Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 50
`
` Mailed August 16, 2018
`
`
`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
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 50
`
` Mailed August 16, 2018
`
`
`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
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2017-00800
`Patent 6,767,612 B2
`
`
`I. INTRODUCTION
`Sony Corporation (“Petitioner”) filed a Corrected Petition seeking
`inter partes review of claims 1, 2, 4, 5, and 7–11 (“the challenged claims”)
`of U.S. Patent No. 6,767,612 B2 (Ex. 1001, “the ’612 patent”). Paper 9
`(“Pet.”). Fujifilm Corporation (“Patent Owner”) filed a Patent Owner
`Preliminary Response to the Petition. Paper 13 (“Prelim. Resp.”). On
`August 18, 2017, we instituted an inter partes review of claims 1, 2, 4, 5,
`and 7–11. Paper 14 (“Inst. Dec.”).
`After institution, Patent Owner filed a Patent Owner Response (Paper
`27, “PO Resp.”) and Petitioner filed a Reply (Paper 31, “Reply”). On April
`26, 2018, we issued an order modifying our institution decision. Paper 35.
`After receiving authorization from the Board, Patent Owner filed a
`Supplemental Patent Owner Response (Paper 41, “Suppl. PO Resp.”) and
`Petitioner filed a Supplemental Reply (Paper 42, “Suppl. Reply”).
`An oral hearing was held on July 23, 2018 and a transcript of the
`hearing has been entered into the record of the proceeding. Paper 49 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. 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 shown by a
`preponderance of the evidence that claims 1, 2, 4, 5, and 7–11 are
`unpatentable.
`
`II. BACKGROUND
`A. Related Proceedings
`The parties indicate that the ’612 patent is involved in Certain
`Magnetic Data Storage Tapes and Cartridges Containing the Same (ITC
`Investigation No. 337-TA-1012). Pet. 7; Paper 3, 2. Petitioner further
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`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. 7.
`
`B. The ’612 Patent
`The ’612 patent, titled “Magnetic Recording Medium,” issued on July
`27, 2004. Ex. 1001, [54], [45]. The ’612 patent is directed to a “magnetic
`recording medium affording great improvement in medium noise in a
`recording and reproduction system adopting MR [magneto-resistive] heads.”
`Id., Abstract. The magnetic recording medium of the ’612 patent includes a
`magnetic layer, comprising a hexagonal ferrite powder and a binder, on a
`nonmagnetic support. Id. According to the ’612 patent, the inventors
`discovered that “pits of a certain depth on the magnetic layer surface have a
`marked effect on noise.” Id. at 2:20–25. The ’612 patent explains that
`when there are pitted portions of prescribed depth on the
`magnetic layer surface, contact conditions between the MR
`head and the magnetic tape are compromised and output
`decreases locally in areas in which spacing loss in the pitted
`portions is substantial. . . . [S]ince pits on the magnetic layer
`surface cannot be removed, when the number of pits having a
`certain depth or more exceeds a certain number, they are
`thought to increase noise during reproduction by MR heads.
`Id. at 3:28–40. The ’612 patent also teaches that it is possible to reduce
`noise by maintaining the surface roughness of the magnetic layer within a
`certain range. Id. at 2:59–61.
`In view of this, the ’612 patent discloses a magnetic recording
`medium comprising a magnetic layer wherein
`the number of pits having a depth of ⅓ or more of the minimum
`recording bit length present on a surface of said magnetic layer
`is equal to or less than 100/10000 μm2, and the center surface
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`average roughness of said magnetic layer surface SRa is equal
`to or less than 6.0 nm.
`Id. at 2:33–37. The ’612 patent discloses methods for manufacturing
`magnetic recording media with the aforementioned properties, as well as
`methods for measuring pits and surface roughness. Id. at 16:44–24:38.
`C. Illustrative Claim
`Petitioner challenges claims 1, 2, 4, 5, and 7–11 of the ’612 patent.
`Claims 1 and 10 are independent claims. Independent claim 1 is illustrative,
`and is reproduced below:
`a
`comprising
`recording medium
`1. A magnetic
`nonmagnetic layer comprising a nonmagnetic powder
`and a binder and a magnetic layer comprising a
`hexagonal ferrite powder and a binder in this order on a
`nonmagnetic support, wherein
`the number of pits having a depth of ⅓ or more of the
`minimum recording bit length present on a surface of
`said magnetic
`layer
`is equal
`to or
`less
`than
`100/10,000 μm2, the minimum recording bit length is
`about 50 to 500 nm, and the center surface average
`roughness of said magnetic layer surface SRa is equal
`to or less than 6.0 nm.
