DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
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`LSI Corporation and Avago Technologies U.S. Inc., Petitioners
`v.
`Regents of the University of Minnesota, Patent Owner
`IPR2017‐01068
`Patent 5,859,601
`January 19, 2021
`
`UMN EXHIBIT 2038
`LSI Corp. et al. v. Regents of Univ. of Minn.
`IPR2017-01068
`
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`Page 1 of 63
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`LSI Corporation and Avago Technologies U.S. Inc., Petitioners
`v.
`Regents of the University of Minnesota, Patent Owner
`IPR2017‐01068
`Patent 5,859,601
`January 19, 2021
`
`UMN EXHIBIT 2038
`LSI Corp. et al. v. Regents of Univ. of Minn.
`IPR2017-01068
`
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`Page 1 of 63
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`The Board Should Confirm the
`Patentability of the Challenged Claims
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`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
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`• Evidence of Record
`• Moon Declaration
`• Expert Declarations and Depositions
`• Background of the Technology and the Challenged
`Claims
`• Petitioners’ Two Narrow Section 102 Challenges Fail
`• Challenge limited to only three claims – Claims 13, 14 and 17
`• Challenge limited to alleged anticipation by two patents
`• Okada Patent Does Not Anticipate
`• Tsang Patent Is Not Prior Art
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`Inventors of ‘601 Patent
`Dr. Barrett Brickner
`• Then PhD student at UMN
`advised by Dr. Moon
`
`Dr. Jaekyun (“Jae”) Moon
`• Then professor at UMN
`• Currently professor at KAIST
`
`• Dr. Moon provided detailed declaration supported by
`contemporaneous, corroborating documents.
`• Petitioners do not dispute the facts.
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`Declarations from the Experts
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`• For Patent Owner
`• Prof. Steven McLaughlin
`• Provost, Georgia Tech
`• Expert in coding technologies
`for magnetic and optical
`recording
`• Appointed by Judge Posner as
`independent technical advisor
`in high‐tech patent case
`• Testimony entirely consistent
`
`• For Petitioners
`• Prof. Emina Soljanin
`• Professor, Elec. & Computer Eng.,
`Rutgers University
`• Three important inconsistencies
`between her declaration and
`other testimony
`• Admitted she is “not familiar
`with optical recording physics,”
`see Ex. 2011, p. 72
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`Soljanin’s Inconsistent Testimony
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`1) Soljanin Professed an Inability to Understand
`the Claims
`• In related litigation, testified that five claim terms in
`Challenged Claims are indefinite, i.e. they fail to
`inform, with reasonable certainty, those skilled in
`the art about the scope of the invention.
`• See Ex. 2007.
`• Now finds those claim elements in Okada and Tsang
`without even construing those terms.
`• See Ex. 1010, ¶ 75.
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`Soljanin’s Inconsistent Testimony
`2) Soljanin Contradicted Herself Regarding What Constitutes a
`“Transition” in Okada
`• Did not define “transitions” in her declaration. See Ex. 1010, Section VI.
`• Testified in her declaration that “1” in the output of Okada’s NRZi
`modulator was a “transition.” See, e.g., Ex. 1010, ¶ 101.
`
`• But, on cross‐examination, testified:
`• 0‐to‐1 and 1‐to‐0 flips in the NRZi modulator are transitions.
`See Ex. 2011, pp. 53‐54.
`• In magnetic recording, transition is “from one polarization to another.”
`See Ex. 2011, p. 56.
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`Soljanin’s Inconsistent Testimony
`3) Soljanin Contradicted Herself and Petitioners Regarding the j Value
`in Okada
`• Direct testimony: j = 2 in Okada. See, e.g., Ex. 101, ¶ 101.
`
`• Cross examination: j in Okada is 4 … or 8 … or 12. See Ex. 2011, pp. 92‐93.
`• Her own tables (Ex. 1011) show that j can be 20. See Ex. 2017, ¶ 85.
`• Even Petitioners disagree with her, asserting in Petitioners’ Response that
`j=8 if just Rule (2) is considered. See Paper 46, p. 16.
`• Petitioners’ new theory is wrong too; j can be 12 under Rule (2) per LSI’s
`interpretation of “transition.” See Paper 51, pp. 17‐18.
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`Writing Data to a Magnetic Disk
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`• Write head magnetically polarizes microscopic, magnetic bit
`regions on track of disk.
