Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 13
`
` Entered: August 18, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00809
`Patent 6,703,106 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

`

`IPR2017-00809
`Patent 6,703,106 B2
`
`
`I. INTRODUCTION
`
`Sony Corporation (“Petitioner”) filed a Petition seeking inter partes
`
`review of claims 1–6 (“challenged claims”) of U.S. Patent No. 6,703,106 B2
`
`(Ex. 1001, “the ’106 patent”). Paper 2 (“Pet.”). Fujifilm Corporation
`
`(“Patent Owner”) filed a Patent Owner Preliminary Response to the Petition.
`
`Paper 12 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C.
`
`§ 314(a), which requires demonstration of a reasonable likelihood that
`
`Petitioner would prevail with respect to at least one challenged claim, we
`
`institute an inter partes review of claims 1–6 as discussed below.
`
`Our findings of fact and conclusions of law are based on the record
`
`developed thus far. This is not a final decision as to the patentability of any
`
`challenged claim. Any final decision will be based on the full record
`
`developed during trial.
`
`II. BACKGROUND
`
`A. Related Proceedings
`
`The parties indicate that the ’106 patent is involved in Certain
`
`Magnetic Data Storage Tapes and Cartridges Containing the Same (ITC
`
`Investigation No. 337-TA-1012). Pet. vii; Paper 3, 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 ’106 Patent
`
`The ’106 patent, titled “Magnetic Recording and Reproducing Method
`
`and Magnetic Recording Medium for Use in the Method,” issued on March
`
`9, 2004. Ex. 1001, [54], [45]. The ’106 patent is directed to a high-density
`
`magnetic recording and reproducing method that does not generate noise.
`
`
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`IPR2017-00809
`Patent 6,703,106 B2
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`Id. at 2:16–18. In discussing prior art magnetic recording media, the ’106
`
`patent states that when “higher density recording is done by further lessening
`
`a track width or thinning the magnetic layer thickness, a sufficient S/N
`
`[signal-to-noise] ratio cannot be obtained at reproduction. In particular, the
`
`influence of the abrasive becomes large when an MR [magneto-resistive]
`
`head is used, which causes the degradation of S/N ratio.” Id. at 2:11–15.
`
`The ’106 patent teaches recording and producing a signal in a track
`
`width (A) of less than 5µm on a magnetic recording medium. Id. at 2:32–
`
`35. The magnetic recording medium used in the recording and reproducing
`
`method of the ’106 patent includes a support, a substantially nonmagnetic
`
`lower layer provided on the support, and a magnetic layer containing a
`
`ferromagnetic metal powder, an abrasive, and a binder provided on the
`
`nonmagnetic lower layer, “wherein the average longer size (B) of the
`
`abrasive particle(s) on the magnetic layer surface is ⅓ or less of the track
`
`width (A).” Id. at 2:33–39. According to the ’106 patent, maintaining this
`
`relationship between the average longer size of the abrasive particle(s)
`
`present on the magnetic layer surface and track width provides a magnetic
`
`recording and reproducing system and method that is “optimal for digital
`
`recording” and reproduction with an MR head, and has “excellent”
`
`electromagnetic characteristics. Id. at 2:25–29, 3:11–17.
`
`With regard to abrasives, the ’106 patent states that “[w]ell-known
`
`materials essentially having a Mohs’ hardness of 6 or more” can be used,
`
`and indicates a preference for abrasives having a particle size from 0.01 to
`
`2 µm. Id. at 12:5–23. The ’106 patent also discloses a process for preparing
`
`the magnetic coating solution for use in the magnetic recording medium,
`
`which includes at least a kneading step and a dispersing step, and optionally
`
`
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`IPR2017-00809
`Patent 6,703,106 B2
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`a blending step. Id. at 18:39–54. According to the ’106 patent, “even when
`
`the same abrasive is used, the average longer size of the abrasive becomes
`
`large depending upon the dispersion condition of the abrasive.” Id. at
`
`25:10–13.
`
`The ’106 patent also provides a method for determining the average
`
`longer size of the abrasive particles that includes subjecting a magnetic layer
`
`surface to plasma treatment, drying the surface, observing the particles using
`
`an electron microscope, “measuring the largest value of the width (i.e., the
`
`longer size), and taking the average value of 50 abrasive particles and/or
`
`cluster mainly comprising abrasives as the average longer size.” Id. at 3:20–
`
`40.