`Ex. 1001, 25:65–26:10.
`
`D. References
`Matsuno, JP 2001-84549A, published Mar. 30, 2001 (“Matsuno,”
`Ex. 1004).
`Endo et al., JP 2000-40218A, published Feb. 8, 2000 (“Endo,”
`Ex. 1005).
`Yamazaki et al., U.S. Patent No. 6,017,605, issued Jan. 25, 2000
`(“Yamazaki,” Ex. 1007).
`R.L. Wallace, Jr., The Reproduction of Magnetically Recorded
`Signals, BELL SYS. TECH. J. 1145–1173 (1951) (“Wallace,” Ex. 1006).
`
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`E. Reviewed Grounds of Patentability
`Statutory Basis
`Claims Challenged
`§ 103
`1, 2, 4, 5, and 7–11
`
`References
`Matsuno, Endo
`Matsuno, Endo,
`Wallace
`Matsuno, Endo,
`Wallace, Yamazaki
`
`
`
`§ 103
`
`§ 103
`
`1, 2, 4, 5, and 7–11
`
`1, 2, 4, 5, and 7–11
`
`F. Level of Ordinary Skill in the Art
`Petitioner defines a person of ordinary skill in the art as having at least
`one of the following qualifications:
`(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 disciplines
`identified above (or a related field), either with an emphasis in
`magnetic storage technology or equivalent experience working
`with magnetic storage systems or media; or (3) work experience
`equivalent to the prior qualifications.
`Pet. 9; Ex. 1023 ¶ 16. Patent Owner does not dispute Petitioner’s definition,
`presents an analysis based on Petitioner’s definition, and argues that, even
`under Petitioner’s definition, Petitioner has failed to show the challenged
`claims are unpatentable. PO Resp. 8; id. at 8 n.2.
`
`In view of the foregoing, we adopt Petitioner’s definition of the level
`of ordinary skill in the art. Further, this level of ordinary skill is reflected by
`the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (the prior art itself can reflect the appropriate level of ordinary skill in
`the art).
`
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`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
`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). A claim term, however,
`“will not receive its ordinary meaning if the patentee acted as his own
`lexicographer and clearly set forth a definition of the disputed claim term in
`either the specification or prosecution history.” CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Although the
`patentee indeed is free to define the specific claim terms used to describe his
`or her invention, “this must be done with reasonable clarity, deliberateness,
`and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes a specific construction for the following five claim
`terms under the broadest reasonable interpretation standard: (1) “magnetic
`recording medium,” (2) “pit,” (3) “center surface average roughness,” (4)
`“minimum recording bit length,” and (5) “the number of pits having a depth
`of ⅓ or more of the minimum recording bit length present on . . . surface of
`said magnetic layer [“is equal to or less than” in claim 1 and “of” in claim
`10] 100/10,000 μm2.” Pet. 14–20. In its Preliminary Response, Patent
`
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`Owner stated that it “agrees, strictly for the purposes of this response, with
`Petitioner’s proposed claim constructions.” Prelim. Resp. 10. As a result, in
`our Institution Decision, we adopted Petitioner’s proposed constructions.
`Inst. Dec. 6.
`In the Patent Owner Response submitted after the Institution Decision,
`Patent Owner disputes only Petitioner’s proposed construction of “minimum
`recording bit length.” PO Resp. 9–11. We, therefore, determine that it is
`only necessary to address the construction of this term. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“we 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)).
`“minimum recording bit length”
`Petitioner contends that “minimum recording bit length” (also referred
`
`to as MRBL) is expressly defined in the Specification of the ’612 patent, and
`means “½ of the length of the shortest wavelength of the signal recorded by
`the system. Although this length differs by system, it is usually about 50 to
`500 nm.” Pet. 16 (citing Ex. 1001, 3:56–59; Ex. 1023 ¶ 87). Petitioner also
`argues that MRBL is used in this manner consistently throughout the
`Specification. Id. (citing Ex. 1001, 25:43–46, 25:49–52, Table 2).
