UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`_________________
`
`Case IPR2017-00800
`Patent 6,767,612 B2
`_________________
`
`Record of Oral Hearing
`Held: July 23, 2018
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`_________________
`
`Case IPR2017-00800
`Patent 6,767,612 B2
`_________________
`
`Record of Oral Hearing
`Held: July 23, 2018
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00800
`Patent 6,767,612 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`BRANDON S. BLACKWELL, Ph.D., ESQ.
`CHELSEA A. LOUGHRAN, ESQ.
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, Massachusetts 02210
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ELIOT D. WILLIAMS, ESQ.
`Baker Botts, LLP
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304
`
`JOSEPH A. AKALSKI, ESQ.
`Baker Botts, LLP
`30 Rockefeller Plaza
`New York, New York 10112
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Monday, July 23,
`
`2018, commencing at 1:09 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia 22314.
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`Case IPR2017-00800
`Patent 6,767,612 B2
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`P R O C E E D I N G S
`- - - - -
` JUDGE ABRAHAM: Okay. Welcome. We are here for the
`oral hearing in IPR2017-00800 concerning Patent No. 6,767,612.
`I'm Judge Abraham. Joined with me is -- joined today by Judge
`Kokoski, and Judge Ankenbrand is joining us remotely.
` Per the hearing order that we entered on July 16th, each
`party will have 40 minutes total time for their arguments.
`Petitioner, you can reserve up to 20 minutes for rebuttal. So
`Petitioner is going to go first, followed by Patent Owner, and
`then Petitioner, if you reserve rebuttal time.
` Because Judge Kokoski -- I'm sorry; Judge Ankenbrand is
`joining us remotely, you need to be in front of the microphone
`when you speak or else there's a good chance she won't be able to
`hear you. Also, she's not going to be able to see the screen, but
`she has the slides, so when you're doing your arguments, make sure
`you refer to the slide number so she can follow along.
` Have the parties provided copies of demonstratives to
`the court reporter today?
` MR. BLACKWELL: Yes.
` MS. LOUGHRAN: Yes.
` JUDGE ABRAHAM: Okay. All right. So let's begin with
`appearances, starting with Petitioner.
` MR. BLACKWELL: Good afternoon, Your Honors. My name is
`Brandon Blackwell from the firm, Wolf Greenfield. I'm here today
`on behalf of the Petitioner, Sony. And with me today is Chelsea
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`Loughran, also from Wolf Greenfield on behalf of Sony.
` JUDGE ABRAHAM: Okay. Welcome.
` Patent Owner?
` MR. WILLIAMS: Yes. Good afternoon, Your Honors.
`Elliot Williams for the Patent Owner, Fujifilm. And with me today
`is Joe Akalski.
` JUDGE ABRAHAM: Welcome.
` All right. So we have received the objections to the
`demonstratives. For now, we're going to overrule the objections.
`They are noted. The demonstratives are just that; they're
`demonstratives. They're not evidence. But during the
`presentations, if one party feels that the other has made a new
`argument, you know, you're free to raise that during your own
`time, but don't stand up and interrupt the other side during their
`arguments. Okay?
` All right. So with that, I'll invite Petitioner to
`begin and ask would you like to reserve time for rebuttal?
` MS. LOUGHRAN: Good afternoon, Your Honors. Chelsea
`Loughran for the Petitioner. I would like to reserve ten minutes
`for rebuttal, please.
` JUDGE ABRAHAM: Okay. You may begin.
` MS. LOUGHRAN: So in this IPR, Sony's challenging the
`patentability of claims 1, 2, 4, 5, 7 through 11 in U.S. Patent
`No. 6,767,612. Sony's presented three grounds.
` And if we could go to slide 2, please. The trial was
`initially instituted on the first two grounds here. After SAS
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`came down the board instituted on the third ground as well. The
`parties filed supplemental briefing on that third ground. So the
`three grounds in play today are shown here.
` And I would just like to go to slide 10, please. I want
`to highlight one recent development with respect to the '612
`patent since the pre-SAS briefing was filed. So on March 8th,
`the ITC, in a co-pending investigation, found the same challenged
`claims -- 1, 2, 4, 5, and 7 through 11 -- invalid over Matsuno and
`Endo in view of Wallace. The decision was submitted by Sony on
`July 5th with its supplemental reply brief. It's currently in the
`record as Exhibit 1054.