`
`Longitudinal Recording
`Bit regions polarized in plane of medium
`
`Ex. 2017, ¶¶ 7‐8; Ex. 2016, ¶¶ 19‐20; Ex. 2023
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`Perpendicular Recording
`Bit regions polarized perpendicular
`to plane of medium
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`Writing Data to a Magnetic Disk
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`• The two possible magnetic orientations of the bit
`regions can be used to store binary data.
`• A reversal in the magnetic orientation between two
`adjacent regions is called a “transition.”
`
`No Transition
`
`Transition
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`Ex. 2017, ¶¶ 9‐10; Ex. 2016, ¶21
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`Writing Data to a Magnetic Disk
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`NRZI Recording Format
`• Binary “1” written by transition; binary “0” written
`by non‐transition
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`NRZ Recording Format
`• Binary “1” written by magnetizing bit region in one
`direction; binary “0” written by magnetizing bit
`region in opposite direction
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`Ex. 2017, ¶ 12; Ex. 2016, ¶¶ 22‐23
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`Reading Data from a Magnetic Disk
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`• A read head generates a readback
`signal from sensing the magnetic
`orientations of the bit regions.
`• A detector detects the written data
`from the readback signal using a
`trellis‐based Viterbi algorithm.
`• Noise in the readback signal
`complicates the detection process.
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`Ex. 2017, ¶¶ 14‐23; Ex. 2016, ¶¶ 24‐32; Ex. 2023
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`Media Noise
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`• Media noise is major noise source in high‐
`density HDDs.
`• Arises because boundaries between bit regions
`of opposite magnetic polarities are not straight.
`Instead, transitions are jagged.
`• Media noise increases as data density increases.
`• Degree and extent of jaggedness depends on the
`sequence written to the disk.
`• Sequences with more transitions have more media
`noise than sequences with fewer or no transitions.
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`Ex. 2017, ¶¶ 25‐26; Ex. 2016, ¶ 32; Ex. 2023
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`Problem Addressed by ‘601 Patent
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`T – Transition
`NT – Non‐transition
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`• Each of the above sequences has at least 2 consecutive transitions
`• Each pair would be “numerically close” with the Viterbi algorithm,
`leading to potential errors
`• Are there ways to encode the data to be written to the disk that
`reduce media noise effects … yet that do not impose a high rate
`penalty?
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`Ex. 2017, ¶¶ 27‐30; Ex. 2016, ¶¶ 34‐36; Ex. 1001
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`Solution of ‘601 Patent
`• Maximum Transition Run (MTR) Codes
`• Use j and k constraints
`• j is maximum number of consecutive transitions
`• k is maximum number of nontransitions between transitions
`• If j=2, sequences with back‐to‐back transitions permitted,
`but 3 consecutive transitions are prohibited
`• Encoder encodes an incoming m‐bit dataword into a n‐bit
`codeword using MTR code
`• n > m
`• N‐bit codeword then written to disk – “recorded waveform”
`
`Ex. 2017, ¶ 35; Ex. 2016, ¶ 38; Ex. 1001
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`Solution of ‘601 Patent
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`• Example m=4, n=5 MTR Code at Fig. 6
`where j=2 and k=8
`• NRZI recording example (where 1
`represents a transition and 0 represents a
`nontransition)
`• No codeword has more than two
`consecutive transitions (represented by 1s)
`• Even if two code words are concatenated:
`• Still no more than two consecutive transitions
`• And no more than eight consecutive
`nontransitions (represented by 0s)
`
`Ex. 2017, ¶ 37; Ex. 1001
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`Beauty of MTR Codes
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`• Reduce errors in reading process by reducing
`sequences that lead to errors (i.e., sequences with
`too many consecutive transitions)
`• Relatively low rate penalty
`As a result, the detector can withstand more noise and/or
`high data density for relatively small rate penalty
`Ex. 2017, ¶¶ 36‐38; Ex. 2016, ¶ 39; Ex. 1001
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`The ‘601 Patent
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`Challenged Claims ‐ Claim 13
`
`Ex. 1001, col. 10:46‐59
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`Challenged Claims — Claim 13
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`Encoding step
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`• Datawords are m bits long
`• Codewords are n bits long