`
`The ’106 patent describes several embodiments of the invention
`
`disclosed therein, as well as comparative examples, and provides a table
`
`comparing measured properties of each. Id. at 21:25–24:22, Table 1. These
`
`properties include the average longer size of the abrasive, track width, and
`
`S/N ratio. Id. at Table 1.
`
`C. Challenged Claims
`
`Petitioner challenges claims 1–6 of the ’106 patent. Claim 1 is
`
`illustrative, and is reproduced below:
`
`1. A magnetic
`reproducing method
`recording and
`comprising recording and reproducing a signal with a
`magnetic head in a track width (A) of less than 5 μm on
`a magnetic recording medium comprising a support
`having provided thereon a magnetic layer containing at
`least a ferromagnetic powder, an abrasive and a binder,
`wherein the average longer size (B) of the abrasive
`particle(s) which are present on the magnetic layer
`surface is ⅓ or less of the track width (A).
`
`Ex. 1001, 26:5–14.
`
`
`
`
`
`4
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`IPR2017-00809
`Patent 6,703,106 B2
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`
`D. References
`
`Yamazaki et al., U.S. Patent No. 6,017,605, issued Jan. 25, 2000
`(“Yamazaki,” Ex. 1004).
`
`Araki et al., U.S. Patent. No. 6,149,989, issued Nov. 21, 2000
`(“Araki,” Ex. 1006).
`
`Endo et al., JP 2000-40218A, published Feb. 8, 2000 (“Endo,”
`Ex. 1005).
`
`E. The Asserted Grounds
`
`Reference(s)
`
`Statutory Basis
`
`Claims Challenged
`
`Yamazaki
`
`Yamazaki
`
`Yamazaki and Endo
`
`Yamazaki and Araki
`
`
`
`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`1–6
`
`1–6
`
`1–6
`
`1–6
`
`Petitioner also relies on the Declaration of David B. Bogy, Ph.D. (Ex. 1015,
`
`“the Bogy Declaration”).1
`
`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
`
`
`1 Exhibit 1015 is the Corrected Declaration of Dr. Bogy. Dr. Bogy’s
`original Declaration remains part of the record as Exhibit 1002.
`
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`IPR2017-00809
`Patent 6,703,106 B2
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`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 proposes specific constructions for several claim terms
`
`under the broadest reasonable interpretation standard, including “track
`
`width,” “average longer size (B) of the abrasive particle(s),” and “present on
`
`the magnetic layer surface.” Pet. 15–25. Patent Owner offers a proposed
`
`construction for “average longer size (B) of the abrasive particle(s),” and
`
`contends that the remaining terms should be interpreted in accordance with
`
`their plain and ordinary meaning. Prelim. Resp. 11. Additionally, Patent
`
`Owner contends that Petitioner fails to demonstrate a reasonable likelihood
`
`that any of the challenged claims are unpatentable even if the Board adopts
`
`Petitioner’s constructions. Id. at 10.
`
` Patent Owner also argues that the Board should deny the Petition
`
`because Petitioner contends that the claims are indefinite and “does not
`
`explain ‘[h]ow the challenged claim is to be construed,’ as required by Rule
`
`42.104(b)(3), or even attempt to demonstrate that the claim language
`
`informs the scope of the invention to a [person of ordinary skill in the art]
`
`with reasonable certainty.” Id. at 15–16. We are not persuaded by Patent
`
`Owner’s argument. Although Petitioner indicates that it has raised
`
`arguments under 35 U.S.C. § 112 in the aforementioned ITC proceeding,
`
`Petitioner does explain sufficiently how the challenged claims should be
`
`construed under the broadest reasonable interpretation standard in this
`
`proceeding, and we are able to ascertain the proper claim scope to allow us
`
`to apply the asserted prior art to the challenged claims.
`
`
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`IPR2017-00809
`Patent 6,703,106 B2
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`
`For purposes of this Decision, based on the record before us, it is
`
`necessary to address only the construction of “track width” and “average
`
`longer size (B) of the abrasive particle(s).” 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.”)
`
`i.