`Petitioner further argues that during prosecution of the application that
`issued as the ’612 patent, the Applicant referred to this statement in the
`Specification as providing a definition of MRBL. Id. (citing Ex. 1002, 16;
`Ex. 1023 ¶ 89).
`
`Patent Owner argues that the broadest reasonable interpretation of
`MRBL is “the shortest length of data track on a magnetic recording medium
`
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`on which one bit of information can be recorded.” PO Resp. 9 (citing
`Ex. 2021 ¶ 36). Patent Owner contends this construction is consistent with
`the plain and ordinary meaning of the term. Id. Patent Owner also argues
`that claim 6, which depends from claim 1 and expressly recites that the
`minimum recording bit length is ½ of the length of the shortest wavelength
`of a signal recorded by a system, demonstrates that MRBL in claim 1 is not
`necessarily limited to ½ of the shortest recording wavelength. Id. at 10–11
`(citing Ex. 2021 ¶ 38; Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632
`F.3d 1246, 1254–55 (Fed. Cir. 2011); Kara Tech. Inc. v. Stamps.com Inc.,
`582 F.3d 1341, 1347 (Fed. Cir. 2009)). Additionally, Patent Owner
`contends that Petitioner, by referring to the use of MRBL throughout the
`Specification in accordance with its proposed construction, is attempting to
`read limitations from the Specification into the claims. Id. at 11.
`
`The ’612 patent states “[t]he ‘minimum recording bit length’ means ½
`of the length of the shortest wavelength of the signal recorded by the system.
`Although this length differs by system, it is usually about 50 to 500 nm.”
`Ex. 1001, 3:56–59. We find the language used in the ’612 patent,
`particularly the recitation of what MRBL “means,” defines the term MRBL
`with “clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d at 1480.
`Consistent with this definition, the ’612 patent explicitly indicates that the
`MRBL for various comparative examples is equal to one-half of the
`recording wavelength. Ex. 1001, 25:43–52 (noting that for Comparative
`Examples 9 and 10 the recording wavelength was 0.2 μm (200 nm) and
`minimum recording bit length was 100 nm); see also id. at 24:40–25:23
`(Table 2 showing results of experiments using recording wavelengths of
`0.55 µm and 0.3 µm, and corresponding MRBLs of 275 nm and 150 nm,
`
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`respectively). Additionally, as Petitioner points out, during prosecution of
`the application leading to the ’612 patent, the Applicant directed the
`Examiner to the Specification and stated that it “defines the ‘minimum
`recording bit length’ to mean ½ of the length of the shortest wavelength of
`the signal recorded by the system.” Ex. 1002, 16.
`
`
`Patent Owner’s claim differentiation argument does not persuade us to
`depart from the Specification’s clear definition of MRBL. As noted above,
`Patent Owner argues that we should not adopt Petitioner’s construction of
`MRBL because claim 6, which depends from claim 1, specifically recites the
`construction Petitioner proposes, and, therefore, MRBL in independent
`claim 1 is not necessarily ½ of the shortest recording wavelength. PO Resp.
`10. Claim differentiation, however, “only creates a presumption that each
`claim in a patent has a different scope; it is not a hard and fast rule of
`construction.” Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1365–
`69 (Fed. Cir. 2000) (internal quotations omitted). This presumption can be
`overcome by the written description or prosecution history. See Seachange
`Int’l, Inc. v. C-Cor Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005); Multiform
`Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998)
`(stating that “the doctrine of claim differentiation cannot broaden claims
`beyond their correct scope, determined in light of the specification and the
`prosecution history and any relevant extrinsic evidence . . . . [C]laims that
`are written in different words may ultimately cover substantially the same
`subject matter.”).
`
`Petitioner has directed us to sufficient evidence in the record to
`overcome any presumption created by claim differentiation. This evidence
`includes the express definition in the Specification, as well as the use of
`
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`MRBL consistent with this definition throughout the Specification and
`prosecution history. The presence of the definition in the Specification also
`undermines Patent Owner’s argument that Petitioner is attempting to read
`limitations from the Specification into the claims. PO Resp. 11.
`
`In view of the foregoing, we find that the broadest reasonable
`interpretation of “minimum recording bit length” is “½ of the length of the
`shortest wavelength of the signal recorded by the system.”