`• n is greater than m
`• Example is m=4, n=5 code at Fig. 6
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`Challenged Claims — Claim 13
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`Imposition of MTR constraints in the encoding
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`Effect of MTR constraints
`• No more than j consecutive transitions
`in recorded waveform
`• No more than k consecutive
`nontransitions in recorded waveform
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`Other Challenged Claims
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`• Dependent claim 14: 2 < j < 10
`• Dependent claim 17: NRZ recording format
`• Transitions are represented by 0‐to‐1 and 1‐to‐0
`• Depends from claim 14
`
`Transition
`
`Transition
`
`NRZ Recording Example
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`Under Any of Petitioners’ Evolving Theories
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`Okada Does Not Anticipate
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`• Description of Okada’s Optical Recording System
`• Three Reasons that the Board Should Reject
`Petitioners’ Argument that Okada Anticipates
`• Okada Does Not Limit “Transitions”
`• The Board Should Decline to Consider Petitioners’ New
`Theory
`• Okada Does Not Anticipate Even Under the New Theory
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`Description of Okada’s Optical
`Recording System
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`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
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`• Optical recording system
`that uses peak detector
`• Okada’s encoding technique
`is designed to prevent light
`source from being turned
`“on” for three consecutive
`cycles
`• Different problem than in
`magnetic recording
`• Eliminates the need for a
`second peak detector
`
`Ex. 2017, ¶¶ 58‐65; Ex. 1007
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`Okada’s Encoding Process
`• First, 8‐13 conversion (element 10 in Fig. 6)
`• 8‐bit dataword converted to 13‐bit codeword
`• Encoding according to either Rule (1)
`or Rule (2) (depending on the dataword)
`• Second, NRZi Modulation (element 6)
`• Output of NRZi Modulator supplied to
`light source (element 3) for writing to
`optical disk
`• “Recorded waveform”
`• Rules (1) and (2) designed so that output of
`NRZi modulator does not have more than 3
`consecutive 1’s
`
`Ex. 2017, ¶¶ 66‐73; Ex. 1007
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`Okada’s Encoding Process
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`• 8‐to‐13 Conversion
`• Rule (1): 13‐bit output pattern consists of at least one
`“0” and an even number of “1”s. See Okada at Tables 1‐7.
`• Rule (2): 13‐bit output pattern includes a section consisting
`of “01010” and a second consisting of at least one “0” and
`an even number of consecutive “1”s.
`Ex. 2017, ¶ 71; Ex. 1007
`• NRZi Modulation
`• If bit in output of 8‐to‐13 converter is “0”, the NRZi
`modulated bit is the same as prior bit.
`• If bit in output of 8‐to‐13 converter is “1”, the NRZi
`modulated bit is an inversion of prior bit (0 to 1 or 1 to 0).
`Ex. 2017, ¶ 68; Ex. 1007
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`Okada’s Encoding Process
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`Example in Okada
`• 8‐bit input is E8 in hexadecimal (11101000 in binary)
`• Output of 8‐to‐13 converter is 0010100110000
`• Rule (1) – See Table 7
`• 13‐bit pattern, after NRZi modulation, is 0011000100000
`• This pattern written to optical disk, even according Prof. Soljanin
`
`‐ 2nd column is output of Okada’s 8‐13 converter
`‐ 3rd column is output of Okada’s NRZi modulator
`and written to disk.
`
`Ex. 1011
`
`Soljanin Tr. (Ex. 2011), pp. 81‐83.
`• No more than three consecutive 1s, so Okada’s light source is
`not turned ON for three consecutive cycles
`Ex. 2017, ¶ 73; Ex. 1007
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`Okada Does Not Limit “Transitions”
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`• The Board should construe “transitions” in the Challenged
`Claims to mean “a reversal in the magnetic orientation of
`adjacent bit regions along a recording track of a magnetic
`recording medium”
`• Supported by intrinsic evidence
`• Supported by reliable extrinsic evidence
`• LSI offers no construction and cannot apply its
`“interpretation” consistently
`• Okada does not limit “transitions” so construed
`• Fatal to both Petitioners’ original and new Okada
`anticipation theories
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`Okada Does Not Limit “Transitions”
`Applicable legal principles support UMN’s construction
`
`“The construction that stays true to the claim language
`and most naturally aligns with the patent’s description of
`the invention will be, in the end, the correct construction.”
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d
`1348, 1361 (Fed. Cir. 2013)
`
`“[P]roper claim construction . . . demands interpretation of
`the entire claim in context, not a single element in
`isolation.”