`
`track width
`
`Petitioner notes that “track width” is recited in the claims, but is not
`
`defined in the Specification of the ’106 patent. Pet. 15. Petitioner contends
`
`that a person of ordinary skill in the art would have been aware of several
`
`possible measurements that can be used to represent track width in a
`
`magnetic recording medium, including (1) the reciprocal of the track
`
`density, (2) the width of the data recorded within the track, and (3) the width
`
`of the read head used to reproduce the data. Id. at 16.
`
`According to Petitioner, measuring track width based on the data
`
`recorded within the track results in a value less than (e.g., 70–90% of) the
`
`width measured as the reciprocal of track density “because it is conventional
`
`to leave some space between the recorded data of adjacent tracks.” Id.
`
`Similarly, read head widths are typically 60–80% smaller than reciprocal
`
`track density widths for magnetic disks, and 50–80 % smaller for magnetic
`
`tapes. Id. at 16–17 (citing Ex. 1015 ¶ 55).
`
`Petitioner argues that the ’106 patent uses track width to refer to the
`
`read head width, as well as the width of the recorded track, without
`
`specifying whether this is measured as data width or the reciprocal of track
`
`density. Id. at 17 (citing Ex. 1001, 2:8–16, 24:26–37). Petitioner thus
`
`contends that the broadest reasonable interpretation of “track width” should
`
`
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`IPR2017-00809
`Patent 6,703,106 B2
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`include track width values based on the reciprocal of track density, the width
`
`of recorded data, or the width of the read head. Id. at 18.
`
`Based on the current record, in view of Petitioner’s analysis and
`
`evidence and the lack of any response from Patent Owner, we adopt
`
`Petitioner’s proposed construction for purposes of this Decision.
`
`ii.
`
`average longer size (B) of the abrasive particle(s)
`
`We first note the parties agree that the term “particles(s)” in this term
`
`should be construed to mean “particles and/or clusters,” consistent with the
`
`description of how the average longer size of particles is measured in the
`
`Specification of the ’106 patent. Pet. 20; Prelim. Resp. 12; Ex. 1001, 3:20–
`
`33 (“The average longer size of an abrasive particle(s) is obtained by . . .
`
`observing the abrasive particle(s) and/or clusters mainly comprising
`
`abrasives . . . .”). As noted by Patent Owner, the parties appear to agree on
`
`how to measure the “average longer size (B)” of an abrasive particle.
`
`Prelim. Resp. 13–14; Pet. 23–24.
`
`Petitioner proposes that the broadest reasonable interpretation of
`
`“average longer size (B) of the abrasive particle(s)” is “the average longest
`
`dimension of abrasive particles and/or clusters.” Pet. 20–22.2 Patent Owner
`
`argues that this term should be construed as “average longer size of the
`
`abrasive particles and/or clusters.” Prelim. Resp. 12. Patent Owner
`
`
`2 Petitioner contends that the average longer size of the abrasive particles
`and/or clusters “can be measured from individual particles alone, from
`clusters of any size alone, or from any combination of particles and clusters
`anywhere on the magnetic layer surface,” in accordance with the plain and
`ordinary meaning of the term “and/or.” Pet. 21–22. We agree with
`Petitioner, but find it unnecessary to expressly incorporate this language into
`the broadest reasonable construction of the claim term.
`
`
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`IPR2017-00809
`Patent 6,703,106 B2
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`contends that Petitioner’s proposed construction narrows the meaning of this
`
`claim term by replacing the word “longer” with “longest.” Id.
`
`In view of the parties’ agreement regarding the definition of
`
`“particles,” we adopt Patent Owner’s proposed construction, which
`
`otherwise maintains the language used in the claims themselves. Petitioner
`
`has not explained adequately why the proper construction of the term should
`
`include the word “longest” instead of “longer.” Accordingly, the broadest
`
`reasonable interpretation of “average longer size (B) of the abrasive
`
`particle(s)” is “average longer size of the abrasive particles and/or clusters.”
`
`B. Person 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 one of the prior qualifications.
`
`Pet. 14–15; Ex. 1015 ¶ 16. In the Preliminary Response, Patent Owner does
`
`not take a position on the appropriate level of skill in the art. Prelim. Resp.