` And the ITC found accordingly the commission found that
`the asserted claims of the '612 patent are invalid as obvious over
`Matsuno and Endo in view of Wallace. The ITC was applying a clear
`and convincing evidentiary burden higher than that facing Your
`Honors here. The ITC was applying a narrower claim construction.
`But despite those things, the '612 patent is currently invalid by
`clear and convincing evidence, according to the ITC, based on the
`same prior art references and arguments that are before Your
`Honors in this IPR. Your Honors should come to the same
`conclusion.
` I want to pause on this last note just to be perfectly
`clear -- and we're still on slide 10. The commission's decision
`was based on Matsuno and Endo in view of Wallace, as you see here.
`Though labeled differently, the nature of the arguments in that
`case were exactly similar to Ground 1 in this IPR. Now, Ground 1
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`says that Matsuno and Endo disclose all the limitations of the
`challenged claims, and part of the reason a person of skill in the
`art would combine them stems from Wallace's Law and common desires
`to minimize spacing to improve performance. That's the exact
`argument that was made to the ITC and ruled on there; though, at
`the ITC, we made Wallace an explicit reference. That's the exact
`argument that led to this decision that you see here, and that's
`the exact argument that's in front of Your Honors as Ground 1.
` Now, Ground 2 in this IPR is labeled similar to what the
`ITC said, but I just want to be clear: It's similar but slightly
`different. In Ground 2, Sony argues that, even if the references
`are found not to teach or disclose all of the limitations of the
`challenged claims, the particular values that are recited in those
`various range limitations, based on -- you know, if Your Honors
`find that those aren't actually recited, the combination of
`Matsuno and Endo and Wallace demonstrate that those limitations
`were known to be a result of effective variables and would have
`been routinely optimized by persons of skill in the art to achieve
`the claimed values.
` And then finally Ground 3 adds the reference Yamazaki,
`which provides an anticipatory disclosure of one of the claimed
`references, (indiscernible), and we'll get to that.
` Now, we're going to get to the claims in the prior art,
`but I just wanted to spend a second on the technology. If we
`could go to slide 18. So as you probably see in the claims, they
`talk about pits. They talk about surface average roughness, SRa.
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`They talk about minimum recording bit length. The '612 patent
`itself discusses read heads, which were known, and minimum
`recorded wavelengths, which was also a known concept before the
`'612 patent.
` So this is a very simplified image of what's going on.
`You have the magnetic layer of a magnetic recording medium, and
`it's not a perfectly smooth surface. Nobody disputes that. It
`has pits, sometimes called indentations or depressions. It has
`areas that protrude above the average surface, known as
`protrusions. And we take the average of all those pits and all
`those protrusions, you get an average plane, sometimes called the
`mean plane. And the average deviation from that mean plane, from
`those pits and protrusions, is the average surface roughness.
` And you have a read head, which sits above the magnetic
`layer surface. As you can see, the space between the surface and
`the read head increases in areas where there are pits. Finally,
`you have data being recorded to the surface despite the presence
`of pits and protrusions. You can think of that data being written
`in wavelengths. As more data is written more densely, those
`wavelengths shrink. And I'll talk a lot today about high-density
`recording. That's what I'm referring to. Increasing density by
`shrinking wavelengths. And when those wavelengths shrink, that
`increases the impact of those higher distance areas created by
`pits.
` Finally, as the '612 patent makes clear, the minimum
`recording bit length, which is a claim term, corresponds to half
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`the distance of a recorded wavelength.
` Now, in 1951, Wallace figured out that, as you increase
`the density of data and thereafter shrink those recorded
`wavelengths, you have to likewise reduce that spacing in order to
`prevent predictable spacing loss, which is basically a degradation
`of the performance of the tape, and it can manifest itself in different
`ways, such as noise.
` If we go to slide 95, please. Now, this is shown in
`Wallace's equations depicted here at the bottom. As wavelength
`and correspondingly recorded bit length goes down, D, which is the
`numerator of Wallace's equation, must also go down or spacing loss
`will go up. This is exactly what persons skilled in the art
`understood well prior to the '612 patent. Again, this is a 1951
`paper.
` Now, as Professor Bogy Petitioner’s expert explained, persons
`of skill in the art also learned over time that one way that you
`can reduce that spacing is to reduce pits where the spacing is
`greatest and to bring down the overall deviations created by pits
`and protrusions to bring down the overall surface roughness.