`B. Obviousness in view of Matsuno and Endo
`Petitioner argues that the subject matter of claims 1, 2, 4, 5, and 7–11
`would have been obvious in view of the combined teachings of Matsuno and
`Endo, and relies on the Corrected Declaration of David B. Bogy, Ph.D.
`(Ex. 1023) in support of its contentions. Pet. 21–51. Patent Owner relies on
`the Declaration of Dr. Shan Wang (Ex. 2021) in support of its Response.
`i. Matsuno (Ex. 1004)
`Matsuno discloses a magnetic recording medium having a magnetic
`layer, formed using a ferromagnetic powder and a binder, and an underlying
`substantially nonmagnetic layer. Ex. 1004 ¶ 1. Matsuno’s magnetic
`recording medium is designed for use in a “linear serpentine format
`writing/reading system that employ[s] the RLL (2,7) modulating method”
`(id. ¶ 9), and can be used for high density recording (id. ¶¶ 1, 5). Matsuno
`explains that the linear serpentine format uses a stationary head for recording
`and reading, as opposed to a helical scan format that uses a rotating head for
`reading/writing, and that each format has its own strengths and weaknesses.
`Id. ¶ 3.
`
`
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`According to Matsuno:
`The present inventor, as the result of earnest research, arrived at
`the present invention through discovering that there is a
`remarkable effect, through indentations of a specific depth in
`the magnetic layer, for the spacing between the head and the
`magnetic tape, which is the cause of frequent errors in data
`patterns specified after RLL (2,7) modulation in magnetic
`recording systems of a linear serpentine method that employ the
`RLL (2,7) modulating method with a shortest recording
`wavelength of no more than 1 μm and a relative speed of no
`more than 5 m/s between the head and the magnetic tape.
`Id. ¶ 10. Matsuno explains that the relationship between the depth of
`indentations in the magnetic layer surface and errors is due to “a
`combination of the RLL (2,7) modulating method and a reduction in the
`state of contact between the head and the magnetic tape.” Id. ¶ 16. Matsuno
`then discloses that “[t]he reduction in the state of contact between the head
`and the magnetic tape increases the spacing loss if the indentations are more
`than a specific depth, resulting in a decrease in instantaneous power.” Id. In
`view of this, Matsuno teaches forming a magnetic layer such that
`“indentations with a depth of greater than 50 nm are no more than 10
`instances in 46237.5 μm², and a maximum depth Rv is no greater than 100
`nm.” Id. ¶ 11.
`
`ii. Endo (Ex. 1005)
`Endo is directed to a magnetic recording medium suitable for high-
`density recording, having “excellent electromagnetic conversion
`characteristics and low dropout, as well as excellent drivability and
`durability.” Ex. 1005 ¶ 1. According to Endo:
`The present inventors found that when performing high-density
`digital recording – that is, when the playback bit area is small –
`not only do all depressions present on the surface of the
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`uppermost layer magnetic layer cause dropout, but depressions
`of which the cross-sectional area at a certain depth exceeds a
`certain value relative to the playback bit area also cause
`dropout. Additionally, the present inventors found that under
`high power and low dropout conditions where the presence of
`such depressions is proactively minimized, . . . by setting
`surface roughness of the uppermost layer magnetic layer to
`below a certain value, durability and drivability of the magnetic
`recording medium improve.
`Id. ¶ 5.
`
`Endo discloses an embodiment having an upper magnetic layer with a
`surface roughness no greater than 7.5 nm, preferably between 7.0 and 1.5
`nm, which results in decreases in spacing loss. Id. ¶ 8. Endo further
`discloses that the upper magnetic layer should have a limited number of
`“critical depressions,” which are depressions having a cross-sectional area
`equal to or greater than 3% of the playback bit area at a depth of 20 nm from
`the mean square surface of the upper magnetic layer. Id. ¶ 9. Endo limits
`the number of critical depressions to three per 100 µm2, but prefers a number
`closer or equal to zero. Id. ¶ 10.
`
`Endo refers to depressions having a cross-sectional area of less than
`3% of the playback bit area at a depth of 20 nm as “microdepressions,” and
`explains that the presence of microdepressions is preferred to help maintain
`drivability and durability. Id. ¶ 12. Endo states “[s]ince the cross-sectional
`area of the microdepressions is small, the decrease in power due to recording
`loss and space loss with the magnetic head caused by the presence of the
`microdepressions is small enough to be negligible.” Id.