`
`10, n.3. Instead, Patent Owner contends that even under Petitioner’s
`
`definition, Petitioner fails to show a reasonable likelihood that the
`
`challenged claims are unpatentable. Id. at 9–10. Accordingly, for purposes
`
`of this Decision, we adopt Petitioner’s definition of a person of ordinary skill
`
`in the art.
`
`
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`IPR2017-00809
`Patent 6,703,106 B2
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`
`C. Anticipation by Yamazaki
`
`i. Yamazaki (Ex. 1004)
`
`Yamazaki discloses a magnetic recording medium capable of high-
`
`density recording comprising a magnetic layer that contains a ferromagnetic
`
`metal fine powder or a hexagonal ferrite fine powder, on a substantially
`
`nonmagnetic lower layer. Ex. 1004, 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 medium. Id. at 2:44–50.
`
`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).”
`
`Id. at 3:7–13.
`
`Yamazaki teaches using an abrasive in the magnetic layer, and
`
`explains that minimizing the particle size and maintaining the dispersability
`
`of the abrasive in the magnetic coating solution can help control the
`
`protrusions on the surface of the magnetic layer. Id. at 4:59–5:3, 16:38–
`
`17:18. Yamazaki describes various 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 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, Tables 2, 3.
`
`
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`Patent 6,703,106 B2
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`
`ii. Analysis
`
`Petitioner argues that Yamazaki anticipates claims 1–6 of the ’106
`
`patent. Pet. 27–42. Petitioner provides claim charts and relies on the Bogy
`
`Declaration in support of its contentions. Id.
`
`
`
`For example, Petitioner contends Yamazaki discloses a magnetic
`
`recording medium that has track widths less than 5 µm and includes an
`
`abrasive in the magnetic layer, as recited in independent claim 1. Id. at 28,
`
`30–31, 36–37. Claim 1 also requires that “the average longer size (B) of the
`
`abrasive particle(s) which are present on the magnetic layer surface is ⅓ or
`
`less of the track width (A)” (referred to herein as the “average longer size”
`
`limitation). Petitioner asserts that Yamazaki discloses the average primary
`
`particle size of the abrasive is “preferably from 0.05 to 1.0 μm, and
`
`particularly preferably from 0.05 to 0.5 μm.” Id. at 31 (quoting Ex. 1004,
`
`16:51–56), 38–39. Petitioner also notes that Yamazaki discloses working
`
`examples that use abrasives having primary particle sizes of 0.12 µm,
`
`0.2 µm, and 0.3 µm. Id. at 31 (citing Ex. 1004, 23:35–66, 27:45–48), 38–39.
`
`
`
`According to Petitioner:
`
`Yamazaki’s disclosed sample preparation and processing
`methods are substantially the same as those used in the ‘106
`patent, and would naturally and substantially certainly result in
`at least some (e.g., at least 50) non-clustered abrasive particles
`that protrude from and/or make contact with the uppermost
`surface of the magnetic layer and can be observed and
`measured using SEM . . . . The average longest dimension of
`these particles would be approximately equal to the disclosed
`average primary particle size, and all of Yamazaki’s examples
`of average particle sizes are less than 1/3 of the example track
`widths that Yamazaki discloses.
`
`Id. at 31–32; see also id. at 33 (arguing that Yamazaki inherently discloses
`
`the “average longer size” limitation of the claims “by disclosure of examples
`
`
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`11
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`IPR2017-00809
`Patent 6,703,106 B2
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`with track densities and average particle sizes that necessarily would have
`
`resulted in individual particles on the magnetic layer surface whose average
`
`longest dimension is 1/3 or less of the disclosed track width”).
`
`
`
`Patent Owner argues that Petitioner fails to demonstrate that
`
`Yamazaki discloses the “average longer size” limitation because Yamazaki
`
`discloses primary abrasive particle sizes, which refers to the size of the raw
`
`material used to form the magnetic layer, and not the actual size of particles
`
`and/or clusters in the magnetic layer itself. Prelim. Resp. 23–24.
`
`
`
`We are persuaded by Patent Owner’s arguments. The claims require
`
`determining the average longer size of the abrasive particle(s) and/or clusters
`
`“which are present on the magnetic layer surface.” The Specification of the
`
`’106 patent discloses that this is accomplished by observing abrasive
`
`particles and/or clusters in the magnetic layer surface itself. Ex. 1001, 3:20–
`
`40. Petitioner does not direct us to any evidence derived from an
`
`observation of abrasive particles and/or clusters in Yamazaki’s magnetic
`
`layer.3 Instead, Petitioner relies on Yamazaki’s disclosure of the primary
`
`particle size of the abrasive, i.e., prior to its incorporation into the magnetic
`
`layer.