` So Wallace's Law, which was undisputedly within the
`knowledge base of a person of skill in the art well prior to this
`'612 patent, provides a reason to minimize pits and minimize
`overall roughness, of which pits are a component as you saw in
`that little graphic, in order to allow for higher and higher
`recording densities, a goal that was shared by all in the magnetic
`recording industry, including the authors of the prior art
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`references cited here well before the '612 patent was filed.
` So let's just take a look at what the claim says and the
`prior art teaches. If we'd go to slide 12, please. So this is
`Matsuno and Endo, the two prior art references matched to claim 1.
`Matsuno teaches virtually everything in this claim, and the
`majority of this is undisputed. Fujifilm doesn't dispute that
`most of these limitations are disclosed in one or the other
`reference cited.
` But, ultimately, the question of the day today is
`whether a person of skill in the art would have combined Matsuno
`and Endo in the manner suggested by Sony to arrive at the
`challenged claims. And, actually, that's where I'm going to focus
`my argument today, because this question of combinability
`permeates all three grounds.
` Now, Fujifilm has done its best to make this seem like a
`scenario where we're plucking one disclosure from here, another
`from there, and trying to make unrelated elements somehow
`combinable. But that's not the case. As I said, Matsuno already
`discloses most of what's in the challenged claims. The only areas
`where we look to the other prior art reference, Endo, which is
`very similar to Matsuno, is for the disclosure of hexagonal
`ferrite powder, which is A-2, and for the explicit magnetic layer
`SRa values, the specific numbers found in the last limitation,
`B-3. And just again, quick pause because I show claim 1 here, but
`the arguments are the same with respect to all of the challenged
`claims. None of the additional limitations in any of the
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`remaining claims lend patentable weight. Fujifilm hasn't argued
`anything specific about the remaining claims perhaps -- except
`perhaps with the -- with respect to MR heads, which I will get to.
`But if Your Honors find claim 1 obvious, all of the challenged
`claims should likewise be found obvious.
` So let's start with A-2. Claim 1 -- and we're still on
`slide 12. Claim 1 requires a hexagonal ferrite powder. Matsuno,
`as you can see here, discloses a hexagonal crystal-type
`plate-shaped fine powder, and Endo discloses that examples of a
`plate-shaped powder, which is what Matsuno says, include hexagonal
`crystal ferrite powder, which is what the claim requires. There
`is no dispute that Matsuno teaches a set of powders that can be
`used in the magnetic layer of his tape, and Endo calls the claimed
`hexagonal ferrite powder out specifically as an example included
`in that set.
` If we go to slide 36, please. So Professor Bogy
`provided clear reasons why a person skilled in the art would use
`the more specific hexagonal ferrite from among the choices
`included in hexagonal crystal-type plate-shaped powders. For
`example, he explained that persons skilled in the art would know
`that hexagonal ferrite specifically was understood to be the best
`choice and particularly advantageous for high-density recording.
` And, again, both Matsuno and Endo are directed
`specifically to improve in performance of high-density recorded
`media. Again, getting as much data on those tapes by shrinking
`recorded wavelengths.
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` Professor Bogy talked about characteristics such as low
`demagnetization, narrow transitions, etc., which were properties
`of hexagonal ferrite that would be particularly suited for a
`high-density recording, which, again, is what Matsuno was
`concerned with improving.
` So a person skilled in the art, considering Matsuno,
`which is directed specifically to improving high-density
`recording, who calls out this set of plate-shaped powders for use
`in his tape and was also aware of the teachings of Endo, who says
`hexagonal ferrite is a plate-shaped powder in that set and who
`knows that hexagonal ferrite is particularly good for high-density
`recording would have had a reason to select hexagonal ferrite from
`among the choices included in a disclosed set of plate-shaped
`powders.
` Now, if we go to slide 35. Fujifilm, I don't think they
`dispute any of this. Fujifilm argues that there's no explicit
`explanation as to how a person of skill in the art could actually
`modify Matsuno so as to manufacture Matsuno with hexagonal ferrite
`powder specifically.
` Now, a couple of responses to that. First, Matsuno
`discusses making a tape, provides all the ingredients, all the
`structures of that tape. So the question of how you would make a
`tape is answered by Matsuno. Matsuno says you can make this tape
`with any of these hexagonal crystal-type plate-shaped powders.