`
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`iii. Whether Matsuno and Endo Disclose or Suggest All Limitations
`of the Challenged Claims
`Petitioner provides detailed explanations, including claim charts, and
`Dr. Bogy’s Declaration to show how the references disclose or suggest each
`claim limitation of the challenged claims.
`For example, with regard to claim 1, Petitioner asserts that Matsuno
`discloses a “magnetic recording medium comprising a nonmagnetic layer
`comprising a nonmagnetic powder and a binder” as recited in claim 1.
`Pet. 29 (citing Ex. 1004 ¶¶ 1, 10, 11, 17, 18, 20). Claim 1 also requires a
`magnetic layer comprising a hexagonal ferrite powder and a binder.
`Petitioner notes Matsuno discloses a top magnetic layer having a
`ferromagnetic powder, preferably a “hexagonal crystal-type plate-shaped
`fine powder.” Id. (citing Ex. 1004 ¶ 33). Petitioner acknowledges that
`Matsuno does not expressly disclose a hexagonal ferrite powder in its
`magnetic layer, but asserts that Endo discloses the use of a ferromagnetic
`hexagonal crystal ferrite powder in a magnetic layer of a multi-layer
`magnetic recording medium that also includes a nonmagnetic layer similar
`to that disclosed in Matsuno. Id. at 24–25, 29 (citing Ex. 1005 ¶ 25).
`Claim 1 also requires “the minimum recording bit length [MRBL] is
`about 50 to 500 nm.” Petitioner argues that Matsuno discloses an MRBL
`ranging from 0 to 500 nm because the ’612 patent defines the MRBL as
`“half the length of the shortest wavelength of the signal recorded by the
`system,” and Matsuno discloses a magnetic recording medium for use in a
`system having “a shortest recording wavelength of no more than 1 µm.”
`Pet. 31 (quoting Ex. 1004 ¶ 10); see id. at 30 (citing Ex. 1023 ¶¶ 145–160);
`Ex. 1001, 3:56–59. Petitioner argues that the range of MRBLs disclosed in
`Matsuno (0 to 500 nm) overlaps the claimed range (50 to 500 nm). Pet. 31.
`
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`Petitioner asserts that Matsuno’s disclosure of “indentations with a
`depth of greater than 50 nm are no more than 10 instances in 46237.5 μm²”
`(Ex. 1004 ¶ 11) reads on the claim 1 limitation requiring “the number of pits
`having a depth of ⅓ or more of the minimum recording bit length present on
`a surface of said magnetic layer is equal to or less than 100/10,000 μm2”
`(referred to herein as “the pit count limitation”). Pet. 30 (citing Ex. 1023
`¶¶ 161–213), 34–36. According to Petitioner, Matsuno’s disclosure of less
`than 10 pits having a depth greater than 50 nm in an area of 46,237 µm2
`necessarily means that Matsuno discloses less than 100 pits having a depth
`of greater than 50 nm in the smaller claimed area of 10,000 µm2. Id. at 34–
`36.
`
`Petitioner also argues that because claim 1 limits the threshold pit
`depth to one-third of the MRBL, and limits the MRBL to 50–500 nm, the
`range of permissible pit depths in claim 1 is 16.67 to 166.67 nm (i.e., ⅓ of
`50–500 nm). Id. at 35. Petitioner notes that Matsuno’s pit depth thresholds
`of 50 nm and 100 nm fall within the 16.67 to 166.67 range. Id. (citing
`Ex. 1023 ¶¶ 167–169).
`Finally, claim 1 requires that “the center surface average roughness of
`said magnetic layer surface SRa is equal to or less than 6.0 nm.” Petitioner
`points to Endo’s explicit disclosure of a medium having a surface roughness
`of less than 7.5 nm, preferably 7.0 to 1.5 nm, and asserts that the overlapping
`range of surface roughness disclosed in Endo renders the claimed range
`prima facie obvious. Pet. 30 (citing Ex. 1005 ¶ 8; Ex. 1023 ¶¶ 220–223), 42.
`Petitioner directs us to portions of Matsuno and Endo that disclose or
`suggest the limitations recited in claims 2, 4, 5, and 7–11, again providing
`claim charts and citing the Bogy Declaration. Id. at 44–51.