`
`“Inherent anticipation requires that the missing descriptive material is
`
`‘necessarily present,’ not merely probably or possibly present, in the prior
`
`
`3 Petitioner’s arguments regarding the Noguchi declaration Patent Owner
`submitted during prosecution of the ’106 patent are similarly deficient. For
`example, Petitioner asserts that “Noguchi’s experiments altered Yamazaki’s
`techniques” rather than replicating them, and concludes, without adequate
`support, that “[h]ad the Noguchi declaration actually replicated Yamazaki’s
`techniques correctly, fewer clusters would have been expected to form, and
`the measured ‘average longer size’ would have been expected to be smaller.
`(Bogy ¶90).” Pet. 34–35; see 37 C.F.R. § 42.65(a).
`
`
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`art.” Trintec Indus., Inc. v. Top–U.S.A. Corp., 295 F.3d 1292, 1295 (Fed.
`
`Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)).
`
`Petitioner, however, has not presented adequate support for the conclusion
`
`that Yamazaki’s processing and sample preparation methods would
`
`“naturally and substantially certainly result in at least some (e.g., at least 50)
`
`non-clustered abrasive particles that protrude from and/or make contact with
`
`the uppermost surface of the magnetic layer.” Pet. 31–32. As Patent Owner
`
`points out, Yamazaki does not provide sufficient evidence regarding how the
`
`abrasive particles behave when added to the magnetic layer. Prelim. Resp.
`
`25–26. Furthermore, Dr. Bogy’s testimony that the average longest
`
`dimension of particles in the magnetic layer “would be approximately equal
`
`to the disclosed average primary particle size” weakens Petitioner’s
`
`inherency argument, as it indicates that there is a difference between primary
`
`particle size and the size of particles and/or clusters in the magnetic layer
`
`surface. Ex. 1015 ¶ 82 (emphasis added).
`
`
`
`For the foregoing reasons, Petitioner has not established sufficiently
`
`that Yamazaki expressly or inherently discloses all limitations of the
`
`challenged claims, and we determine that Petitioner does not show a
`
`reasonable likelihood of prevailing on its assertion that Yamazaki anticipates
`
`claims 1–6 of the ’106 patent.4
`
`D. Obviousness in view of Yamazaki
`
`Petitioner argues that the subject matter of claims 1–6 of the ’106
`
`patent would have been obvious in view of Yamazaki. Pet. 42–51.
`
`
`4 In view of our decision to deny institution on this ground based upon the
`parties’ substantive arguments, we decline to address Patent Owner’s
`argument that we should deny institution of this ground under 35 U.S.C.
`§ 325(d). Prelim. Resp. 17–20.
`
`
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`IPR2017-00809
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`
`In addition to the arguments raised regarding anticipation by
`
`Yamazaki, Petitioner contends that “optimization of Yamazaki’s described
`
`recording media to bring the average size of particles and clusters to 1/3 or
`
`less of the track width would have been the obvious result of . . . routine
`
`experimentation based on the suggestions, motivation, and guidance
`
`provided by Yamazaki.” Id. at 42–43. Specifically, Petitioner asserts that
`
`Yamazaki discloses decreasing the size of nonmagnetic particles (e.g.,
`
`abrasives) protruding from the magnetic layer surface when recording
`
`density (i.e., track width) is decreased in order to reduce noise. Id. at 43
`
`(citing Ex. 1004, 2:44–50, 3:63–4:67). Based on this disclosure, Petitioner
`
`contends that a person of ordinary skill in the art would have understood that
`
`the ratio of average abrasive size to track width is a result-effective variable
`
`that should be optimized to reduce the size of protrusions. Id. at 43–44.
`
`Patent Owner again argues that Yamazaki does not discuss the
`
`“average longer size (B)” of abrasive particles, but instead discusses only the
`
`primary particle size of abrasives. Prelim. Resp. 39. Patent Owner further
`
`argues that Petitioner relies on Yamazaki’s disclosure of the relationship
`
`between primary particle size and the size of three-dimensional protrusions
`
`on the magnetic layer surface, as opposed to the two-dimensional “average
`
`longer size” of abrasive particles. Id. at 41.
