a ferromagnetic powder and a binder,
`the magnetic layer located over the lower layer,
`wherein said magnetic layer has a thickness ranging from
`0.01 to 0.15 μm and a coercivity equal to or higher than
`159 kA/m, and the ferromagnetic particles contained in
`the ferromagnetic powder have a size less than 0.15 μm,
`and an average size of magnetic cluster at DC erase is
`equal to or higher than 0.5×104 nm2 and less than 5.5×104
`nm2, and wherein the essentially non-magnetic lower
`layer has either no magnetic properties or magnetic
`properties to a degree not affected by recording
`information to the magnetic layer.
`Id. at 31:39–52.
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`D. References
`Petitioner relies on the following references:
`Yamazaki et al., U.S. Patent No. 6,017,605, issued Jan. 25, 2000
`(“Yamazaki,” Ex. 1002).
`S.M. McCann et al., Noise characterisation of barium ferrite
`dispersions, J. MAGNETISM & MAGNETIC MATERIALS 193, 366–369
`(1999) (“McCann,” Ex. 1003).
`M. Takahashi et al., The Dependence of Media Noise on the
`Magnetic Cluster Size for Co Based Thin Film Media Fabricated
`under Ultra Clean Sputtering Process, IEEE TRANS. ON
`MAGNETICS Vol. 4, No. 4, 1573–1575 (1998) (“Takahashi,” Ex.
`1004).
`Petitioner also relies on the Declaration of George A. Saliba.
`Ex. 1006.
`
`E. The Asserted Grounds
`Statutory Basis
`§ 102
`§ 103
`
`Claims Challenged
`1, 4–7, 11, and 14
`1, 4–9, 11, and 14
`
`§ 103
`
`1, 4–9, 11, and 14
`
`Reference(s)
`Yamazaki
`Yamazaki
`Yamazaki, McCann,
`Takahashi
`
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Absent a special definition for a claim term being set forth in the
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`specification, claim terms are given their ordinary and customary meaning as
`would be understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner offers a proposed construction for “a size less than 0.15
`μm” and “an average size of magnetic cluster at DC erase.” Pet. 9–12. For
`purposes of this Decision, it is necessary to address only the construction of
`“an average size of magnetic cluster at DC erase.” See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”)
`The parties agree that the ’891 patent defines “magnetic clusters” as
`aggregates of magnetic particles that behave like a single large magnetic
`member. Pet. 10 (citing Ex. 1001, 3:20–22); Prelim. Resp. 10 (citing
`Ex. 1001, 3:21–22). The parties also agree that the ’891 patent includes a
`section labeled “Measurement of Magnetic Cluster Size,” which describes a
`technique for determining the average size of magnetic clusters using a
`magnetic force microscope (“MFM”) image. Pet. 10–11 (citing Ex. 1001,
`29:36–49); Prelim. Resp. 11–12 (citing Ex. 1001, 29:35–49).
`Petitioner argues that this disclosure in the ’891 patent provides “one
`non-limiting technique” for determining the average size of magnetic
`clusters. Pet. 11. Therefore, Petitioner contends that the broadest reasonable
`interpretation of “an average size of magnetic cluster at DC erase” includes
`at least a recording medium that has the claimed average cluster size at DC
`erase when measured using the specific technique described in the
`Specification. Id. Petitioner contends that no further construction of the
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`term is necessary, as it would not be determinative for any ground since
`“[a]ll of the grounds relied upon herein illustrate that the claimed average
`cluster size at DC erase is met by media where the average cluster size at DC
`erase is measured using precisely the same technique described in the
`specification.” Id. at 11–12.
`Patent Owner argues that “based on the explicit claim language and
`intrinsic support from the specification, the broadest reasonable
`interpretation of ‘average size of magnetic cluster at DC erase’ refers to the
`average surface area of clusters shown in an MFM image of the magnetic
`medium when the medium has been magnetically saturated.” Prelim. Resp.
`12 (citing Ex. 2002 ¶¶ 46–47). Patent Owner argues in favor of an express
`construction because Petitioner’s approach “fails to resolve whether the cited
`references disclose or suggest” the “average size of magnetic cluster at DC
`erase” required by the claims. Id. at 13.