`
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`In its Patent Owner Response, Patent Owner argues that Matsuno fails
`
`to disclose the MRBL and pit count limitations in independent claims 1 and
`10. Patent Owner’s arguments, however, are based on its own proposed
`construction of MRBL, which we decline to adopt. Patent Owner does not
`dispute that Matsuno discloses the MRBL and the pit count limitations under
`Petitioner’s proposed construction, which we do adopt, or that Matsuno and
`Endo disclose or suggest the remaining limitations of the challenged claims.
`See generally PO Resp.; see also Reply 3 (stating that under Petitioner’s
`construction, “Matsuno undisputedly discloses the pit count limitation of the
`challenged claims”) (citing Ex. 1049, 260:16–261:4; Ex. 1023 ¶¶ 161–169).
`
`Based upon our review of the totality of the record after trial, we agree
`with Petitioner’s arguments and evidence presented in the Petition
`demonstrating that Matsuno and Endo disclose or suggest the limitations of
`the challenged claims. Thus, we determine that the preponderance of the
`evidence supports a finding that Petitioner has demonstrated that all
`limitations of the challenged claims are disclosed or suggested by Matsuno
`and Endo.
`
`iv. Motivation to Combine Matsuno and Endo
`1. The Parties’ Positions
`Petitioner argues that a person of ordinary skill in the art would have
`had a “reason to use the hexagonal ferrite powder disclosed in Endo as the
`hexagonal-crystal plate-shaped powder described in Matsuno because both
`Endo and Matsuno describe high density magnetic recording media with
`similar structures, and the use of hexagonal ferrite powder in such media
`was known to be advantageous.” Pet. 25 (citing Ex. 1023 ¶ 130).
`According to Dr. Bogy, these advantages include low demagnetization, the
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`IPR2017-00800
`Patent 6,767,612 B2
`
`ability to support very narrow transitions, and immunity to corrosion.
`Ex. 1023 ¶ 130; see also id. ¶ 41 (citing Ex. 1016 and Ex. 1017 as evidence
`of what a person of ordinary skill in the art would have known about barium
`ferrite powders as of July 2001).
`Petitioner also argues that a person of ordinary skill in the art “would
`have had reason to modify the medium described in Matsuno to have a
`surface roughness with the ranges disclosed in Endo, as doing so would
`reduce noise generated by the medium.” Pet. 27. According to Petitioner,
`Endo teaches that reducing surface roughness of the magnetic layer
`improves electromagnetic conversion characteristics, which a person of
`ordinary skill in the art would have understood to involve reducing noise
`without sacrificing drivability or durability. Id. at 26–27 (citing Ex. 1005
`¶¶ 5, 8; Ex. 1023 ¶ 132).
`Petitioner contends Matsuno addresses the surface roughness of the
`magnetic layer because it limits the roughness of other surfaces in its tape,
`and in view of its disclosure “that it is undesirable to transfer the roughness
`of the back coat layer to the magnetic layer.” Id. at 26 (citing Ex. 1004 ¶ 48;
`Ex. 1023 ¶¶ 131, 215). Petitioner further contends that a person of ordinary
`skill in the art would have recognized that it is desirable to minimize the
`surface roughness of Matsuno’s magnetic layer because doing so would
`enhance the contact between the head and the medium and reduce noise. Id.
`at 27 (citing Ex. 1004 ¶ 16; Ex. 1023 ¶ 133).
`Additionally, Petitioner notes that Endo discloses the use of an MR
`head for high-density recording, and that Endo teaches that “one reason to
`increase recording density of the medium is to enhance performance of the
`medium in systems employing an MR head.” Pet. 27 (citing Ex. 1005 ¶ 24).
`
`
`
`16
`
`
`
`IPR2017-00800
`Patent 6,767,612 B2
`
`Petitioner acknowledges that Matsuno discloses a medium for high-density
`recording used in a system that describes employing inductive heads, but
`contends that there is nothing in Matsuno indicating its recording medium is
`incompatible or not usable in systems employing MR heads. Id. at 28. To
`the contrary, Petitioner argues that, prior to the filing date of the ’612 patent,
`it was known in the art that “all of the elements of Matsuno’s proposed
`solution . . . were known to be usable with MR heads well prior to the ‘612
`patent.” Reply 14 (citing Ex. 1051, 168:1–169:22). Petitioner also argues
`that creating a recording medium for use with an MR head was within the
`technical capabilities of a person of ordinary skill in the art. Id. (citing
`Ex. 1023 ¶¶ 67–68, 134–136). Petitioner thus contends that a person of
`ordinary skill in the art would have had reason to use “an MR head when
`reproducing a signal recorded on Matsuno’s medium, as doing so would
`allow for further enhancements of recording density, a goal shared by both
`Matsuno and Endo.” Pet. 28 (citing Ex. 1023 ¶ 135).