`
`As discussed above in Section III.C.ii, Petitioner’s arguments are
`
`based on Yamazaki’s disclosure of primary particle size, as opposed to the
`
`average longer size of the abrasive particles in the magnetic layer surface.
`
`Accordingly, to the extent a person of ordinary skill in the art would have
`
`understood Yamazaki as teaching the ratio of average abrasive particle size
`
`to track width is a result-effective variable, the evidence on this record
`
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`IPR2017-00809
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`suggests that the relationship is based on the primary particle size of the
`
`abrasive, not the “average longer size (B) of the abrasive particle(s) present
`
`on the magnetic layer surface.”
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`Furthermore, we are persuaded by Patent Owner’s argument regarding
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`Yamazaki’s focus on the relationship between noise reduction and the size
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`of three-dimensional protrusions, as opposed to the two-dimensional
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`“average longer size” of abrasive particles. See Prelim. Resp. 40–41. For
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`example, Yamazaki teaches that noise is “suddenly and continuously
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`increased” if an MR (magneto-resistive) head touches the protrusions on the
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`surface of a magnetic layer (Ex. 1004, 2:44–50), and refers to “adjusting
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`particle sizes of ferromagnetic powders (e.g., particle volumes)” to help
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`control protrusions (id. at 4:48–67). We note that Petitioner and Dr. Bogy
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`rely on these portions of Yamazaki in support of their obviousness
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`arguments. Pet. 43–44; Ex. 1015 ¶¶ 109–110.
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`For the foregoing reasons, Petitioner has not established sufficiently
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`that Yamazaki discloses or suggests all limitations of the challenged claims,
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`and we determine that Petitioner does not show a reasonable likelihood of
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`prevailing on its assertion that the subject matter of claims 1–6 of the ’106
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`patent would have been obvious in view of Yamazaki.
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`E. Obviousness in view of Yamazaki and Endo
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`i. Endo (Ex. 1005)
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`Endo is directed to a magnetic recording medium suitable for high-
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`density recording, and having “excellent electromagnetic conversion
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`characteristics and low dropout, as well as excellent drivability and
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`durability.” Ex. 1005 ¶ 1. Endo’s magnetic recording medium has “an
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`uppermost magnetic layer” that includes a ferromagnetic powder and
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`nonmagnetic particles, and Endo discloses that the “particle size of the
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`nonmagnetic particles contained in the uppermost . . . magnetic layer is not
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`greater than 0.12 µm.” Id. ¶¶ 5–6, 15 (stating that the average particle size
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`of the nonmagnetic particles is “more preferably not greater than
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`0.080 µm”). Endo teaches that “[w]hen preparing the upper layer coating
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`material, the nonmagnetic particles are predispersed so that aggregates of the
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`nonmagnetic particles do not form in the upper layer magnetic layer.” Id.
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`¶ 18. Nonmagnetic particles that may help improve the performance of
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`Endo’s magnetic recording medium include “polishing materials made from
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`powder of a substance having Mohs hardness of not less than 7, such as α-
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`alumina and chromium oxide.” Id. ¶ 28.
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`ii. Analysis
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`Petitioner argues that the subject matter of claims 1–6 of the ’106
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`patent would have been obvious in view of the combined teachings of
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`Yamazaki and Endo. Pet. 51–57.
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`Claim 1 requires “[a] magnetic recording and reproducing method
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`comprising recording and reproducing a signal with a magnetic head.”
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`Petitioner asserts that Yamazaki discloses providing a magnetic recording
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`medium for use in a “recording/reproduction system integrated with an
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`MR head.” Id. at 36–37 (quoting Ex. 1005, 2:58–65, 3:35–39, 28:59–61).