` And I just want to pause here, because it's not even
`just a stray mention. If we go to slide 31, Matsuno calls this
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`out as a preference. He says the top magnetic layer includes at
`least a ferromagnetic powder, a binding agent resident and
`abrasive material. And then he says, "In the present invention,
`preferably of metal alloy and fine powder or hexagonal
`crystal-type plate-shaped fine powder is used." So he identifies
`that it's a preference.
` If you read further down, he also provides -- you know,
`it says kind of halfway down that paragraph, "Preferably, the
`hexagonal crystal-type plate-shaped powder has a holding force,
`saturation." You give some characteristics of that powder.
` So this “how” that Fujifilm wants, it comes from Matsuno.
`Matsuno talks about how to make a tape, and he discloses the set.
`Endo incidentally also discloses making a tape with roughly the
`same structures and ingredients as Matsuno, and, again, discusses
`how that would be done.
` Now, my second response is that Fujifilm provides no
`argument or evidence that a person of skill in the art, starting
`with Matsuno, would have had trouble using the hexagonal ferrite
`powder called out by Endo.
` If we go to slide 35. Fujifilm's argument on this point
`cites only to paragraph 63 of Professor Wang's declaration, which,
`itself, includes nothing more than the mere critique of Professor
`Bogy that appears in the Petition. So it's unclear what more
`Fujifilm wants, but to the extent they want some detailed
`step-by-step manual, that's not required by law. And as we cited
`in our brief, Allied versus Genesis, it's here at slide 47,
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`demonstration of bodily incorporation, that's not the test for
`obviousness.
` Now, as I stated earlier, Matsuno certainly provides
`sufficient explanation as to how this would be done, and so it
`demonstrates the ability to incorporate any of the plate-shaped
`powders, including hexagonal ferrite, into his tape. So on this
`issue, Your Honors should find that the combined teachings of
`Matsuno and Endo disclose this limitation. There's a clear reason
`to combine them. Matsuno itself teaches enough from which a
`person of skill in the art would understand how it could be done.
`And at the very least, there's no testimony or argument that it
`couldn't.
` JUDGE ABRAHAM: Before you leave slide 35, there's
`testimony in there from Dr. Bogy's deposition where it looks like
`he's just saying, during his analysis, he was looking to the art
`to see if it discloses what's in the patent.
` MS. LOUGHRAN: Correct.
` JUDGE ABRAHAM: And Patent Owner points out there are few
`instances where he gets -- they get testimony from Dr. Bogy along
`these lines.
` MS. LOUGHRAN: Yep.
` JUDGE ABRAHAM: Is there -- what's your response to
`that? I mean, does -- other than the declaration which you have
`pointed us to, is there deposition
`testimony where he talks about a motivation to combine?
` MS. LOUGHRAN: So during his deposition, yeah, Fujifilm
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`makes a big point out of this, because they asked him, well, how
`did you actually do that? And he says, well, I looked at the
`claims, and I found that all these limitations appeared in the
`claims.
` I mean, he was doing a Graham analysis, right? He was
`looking at -- he was basically assessing the scope of the prior
`art. He was determining differences between the prior art and the
`claims. And then he was ascertaining whether a person of skill in
`the art would have simply had a reason to pick this one hexagonal
`ferrite from a disclosed set where Matsuno says, make a tape using
`any of these powders.
` And he provided a reason. He provided a reason because,
`again, Matsuno and Endo are both directed to improving
`high-density recording, and hexagonal ferrite, he provided
`evidence of this. If we go -- I mean, we can go back to Professor
`Bogy's declaration. I don't know how much of this he said at his
`deposition, but, you know, I mean, he put in slide 36, in his
`declaration, which he stood behind -- I mean, he did not disclaim
`his declaration during his deposition. He talked about all the
`characteristics of hexagonal ferrite that were particularly good
`for high-density recording.
` So if you're a person of skill in the art looking at
`Matsuno saying this is all about making good tapes for
`high-density recording, and you can use this set of powders to
`make this tape, and here's all the instructions of how to make
`this tape, and then, you know, you have Endo that says hexagonal
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`ferrite powders are in this set and particularly good for
`high-density recording? That is a reason to combine them. And
`Professor Bogy's analysis was nothing more than what Graham
`requires.