` Patent Owner argues that a person of ordinary skill in the art would
`not have been motivated to combine Matsuno with Endo “because there is
`no teaching or suggestion in Matsuno which would have led one of skill in
`the art to look to Endo for any reason.” PO Resp. 29–30. Patent Owner
`contends that Matsuno and Endo are directed to solving very different
`problems, with Matsuno being directed to “a narrow problem of
`ameliorating fatal errors” and Endo attempting to solve the problem of
`“achieving high electromagnetic conversion and low dropout while
`maintaining high drivability and high durability.” Id. at 30 (citing Ex. 1004,
`Abstract, ¶¶ 8–9; Ex. 1005 ¶ 2).
`Patent Owner also contends that modifying Matsuno with Endo would
`
`
`
`17
`
`
`
`IPR2017-00800
`Patent 6,767,612 B2
`
`change Matsuno’s principle of operation. Id. at 31. Specifically, Patent
`Owner argues that Matsuno ameliorates fatal errors by limiting pits having a
`depth of 50 nm or more, and “also cautions against adopting conditions that
`negatively affect durability and balancing such conditions with the potential
`adverse effects on electromagnetic conversion.” Id. at 30–31 (citing
`Ex. 2021 ¶ 73; Ex. 1004 ¶¶ 37, 44, 47). Patent Owner further argues that
`Endo teaches “that micro depressions are necessary for appropriate
`lubrication when surface roughness is reduced so as to maintain durability.”
`Id. at 31. Patent Owner thus asserts that a person of ordinary skill in the art
`would not have modified Matsuno to include Endo’s surface roughness
`properties without also including Endo’s microdepressions, in order to
`maintain the durability of the magnetic tape. Id. (citing Ex. 2021 ¶ 73).
`According to Patent Owner, however, forming Endo’s
`microdepressions in Matsuno’s magnetic layer “would change the principle
`of operation of Matsuno because it would result in a medium with a number
`of pits that far surpasses Matsuno’s number and depth limitations.” PO
`Resp. 31; see also id. at 21–22 (arguing that because Endo allows a “vastly
`larger” number of pits than Matsuno, and does not set a depth limit on
`microdepressions, modifying Matsuno in view of Endo would likely result
`in a magnetic layer that had too many pits exceeding a depth of 50 nm,
`therefore “running afoul of Matsuno’s teachings”).
`In reply, Petitioner argues that Patent Owner has taken an exceedingly
`narrow view of the problems Matsuno and Endo attempt to solve. Reply 7.
`According to Petitioner, “Matsuno and Endo are directed to solving very
`similar problems—namely, how to improve the performance of high-density
`recording media by controlling surface characteristics.” Id. at 8 (citing
`
`
`
`18
`
`
`
`IPR2017-00800
`Patent 6,767,612 B2
`
`Ex. 1051, 79:10–17, 92:25–93:5, 138:24–139:18). Petitioner also asserts
`that Patent Owner’s incompatibility arguments are “not supported by law
`because ‘it is not necessary that [prior art references] be physically
`combinable to render obvious [a challenged claim].’” Id. at 10 (citing Allied
`Erecting & Dismantling Co., v. Genesis Attachments, LLC, 825 F.3d 1373,
`1381 (Fed. Cir. 2016)).
`Petitioner also argues that Patent Owner incorrectly characterizes
`Matsuno as “restrictive” and Endo as “liberally permissive” when describing
`the number of pits each reference allows. Id. at 12. Instead, Petitioner
`contends that both references limit large and/or deep pits to minimize
`performance degradation, but allow shallow pits. Id. at 13 (arguing that
`Matsuno “places no limitation whatsoever on any pits of a depth shallower
`than 50 nm”).
`
`2. Analysis
`Evidence of a motivation to combine prior art references “may flow
`from the prior art references themselves [or] the knowledge of one of
`ordinary skill in the art.” Brown & Williams
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