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`As to the claim 1 requirement of “a track width (A) of less than
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`5 µm,” Petitioner argues that Yamazaki discloses working examples that
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`involve recording and reproducing a signal with specific track densities of
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`5,200 tracks per inch to 7,500 tracks per inch. Pet. 29, 37. Petitioner notes
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`that track width can be determined based on the reciprocal of track density,
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`and, thus, asserts that Yamazaki discloses track widths of 4.88 µm and
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`3.38 µm, respectively. Id. at 29 (citing Ex. 1004, Tables 2, 3; Ex. 1015
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`¶ 75), 37. Petitioner further asserts that track widths determined based on
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`the width of the recorded data or width of the read head would necessarily
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`be no larger than the reciprocal of track density and, therefore, also would
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`fall within the claimed range. Id. at 30 (citing Ex. 1015 ¶¶ 75–77), 37.
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`Petitioner also argues that Yamazaki’s magnetic recording medium is
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`formed on a support and has a magnetic layer containing a ferromagnetic
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`powder, an abrasive, and a binder, as required by claim 1. Id. at 28 (citing
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`Ex. 1004, Abstract, 4:60–62, 16:38–40), 37–38.
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`Petitioner asserts that Endo also discloses a magnetic recording
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`medium that includes an abrasive in the magnetic layer, and teaches a target
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`abrasive particle size that meets the “average longer size” limitation when
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`applied to Yamazaki’s media. Id. at 53–57. Petitioner argues that Endo
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`teaches that the abrasive particle size should not exceed 0.12 µm in order to
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`avoid problems “such as crowding out the magnetic particles and decreasing
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`the structural strength of the magnetic layer.” Id. at 54–55 (citing Ex. 1005
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`¶ 15). Petitioner further notes that Endo teaches the benefits of dispersing
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`abrasive particles to eliminate clustering; namely, reduced noise and
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`improved performance for high-density magnetic recording media. Id. at 54
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`(quoting Ex. 1005 ¶ 18). Therefore, according to Petitioner, a person of
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`ordinary skill in the art “would have been motivated to incorporate Endo’s
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`separate dispersion steps into Yamazaki’s methods for fabricating magnetic
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`recording media, to achieve the benefits taught by Endo of preventing
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`clustering and thereby reducing noise and improving performance for high-
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`density magnetic recording media.” Id. (citing Ex. 1005, Abstract, ¶¶ 6, 15,
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`18, 25, 28, 40).
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`Petitioner contends that when Endo’s abrasive particles, having a size
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`of 0.12 µm or less, are used in Yamazaki’s media with track widths of 3.38
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`µm or 4.88 µm (based on the reciprocal of track density), the resulting media
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`would satisfy the “average longer size” limitation. Id. at 56–57 (stating that
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`0.12/3.38=0.036 and 0.12/4.88=0.025, which are less than 0.33 (i.e., 1/3) as
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`required by claim 1). Petitioner further argues that the combined teachings
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`of Endo and Yamazaki would satisfy the average longer size limitation even
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`if the claimed track width were measured as the width of the recorded data
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`or the width of the read head. Id. at 56 (noting that the combined teachings
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`of Yamazaki and Endo disclose the “average longer size” limitation “[e]ven
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`if the claimed ‘track width’ were restricted to being measured as read head
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`width and it were assumed that the read head width were 50% of the 1/TPI
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`track width (which is at the extreme end of conventional scaling assumptions
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`. . .)”).
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`Petitioner argues that “[t]here is no evidence, in the ‘106 patent or
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`anywhere else, that the specific ranges recited in claims 1-6 were critical, or
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`that they yielded any new and unexpected results.” Id. at 46, 57. Petitioner
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`further argues that Dr. Bogy’s testimony demonstrates that the data
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`presented in the ’106 patent for the claimed ranges was entirely predictable.
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`Id. at 46 (citing Ex. 1015 ¶¶ 117–129).
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`Petitioner provides similar arguments and evidence in support of its
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`contentions that the subject matter of claims 2–6, which depend from claim
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`1, would have been obvious in view of the combined teachings of Yamazaki
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`and Endo. Id. at 57.
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`Patent Owner argues that Petitioner fails to show that the combination
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`of Yamazaki and Endo discloses the “average longer size” limitation
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`because Endo, like Yamazaki, discloses primary particle sizes. Prelim.
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`Resp. 47. Patent Owner also argues that Yamazaki discloses track density,
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`not actual track width values, and therefore “it is not possible to tell whether
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`a particular value is equal to or less than 1/3 of what the actual track width
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`is. Petitioner has, at best, only demonstrated the mere possibility that
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`abrasive particles could fall wi