`It is clear from the present record that both parties agree that the
`phrase “an average size of magnetic cluster at DC erase” includes at least
`magnetic clusters having an average size falling within the claimed range
`when measured using the method set forth in the Specification. Although
`Patent Owner argues that Petitioner’s approach does not resolve the question
`of whether the cited references disclose or suggest the magnetic cluster
`limitation, Patent Owner also contends that the prior art fails to disclose or
`suggest “any way” to measure an average magnetic cluster size. Id. In view
`of this, and Petitioner’s representation that the claims are unpatentable under
`each ground when the claimed average cluster size at DC erase is measured
`using the specific technique described in the Specification, we agree with
`Petitioner that we do not need to construe the phrase, beyond stating that it
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`includes values determined using the method expressly set forth in the
`Specification.
`
`
`B. References
`i. Yamazaki (Ex. 1002)
`Yamazaki discloses a magnetic recording medium capable of high
`density recording, which comprises a magnetic layer containing a
`ferromagnetic metal fine powder or a hexagonal ferrite fine powder, on a
`substantially nonmagnetic lower layer. Ex. 1002, 1:4–14. Yamazaki
`explains that protrusions on the surface of the magnetic layer can impact the
`durability and noise characteristics of the magnetic recording media. Id. at
`2:9–50. To achieve an inexpensive magnetic recording medium with
`excellent electromagnetic characteristics, reduced noise, and superior high
`density recording characteristics, Yamazaki teaches that
`the surface of the magnetic recording layer has not more than
`100 protrusions having a height of 30 nm or more per 900 μm2
`measured using an atomic force microscope (AFM), the
`magnetization reversal volume of said magnetic layer is from
`0.1×10-17 to 5×10-17 ml, and the coercive force of the magnetic
`layer is 2,000 Oe or more.
`Id. at 3:7–13. Yamazaki discloses various ferromagnetic powders and
`preparation methods used to manufacture exemplary magnetic tapes and
`disks. Id. at 24:65–28:46. Yamazaki also evaluates several properties of
`these magnetic recording media, including coercivity, S/N ratio, and
`enduring time (i.e., durability), and provides the results of the evaluations in
`Table 2 (for magnetic disks) and Table 3 (for magnetic tapes). Id. at 28:47–
`31:38.
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`ii. McCann (Ex. 1003)1
`McCann is directed to a study involving the use of noise
`characteristics to observe structural changes in barium ferrite dispersions
`during the milling process. Ex. 1003, 366. McCann states that barium
`ferrite’s small particle size and high coercivity give it potential as a “high
`density archival medium.” Id. However, “[o]ne feature which prevents its
`introduction is the tendency for platelet particles to stack. This reduces the
`advantage of small particle size and generates large noise sources — stacks
`behave like large acicular particles.” Id. (citation omitted). McCann’s test
`results show “a general reduction in noise with milling time consistent with
`the break up of particle agglomerates.” Id. at Abstract. McCann further
`explains that “changes in the spectra as milling progressed and an increase in
`noise at certain frequencies were attributed to the formation of stacks as
`particles became more mobile.” Id.; see also id. at 369 (noting a general
`decrease in noise and agglomerates with milling time and a build up of
`stacks for longer milling times).
`
`iii. Takahashi (Ex. 1004)
`Takahashi presents a quantitative discussion of media noise
`performance “in connection with magnetic microstructure for Co based thin
`film media fabricated under Ultra Clean (UC) process.” Ex. 1004, Abstract.
`Takahashi discloses using MFM images to determine magnetic cluster size,
`
`
`1 We are not persuaded by Patent Owner’s arguments that Petitioner has
`failed to satisfy its burden of establishing that McCann and Takahashi are
`prior art to the ’891 patent. Prelim. Resp. 5–8. Both of these references are
`articles contained in scientific journals, each bearing a copyright and
`publication date several years before the filing date of the ’891 patent.
`Ex. 1003, 366 (1999); Ex. 1004, 1573 (1998); Ex. 1001, [22] (2002).
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`which Takahashi defines as “the average interval between maximum and
`minimum peak for the signal profile from MFM image at dc-demagnetized
`state.” Id. at 1574. For the Co based thin film media studied, Takahashi
`concludes that “media noise is mainly improved by the reduction in the
`magnetic cluster size.” Id. at 1575.