`
`Unified Patents, LLC v. Korean Advanced Institute of Sci. and Tech.,
`IPR2019‐00725, Paper 42, 2020 WL 5521438 at *5 (PTAB Sept. 14, 2020)
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`Okada Does Not Limit “Transitions”
`Applicable legal principles support UMN’s construction
`
`“[A] person of ordinary skill in the art is deemed to read
`the claim term not only in the context of the particular
`claim in which the disputed term appears, but in the
`context of the entire patent, including the specification.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)
`
`Claim construction “is not based on the claim language in a
`vacuum, as the appropriate meaning of the claim language
`emerges when viewing the claim in the context of the
`specification.”
`
`Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015‐01974, Paper 49, 2017 WL
`1052455 at *3 (PTAB Mar. 16, 2017)
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`Okada Does Not Limit “Transitions”
`Supported by intrinsic evidence
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`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
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`Ex. 1001, col. 4:1‐4
`E2PR4 is a magnetic recording format.
`See Ex. 1029, pp.391‐92.
`
`Ex. 1001, col. 4:31‐34
`
`Ex. 1001, col. 2:40‐61
`
`Ex. 1001, col. 4:31‐34
`Ex. 1001, col. 2:65‐3:1
`• Petitioners offer nothing to the contrary from the specification.
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`Okada Does Not Limit “Transitions”
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` UMN’s construction is supported by:
`Evidence publicly available at the time of the prosecution, e.g., dictionaries and
`treatises; and
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`
`
` Undisputed expert testimony.
`
`The Federal Circuit has identified these types of extrinsic evidence as
`potentially reliable and useful. See, e.g.,
`
`“A dictionary definition has the value of being an unbiased source accessible to the
`public in advance of litigation.”
`
`“[E]xpert testimony can be useful to a court for a variety of purposes, such as to
`provide background on the technology at issue, to explain how an invention works,
`to ensure that the court’s understanding of the technical aspects of the patent is
`consistent with that of a person of skill in the art, or to establish that a particular
`term in the patent or the prior art has a particular meaning in the pertinent field.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1318, 1322 (Fed. Cir. 2005) (en banc)
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`Okada Does Not Limit “Transitions”
`Supported by reliable extrinsic evidence such as
`dictionaries, treatises or expert testimony
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`P. Siegal, “Recording Codes for Digital Magnetic Storage,” IEEE Trans.
`on Magnetics, vol. Mag.‐21, no. 5, Sept. 1985 (Ex. 2026) at p. 1344
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`• Dr. McLaughlin’s undisputed testimony regarding understanding by PHOSITA
`corroborated by Dr. Soljanin (see Ex. 2011, pp. 56‐57).
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`Okada Does Not Limit “Transitions”
`No evidence supports LSI’s assertion that “transition”
`is merely a numeric change (i.e., binary sequence)
`• Claim 13 requires “transitions” to be manifested “in the recorded
`waveform”
`• Transition in waveform is a reversal in the magnetic orientation, not 0s or 1s
`• Claim 17 limits recording format to NRZ – “1” represents a positive
`level in the magnetization waveform and “0” represents a negative
`level in the same waveform
`
`• McLaughlin and Moon testimony consistent
`• UMN’s construction of “transition” does not require disclaimer
`• Construction does not stray from ordinary and customary meaning of
`“transition” in context of ‘601 Patent
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`Okada Does Not Limit “Transitions”
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` Unlike UMN, Petitioners have presented extrinsic evidence that is
`irrelevant to claim construction.
` Nothing in Petitioners’ extrinsic evidence construes “transition” under the
`Phillips standard.
`
`Extrinsic evidence of the type offered by Petitioners is “less
`reliable than the patent and its prosecution history” and is
`“unlikely to result in a reliable interpretation.”
`Phillips v. AWH Corp., 415 F.3d 1303, 1318, 1322 (Fed. Cir. 2005) (en banc)
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`Okada Does Not Limit “Transitions”
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` The documents Petitioners cite should be accorded no weight for
`purposes of claim construction:
`1) Exs. 1014‐1021 — Petitioners did not establish that these exhibits are the
`type of information that a PHOSITA would rely upon, making them irrelevant
`to claim construction.