` If we go to slide 12, please. Back to slide 12. So
`that takes care of A-2. The only other teaching not explicitly
`provided in Matsuno is the numerical range of surface roughness
`values of the magnetic layer of the tape. That is not in Matsuno,
`but it's a pretty minor addition. And here's why: It's undisputed
`that Matsuno's tape already has some roughness. The experts agree
`no tape as a perfectly smooth surface. Matsuno just didn't put a
`number on the overall roughness of the magnetic layers
`specifically.
` But it's also undisputed that Matsuno discusses
`numerical ranges of the surface roughness of other layers of the
`tape. The parties dispute the significance of that, but you can
`see right here, under B-3, Matsuno says the surface roughness of
`the non-magnetic supporting body is preferably no more than 15
`nanometers. And even Professor Wang admitted that the roughness
`of these different layers are at least qualitatively related.
` So Matsuno is really aligned with this concept of
`minimizing roughness. He just didn't put a number, SRa,
`specifically on his magnetic layer of his tape. But as the
`testimony shows, again, he certainly would have had a reason to do
`that. And let's talk about that.
` So as I noted earlier, the whole point of improving
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`these high-density tapes was to increase recording capacities, and
`to do that, you had to drive down that distance. As Wallace's Law
`teaches, as recorded wavelengths decrease, the distance between
`head and surface must also decrease or you're going to get an
`increase in space and loss.
` Professor Bogy provided extensive testimony explaining
`that persons skilled in the art were to decrease this D
`specifically by controlling the surface roughness characteristics
`of magnetic layers of their tapes.
` If we go to slide 15, it shows paragraph 42 just as an
`example of Professor Bogy's declaration describing all of this in
`detail. If you look at that second highlighted passage, the
`second sentence, he talks about Wallace's Law. It shows that
`signal loss will occur as bit length is reduced unless the spacing
`between read head and magnetic medium surface is reduced.
` And at the end, he says, “These observations (including
`the need to reduce the spacing between the read head and the
`magnetic recording medium, for example, by reducing pit depth and
`surface roughness) have guided the historical development of
`ever-increasing data density in all magnetic recording systems
`since they were presented.”
` So this is the ubiquitous issue, guided by a fundamental
`law in recording since the mid 20th century. Now, Professor Bogy
`isn't the only one who provides evidence of this fact -- if we go
`to slide 16 -- the references themselves prove that point. And
`this is the cover page of Matsuno and the cover page of Endo.
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`Case IPR2017-00800
`Patent 6,767,612 B2
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`It's undisputed that Matsuno teaches limiting pits, which is
`highlighted here in blue, to avoid fatal errors, which is
`highlighted in orange.
` Also undisputed, that Endo teaches limiting surface
`roughness and limiting pits to achieve better electromagnetic
`conversion characteristics to avoid drop-out, etc. And that's
`highlighted in orange.
` Now, you're going to hear Fujifilm talk a lot about how
`these were all different problems, but while they may have used
`different words, they actually all arise from the same problem.
`And that problem is spacing and specifically spacing in the
`context of high-density media, where recording wavelengths are
`shrinking, the distance between the head and the surface has to go
`down in order to avoid performance degradation per Wallace.
` Now, Fujifilm's expert agreed that all of these
`purportedly different problems, they all relate to the performance
`of the magnetic media. I asked him at his deposition. He agreed
`that fatal errors and electromagnetic conversion and drop-out,
`those were all related to performance of magnetic recording media.
`But even more important than that -- and as Professor Bogy
`testified -- and there's no testimony explaining to the
`contrary -- all of these performance problems arise primarily due
`to spacing, which is why all of them are solved through reducing
`surface roughness characteristics per Wallace. Same problem, same
`solution.
` And Professor Bogy explained this with respect to each
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`Case IPR2017-00800
`Patent 6,767,612 B2
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`prior art reference. For example, with respect to Matsuno -- if
`we go to slide 14. Or actually 13. Sorry. Excuse me.
` So Professor Bogy at the top here, he talks about how
`Matsuno discloses that it's desirable to limit the number of deep
`pits in the magnetic layer to avoid spacing loss that results from
`a reduced state of contact between the head and the magnetic
`recording medium. And he cites Matsuno explicitly. And just --
`Matsuno says, if you look at the fourth line down, "The spacing
`between head and the magnetic tape, which is the cause of frequent
`errors in data patterns."