`C. Person Of Ordinary Skill in the Art
`Petitioner and Patent Owner offer slightly varying positions regarding
`the level of skill in the art. Pet. 9; Ex. 1006 ¶ 28; Prelim. Resp. 8; Ex. 2002
`¶ 18. Patent Owner argues that its positions in the Preliminary Response
`would be the same under either party’s definition of a person having
`ordinary skill in the art. Prelim. Resp. 8–9. Further, Patent Owner’s
`declarant, Dr. Wang, states that he applied Petitioner’s definition of a person
`of ordinary skill in the art in his analysis. Ex. 2002 ¶ 19. Accordingly, for
`purposes of this Decision, we adopt Petitioner’s definition:
`A [person of ordinary skill in the art] in the field of high density
`magnetic recording media and data storage in the 2001 or 2002
`timeframe would have had: (1) 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; (2) an advanced degree in
`one of the technical fields identified in (1) with an emphasis in
`magnetic storage technology; or (3) work experience equivalent
`to the qualifications in (1) or (2).
`Pet. 9.
`
`
`D. Patent Owner’s Argument Under 35 U.S.C. § 325(d)
`Patent Owner requests that the Board exercise its discretion under
`35 U.S.C. § 325(d) to deny the present petition because the same examiner
`examined both Yamazaki and the ’891 patent, and stated in the Notice of
`Allowance issued during prosecution of the application leading to the ’891
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`patent that the claims “are deemed allowable over the art of record based
`upon the unobvious joint criticality of the claimed parameters as evidenced
`by the results of the specification examples and comparative examples.”
`Ex. 2009, 163; Prelim. Resp. 20.
` Section 325(d) includes permissive language regarding the Board’s
`discretion with respect to institution of inter partes review. Specifically, the
`statute states “the Director may take into account whether, and reject the
`petition or request because, the same or substantially the same prior art or
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d)
`(emphasis added). Here, Patent Owner offers no evidence demonstrating
`that the same or substantially the same prior art or arguments previously
`were presented to the Office in connection with the ’891 patent. As a result,
`we are not persuaded that it is appropriate to exercise our discretion to deny
`the Petition under 35 U.S.C. § 325(d). Accordingly, we now turn to the
`substantive arguments set forth in the Petition.
`E. Claims 1, 4–7, 11, and 14 – Anticipation by Yamazaki
`Petitioner argues that claims 1, 4–7, 11, and 14 are unpatentable under
`35 U.S.C. § 102 as anticipated by Yamazaki. Pet. 13–51.
`According to Petitioner, Yamazaki discloses a magnetic recording
`medium explicitly disclosing all of the limitations of claims 1, 4–7, 11, and
`14 except for the average magnetic cluster size recited in independent claim
`1. Pet. 3, 13. Petitioner acknowledges that Yamazaki is silent with regard to
`average magnetic cluster size, but asserts that Yamazaki inherently discloses
`the average magnetic cluster size recited in claim 1. Id. at 13.
`Petitioner directs us to four specific examples in Yamazaki in support
`of its anticipation argument – disks D1 and D2, and tapes T1 and T2. Id. at
`
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`15. Petitioner contends that each of these examples is a magnetic recording
`medium having a magnetic layer comprising a ferromagnetic powder and a
`binder located over an essentially nonmagnetic lower layer, as required in
`claim 1. Id. at 16 (citing Ex. 1002, Abstract, claim 1, 1:8–13, 3:1–4;
`Ex. 1006 ¶¶ 54–55). Claim 1 further requires the magnetic layer to have a
`thickness ranging from 0.01 to 0.15 µm and a coercivity equal to or higher
`than 159 kA/m. Petitioner asserts that D1, D2, T1, and T2 in Yamazaki each
`have a magnetic layer that is 0.15 µm thick, and have a coercivity value of
`196 kA/m. Id. at 17–18 (citing Ex. 1002, 3:54–56, 4:27–30, 6:12–15,
`27:25–30, 28:9–13, Tables 2, 3; Ex. 1006 ¶¶ 56, 58, 60).