`
`See, e.g., Brookhill‐Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003) (references that are
`“not contemporaneous with the patent [and] do not reflect the meanings that would have been attributed to the
`words in dispute by persons of ordinary skill in the art” “are not considered in … claim construction analysis”);
`IQASR LLC v. Wendt Corp., 825 Fed. Appx. 900, 904 (Fed. Cir. 2020) (unpublished) (events after issuance have
`limited value “in establishing meaning of the term at the time of invention”).
`
`2) Exs. 1014, 1020‐1021 —Petitioners failed to lay the required foundation for
`the opinions expressed in these exhibits.
`
`3) Exs. 1014, 1020‐1021 — these exhibits are classic hearsay.
`See, e.g., Smart Microwave Sensors GmbH v. Wavetronix LLC, IPR2016‐00488, Paper 57, 2017 WL
`3034507 at *23‐24 (PTAB July 17, 2017) (excluding exhibits as inadmissible hearsay).
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`Okada Does Not Limit “Transitions”
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`Petitioners’ Original Theory of Anticipation Fails
`1) As an optical system, Okada does not limit “transitions”
`under UMN’s proper construction
`2) Even under a general definition of “transition” (i.e., a
`change in state), the “1”s in the output of Okada’s NRZi
`modulator are not “transitions”
`• “1”s in the output of Okada’s NRZi modulator turn ON
`Okada’s optical head, which create “lands” in the optical disk.
`So Okada limits consecutive occurrence of the same state
`(“lands”), not changes in state. Ex. 2017, ¶ 79.
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`The Board Should Decline to Consider
`Petitioners’ New Theory
`Recap of Original Theory
`• “1” in the output of Okada’s NRZi modulator is a
`“transition”
`• Both Rule (1) and Rule (2) satisfy the MTR (j,k)
`constraints
`
`Petition, p. 24
`j=2
`• UMN waived preliminary response. Paper 34.
`• Board instituted based on the original theory. Paper 35.
`
`Petition, p. 31
`j=2
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`The Board Should Decline to Consider
`Petitioners’ New Theory
`Petitioners’ New Theory of Anticipation – What is it?
`• Instead of 1s representing transitions, the Petitioners now
`assert that 0‐to‐1 and 1‐to‐0 flips in the output of Okada’s
`NRZi modulator (the “recorded waveform”) are transitions
`• Only consider Okada’s Rule (2), so asserting, without
`support, that:
`• Rule (1) and Rule (2) are separate methods
`• Rule (1) can be ignored
`
`Paper 46, pp. 14‐16
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`The Board Should Decline to Consider
`Petitioners’ New Theory
`• New Theory – in Petitioner’s Reply (Paper 46)
`1) 0‐to‐1 or 1‐to‐0 in the output of Okada’s NRZi modulator is a “transition.”
`
`Paper 46, p. 16
`2) Rule (2) alone satisfies the MTR (j,k) constraints
`
`Paper 46, p. 16
`j=8
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`Paper 46, pp. 14, 15
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`The Board Should Decline to Consider
`Petitioners’ New Theory
`Trial Practice Guide Prohibits New Theories in Petitioners’ Reply
`“[Petitioner] chose which grounds of invalidity to assert in its petition
`and it chose not to assert this new one. Unlike district court litigation …
`the expedited nature of IPRs bring with it an obligation for petitioners to
`make their case in their petition to institute.”
`Intelligent Bio‐Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
`
`“Petitioner may not submit new evidence or argument in reply that it
`could have presented earlier … [O]ur rules require a petition to include
`information sufficient to show how and why the properly construed
`claims are unpatentable over the asserted prior art. … Because
`Petitioner did not [include the theory] in the Petition, we do not
`consider that new theory.”
`
`Apple Inc. v. Qualcomm Inc., IPR2018‐01252, Paper 28, 2020 WL 373197, at *9, 11 (PTAB Jan.