` So Matsuno relates spacing to his errors. Professor
`Bogy explained the same with respect to Endo. If we go to slide
`14. The middle highlighting here, Professor Bogy explains that
`Endo and Matsuno -- or Endo talks about minimizing surface
`roughness and minimizing pits. And he says, Endo “ties the need to limit the
`number of deep pits and surface roughness to the desire
`to avoid spacing loss and drop-out, thus improving electromagnetic
`conversion characteristics.”
` And Endo at paragraph 8 says explicitly -- it says keep
`the surface roughness to no more than 7.5, and it says, "As a
`result, spacing loss decreases, and good electromagnetic
`conversion characteristics can be obtained." So the links there
`are explicit.
` Now, this is -- in fact, this is the exact problem
`that's solved by the '612 patent, as you can see here in paragraph
`20. Now, I will grant you that these references use different
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`Case IPR2017-00800
`Patent 6,767,612 B2
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`verbiage to discuss the specific aspects of the spacing-related
`problems, but the record shows that the prior art references and
`the '612 patent are exceedingly similar when it comes to these
`spacing problems, and any slight differences alone do not defeat a
`reason to combine them. This is exactly what --
` JUDGE ANKENBRAND: Can I interrupt for a moment?
` MS. LOUGHRAN: Absolutely.
` JUDGE ANKENBRAND: Did -- is there any testimony from
`Dr. Wang that's supporting what you're saying? I know there might
`be some declaration testimony from Dr. Bogy, but did you explore
`this with Dr. Wang at his deposition, whether they're using
`different terms? Essentially, they're all getting at the same
`idea?
` MS. LOUGHRAN: So yes. So I asked Professor Wang about
`all of those problems. He agreed -- he would agree so far as to
`say that they all relate to performance. Right? He wouldn't go
`so far to say that they all relate to spacing loss. However --
`and if you could pull up slide 97, Brandon. It was at least
`undisputed a year ago that Wallace's Law explained the
`relationship between pits and recorded bit length, this idea that
`these things -- that pits and recorded -- and recorded wavelength
`could be explained by Wallace's Law, which talks about spacing.
` You know, we asked Professor Wang, "You agreed with me
`at least qualitatively this relationship between pits and recorded
`bit length is described by Wallace's Law," meaning spacing loss.
`And he said, "Yes. The qualitative relationship that -- that
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`explained it."
` When I asked him again in the IPR, Wallace's Law
`describes at least the qualitative relationship between pits and
`recorded bit length, he said “no.” And there's no explanation for
`his new testimony. I would argue that his original testimony is
`probative here. But he does agree, at least -- at least he did a
`year ago -- that Wallace's Law does explain this, that spacing
`loss does explain this idea of decreasing wavelength and taking
`pit depth into consideration.
` JUDGE ANKENBRAND: Thank you.
` MS. LOUGHRAN: Now, if we go to slide 65, with respect
`to kind of all of these references directed at the same problem,
`this is -- this is exactly what the ITC found. Matsuno and Endo
`in view of Wallace were directed to the same field of endeavor and
`addressed common problems -- again, spacing loss as explained by
`Wallace's Law, albeit in slightly different contexts.
` The ITC went on to say -- if we go to slide 66 -- the
`ITC went on to say those references were directed to solving the
`same fundamental problem addressed by the '612 patent, and the ITC
`cited Cross Medical, which basically says that evidence that a
`person of skill in the art recognizes the same problem as the
`inventors is at least probative of the fact that that person of
`skill in the art would have had a willingness to search the prior
`art for suggestion on how to solve that problem. And notably, the
`ITC recognized that as true even where problems differ
`slightly.
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`Case IPR2017-00800
`Patent 6,767,612 B2
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` So a person of skill in the art reading Matsuno and
`understanding Matsuno's desire to limit pits to avoid issues
`created by spacing in high-density media would have had a reason
`to further reduce that spacing based, again, on the fundamental
`principle articulated in Wallace's Law, and Endo, which
`indisputably controls pits and surface roughness would have
`provided the directive to limit pits and surface roughness to the
`range disclosed in Endo, again, this is an overlapping range.
` Now, Fujifilm tries to argue that Matsuno's focus on
`pits would somehow teach away from a concern about surface
`roughness, rendering Endo incompatible with Matsuno, but that's
`contradicted by at least four separate points on the record here.
`And I'm just going to walk through them briefly.
` First, Endo limits both pits and surface roughness.
`Right? So it was well-known before the '612 patent that you could
`do both, that you would want to do both to address these spacing
`concerns. And that fact is undisputed.
`
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