`Claim 1 next requires that “the ferromagnetic particles contained in
`the ferromagnetic powder have a size less than 0.15 μm.” Petitioner
`contends that the powder used to make the magnetic layer of D1, D2, T1,
`and T2 in Yamazaki is comprised of particles having a tabular/plate diameter
`of 0.0335 µm. Id. at 19 (citing Ex. 1006 ¶ 61). Petitioner also contends that
`the lower layer in Yamazaki’s magnetic recording media is “substantially
`nonmagnetic,” thereby satisfying the limitation in claim 1 requiring the non-
`magnetic lower layer to have “either no magnetic properties or magnetic
`properties to a degree not affected by recording information to the magnetic
`layer.” Id. at 19–20 (citing Ex. 1002, 11:54–63, 19:22–33; Ex. 1006 ¶ 62).
`Petitioner contends that Yamazaki inherently discloses magnetic
`recording media having a magnetic layer with “an average size of magnetic
`cluster at DC erase . . . equal to or higher than 0.5x104 nm2 and less than
`5.5x104 nm2,” as required by claim 1. Id. at 20–47.
`Petitioner argues that the ’891 patent discloses exemplary magnetic
`tapes (Embodiment 8 (“E8”) and Comparative Example 8 (“CE8”)) and
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`magnetic disks (Embodiment 1 (“E1”), and Comparative Example 1
`(“CE1”)). Id. at 21–22. Petitioner contends E8 and CE8 are manufactured
`using identical materials and that the only difference between the
`manufacturing techniques used to make the two is E8 is milled for 5 hours
`and CE8 is milled for 2.5 hours. Id. at 21. According to Petitioner, E8 has a
`cluster size within the claimed range and a C/N ratio described as “good,”
`whereas CE8 has a cluster size outside the claimed range and an
`“unacceptable” C/N ratio. Id. Petitioner also asserts E1 and CE1 are
`manufactured using identical materials and the only difference between the
`manufacturing techniques used to make the two is E1 is milled for 5 hours
`and CE1 is milled for 2.5 hours. Id. at 22. According to Petitioner, E1 has a
`cluster size within the claimed range and a S/N ratio described as “good,”
`whereas CE1 has a cluster size outside the claimed range and an
`“unacceptable” S/N ratio. Id.
`Petitioner next asserts that Yamazaki manufactures T1 and T2 using
`materials identical to those used for E8 and CE8 in the ’891 patent. Id. at
`22–31. Petitioner further asserts that the only difference between the
`manufacturing techniques used to make T1 and T2 in Yamazaki and E8 and
`CE8 in the ’891 patent is milling time, with T1 having a milling time of 4
`hours and T2 having a milling time of 6 hours. Id. at 31–34. Similarly,
`Petitioner asserts that Yamazaki manufactures D1 and D2 using materials
`identical to those used for E1 and CE1 in the ’891 patent. Id. at 22–31.
`According to Petitioner, the only difference between the manufacturing
`techniques used to make D1 and D2 in Yamazaki and E1 and CE1 in the
`’891 patent is milling time, with D1 having a milling time of 4 hours and D2
`having a milling time of 6 hours. Id. at 31–34. Because T1, T2, D1, and D2
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`have noise characteristics (S/N and C/N) that the ’891 patent characterizes as
`“good,” and are made using materials and manufacturing steps similar to
`those used to make E1 and E8 in the ’891 patent, which have magnetic
`cluster sizes within the claimed range, Petitioner contends that T1, T2, D1,
`and D2 necessarily have the claimed average magnetic cluster size. Id. at
`34–47.
`In its Preliminary Response, Patent Owner argues that Petitioner has
`failed to demonstrate that Yamazaki inherently discloses the average
`magnetic cluster size limitation. Prelim. Resp. 17–41. Patent Owner asserts
`that Yamazaki’s magnetic recording media are not manufactured using the
`same methods and materials used to form the embodiments disclosed in the
`’891 patent. Id. In particular, Patent Owner asserts that Petitioner ignores
`the differences between Yamazaki’s ingredients and methods and those
`disclosed in the ’891 patent, and “fails to consider how these differences can
`affect magnetic cluster size.” Id. at 21. According to Patent Owner, average
`size of magnetic cluster at DC erase is sensitive to variations in composition,
`magnetic layer thickness, magnetic particle size, coercivity, and processing
`conditions. Id. (citing Ex. 2002 ¶¶ 31–32, 60–82). Patent Owner thus
`contends that “[a]t best, Petitioner illustrates that it may be possible that the
`magnetic recording mediums of Yamazaki could have magnetic cluster sizes
`that are perhaps similar to the ones described in claim 1. But this is not
`enough.” Id. at 19.
`We are persuaded by Patent Owner’s arguments. “Inherent
`anticipation requires that the missing descriptive material is ‘necessarily
`present,’ not merely probably or possibly present, in the prior art.” Trintec
`Indus., Inc. v. Top–U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002)
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`(quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). Petitioner’s
`inherency argument is based on the assertion that the ferromagnetic particles
`used to make T1, T2, D1, and D2 in Yamazaki are the same as those used to
`make E1, E8, CE1, and CE8 in the ’891 patent. Pet. 22–28. Tables 2 and 3
`of the ’891 patent show that E1, CE1, E8, and CE8 are all made using
`magnetic powder “A.” Ex. 1001, col. 28, Tables 2 and 3. Table 1 of the
`’891 patent shows that powder A is made of barium ferrite (BaF) particles,
`has a plate diameter of 33 nm, and has a coercivity of 199 kA/m. Id. at
`22:41–55. Tables 2 and 3 of Yamazaki show that D1, D2, T1, and T2 are
`also made using a magnetic powder labeled “A.” Ex. 1002, cols. 29–30.
`Table 1 of Yamazaki shows that its powder A is a barium ferrite powder
`with a particle volume of 0.7 x 10-7 ml2 and coercivity of 2,460 (Oe), which
`is equal to 196 kA/m.3 Id. at 25:6–28. Table 1 of Yamazaki also lists
`powder A as including specific amounts of Zn, Co, and Nb. Id.
`We are not persuaded by Petitioner’s contention that Yamazaki’s
`powder A is the same as powder A in the ’891 patent despite the difference
`in coercivity values (199 kA/m vs 196 kA/m). Pet. 25. Petitioner asserts
`that a person of ordinary skill in the art would have understood the
`difference to be “within the manufacturing tolerance of producing the
`ferromagnetic powder.” Id. (citing Ex. 1006 ¶ 71). As Patent Owner points
`
`
`2 Petitioner contends that there is a typographical error in the units for
`particle volume in Yamazaki’s Table 1, and that the units should be 10-17
`instead of 10-7. Pet. 26–27. Patent Owner does not address this issue. For
`purposes of this Decision only, we agree with Petitioner.
`3 The parties do not dispute that a person of ordinary skill in the art would
`have known the formula for converting Oersteds to kiloamperes/meter is
`
`1 Oe = 1/4(cid:2024) kA/m, or that 2460 Oe equals 196 kA/m. Pet. 25; Ex. 1006
`
`¶¶ 60, 71; Prelim. Resp. 27; Ex. 2002 ¶ 67.
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`out, however, Petitioner’s declarant, Mr. Saliba, offers no evidence
`supporting this conclusion. Prelim. Resp. 28; see 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.”).
`Furthermore, Petitioner’s “manufacturing tolerance” theory is
`undermined by the fact that other powders in Yamazaki have coercivity
`values within the alleged “manufacturing tolerance” of powder A’s
`coercivity value, but have different particle volumes and compositions, and
`are identified as being different powders. Ex. 1002, 25:5–28, Table 1
`(showing powders B and C having coercivity values of 197 and 195,
`respectively); Prelim. Resp. 28. We, therefore, agree with Patent Owner that
`Petitioner has failed to demonstrate that Yamazaki’s powder A and the
`powder A of the ’891 patent are the same powder because of their similar
`coercivity values. See Prelim. Resp. 27–28.
`Nor are we persuaded by Petitioner’s contention that Yamazaki’s
`powder A is the same as powder A in the ’891 patent because the powders
`are made from particles having the same plate diameter. Pet. 26–28.
`Yamazaki does not disclose a value for the plate diameter of its powder A.
`Ex. 1002, 25:5–28, Table 1. Instead, Yamazaki discloses a “Particle
`Volume” value. Id. Therefore, Petitioner calculates the plate diameter of
`Yamazaki’s particle A based on its reported particle volume. Pet. 26–28;
`Ex. 1006 ¶¶ 75–77.
`In doing so, Petitioner relies on what Yamazaki refers to as the
`“tabular ratio,” which is the tabular diameter divided by the tabular thickness
`of a hexagonal ferrite. Pet. 28; Ex. 1002, 10:42–44. Yamazaki discloses
`preferred tabular ratio values of 1 to 15, more preferably 1 to 7. Ex. 1002,
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`10:42–44. In calculating the tabular diameter of Yamazaki’s powder A,
`Petitioner uses a tabular ratio value of 3.5, which, according to Petitioner is
`“the center of the preferred range of tabular ratios disclosed in Yamazaki.”
`Pet. 28. Using this tabular ratio value, Petitioner determines that
`Yamazaki’s powder A has a plate (tabular) diameter of 33.5 nm, and argues
`this is the same as the 33 nm plate diameter of powder A in the ’891 patent,
`“subject to a small variance that accounts for the difference between 33nm
`and 33.5nm.” Id.
`As Patent Owner correctly points out, however, Petitioner and
`Mr. Saliba arrive at a plate diameter of 33.5 nm for Yamazaki’s powder
`based on calculations using a single arbitrary tabular ratio value of 3.5.
`Prelim. Resp. 30–31 (noting in footnote 3 that 4, not 3.5, is the midpoint of
`the more preferred range of 1 to 7). Patent Owner argues that applying the
`full range of tabular ratios disclosed in Yamazaki (1–15) shows that
`Yamazaki’s powder A could have a plate diameter ranging from 22.1 nm to
`54.5 nm. Id. at 31; Ex. 2002 ¶ 74. Accordingly, we agree with Patent
`Owner that “the selection of one possible tabular ratio that results in a
`similar plate diameter as disclosed in the ‘891 Patent is not enough to show
`that powder A of Yamazaki necessarily has the same plate diameter as
`powder A in the ‘891 Patent.” Prelim. Resp. 31.
`Patent Owner further argues that Petitioner fails to address the
`potential differences in composition between Yamazaki’s powder A and
`powder A in the ’891 patent. Id. at 22–25. Specifically, Yamazaki Table 1
`indicates that powder A contains specific amounts of Zn, Co, and Nb.
`Ex. 1002, 25:5–28, Table 1. Table 1 of the ’891 patent does not disclose
`whether powder A contains the same amounts of Zn, Co, and Nb. Ex. 1001,
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`22:41–55. Nor does Petitioner direct us to any portion of the ’891 patent
`that discloses that information. For purposes of this Decision, we credit
`Dr. Wang’s testimony that “[t]he overall composition of barium ferrite and
`dopants affects the magnetic characteristics of the magnetic medium, such as
`magnetization and coercivity, which properties in turn directly affect the
`magnetic cluster size,” as Dr. Wang cites two references in support of his
`testimony. Ex. 2002 ¶ 60–65; Prelim. Resp. 25–26.
`For all of the foregoing reasons, we agree with Patent Owner that a
`person of ordinary skill in the art would not have been able to discern with
`certainty whether powder A of Yamazaki is identical to powder A of the
`’891 patent. In view of the potential differences between the two powders,
`and the impact these differences could have on magnetic cluster size, we
`find that Petitioner fails to demonstrate that Yamazaki’s magnetic recording
`media made using powder its A would necessarily have the same average
`magnetic cluster size as the magnetic recording media made using powder A
`disclosed in the ’891 patent.
`Therefore, on this record, Petitioner has not established sufficiently
`that Yamazaki expressly or inherently discloses every element of
`independent claim 1, and we determine that Petitioner does not show a
`reasonable likelihood of prevailing on its assertion that Yamazaki anticipates
`independent claim 1, or claims 4–7, 11, and 14 that depend therefrom.
`F. Claims 1, 4–9, 11, and 14 – Obviousness in view of Yamazaki alone or
`in combination with McCann and Takahashi
`Petitioner argues that the subject matter of claims 1, 4–9, 11, and 14
`would have been obvious in view Yamazaki, either alone or in combination
`with McCann and Takahashi. Pet. 52–67. Petitioner relies on the evidence
`discussed above to demonstrate that Yamazaki expressly discloses all
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`limitations of these claims, with the exception of the magnetic cluster size
`limitation recited in claim 1 and the specific thickness limitations recited in
`claims 8 and 9. Id. at 52.
`As to the magnetic cluster size limitation, Petitioner first argues that it
`would have been obvious to modify Yamazaki’s method to use a milling
`time of 5 hours to produce a tape exactly like the ones disclosed in the ’891
`patent, which have an average magnetic cluster size that falls within the
`claimed range. Id. at 53. This argument, however, is based on the
`assumption that certain ta