`22, 2020) (citing Trial Practice Guide Update (Aug. 2018) at 14)
`
`42
`
`
`Page 42 of 63
`
`
`
`Petitioners’ New Theory for Rule (2) Alone –
`Still Fails on The Merits
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`New Theory Fails for Three Reasons
`1) No “transitions,” properly construed as requiring reversals
`in magnetic orientation
`• Previously addressed in connection with original theory
`2) New theory lacks evidentiary support
`3) Rule 2 alone permits up to 12 consecutive “transitions”
`
`43
`
`
`Page 43 of 63
`
`
`
`Petitioners’ New Theory for Rule (2) Alone –
`Still Fails on The Merits
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`2) New theory lacks evidentiary support:
`• No expert testified that Okada’s encoder can operate with only
`one of Okada’s Rules (1) and (2)
`• Okada needs both rules to encode all of the possible 256, 8‐bit
`datawords
`• Petitioners’ “separate method” theory eliminates 84% of
`possible datawords
`• Petitioners have not established that the “Rule (2) standing
`alone” method qualifies as an anticipating reference
`• See Elan Pharm., Inc. v. Mayo Found., 346 F.3d 1051, 1055 (Fed. Cir. 2003)
`(“assertedly anticipating reference must be adequate to enable possession
`of the desired subject matter”).
`
`44
`
`
`Page 44 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Petitioners’ New Theory for Rule (2) Alone –
`Still Fails on The Merits
`Petitioners’ New Theory Eliminates 84% of Datawords
`
`45
`
`
`Page 45 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Petitioners’ New Theory for Rule (2) Alone –
`Still Fails on The Merits
`Petitioners’ New Theory Eliminates 84% of Datawords
`
`46
`
`
`Page 46 of 63
`
`
`
`Petitioners’ New Theory for Rule (2) Alone –
`Still Fails on The Merits
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`3) Rule 2 alone permits up to 12 consecutive “transitions”
`
`47
`
`
`Page 47 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Not prior art under § 102(e) or § 102(g)
`
`48
`
`
`Page 48 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Tsang Patent Is Not Prior Art
`
`• Undisputed Background of Inventors’ Disclosures to Tsang
`• Inventors Moon and Bricker authored “Seagate Annual Report”
`• Inventors provided it to Seagate, including Tsang, before filing
`date for Tsang Patent
`• Petitioners concededly rely on portions of Tsang Patent
`that are based on the Seagate Annual Report
`• Inventors tested their invention before filing date for Tsang
`Patent
`• Reasons That Tsang Patent Is Not Prior Art
`• Tsang Patent is not “by another” under § 102(e)
`• Moon and Brickner invented before Tsang
`
`49
`
`
`Page 49 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Undisputed Timeline
`
`1993
`
`1994
`
`Spring 1995
`
`May 1995
`
`•Moon & Brickner
`conceive MTR codes.
`Ex. 2016.
`
`•Moon & Bricker co‐
`author report for
`Seagate. Ex. 2033.
`
`•Moon commences
`coding research for
`high‐density HDDs
`for NSIC. Exs. 2012,
`2016.
`
`•Seagate awards
`Moon research grant
`for coding research.
`Exs. 2032, 2016.
`• Moon’s primary
`contact at Seagate –
`Robert Kost.
`• Kinhing (“Paul”) Tsang
`worked for Kost at
`Seagate.
`
`50
`
`
`Page 50 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Undisputed Timeline
`
`Summer 1995 on
`
`June 1995
`
`September 8, 1995
`
`• June 1995: Moon and
`Brickner present MTR
`code invention at NSIC
`Annual Meeting. Ex.
`1012, reference [1].
`
`• Moon and Brickner
`submit invention
`disclosure form to UMN
`Technology Transfer
`Office. Ex. 2035.
`
`• Moon has numerous in‐
`person meetings and
`telephone calls with Kost
`and Tsang about MTR
`codes. Ex. 2016, ¶ 46.
`• Tsang displayed no
`knowledge of MTR codes
`prior to Moon’s education
`of Tsang about MTR
`codes. Ex. 2016, ¶ 58.
`• Moon and Brickner test
`their invention with
`computer‐implemented
`encoders. Ex. 2016, ¶ 53.
`
`51
`
`
`Page 51 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Undisputed Timeline
`
`September 26, 1995
`
`• Moon and Brickner author “Seagate
`Annual Report” (Ex. 2025).
`•Provided to Seagate. Ex. 2016, ¶ 55.
`•Discloses all elements of claim 13.
`• Ex. 2016, ¶¶ 55, 73
`• Ex. 2017, ¶¶ 96‐104
`•Shows testing results.
`• Both Petition and Soljanin assert that this Seagate Annual
`Report shows invention of MTR codes prior to Tsang Patent’s
`filing date.
`• The Seagate Annual Report—and that invention—was by
`Moon & Brickner, not Tsang
`
`52
`
`
`Page 52 of 63
`
`
`
`Undisputed Timeline
`
`November 1,
`1995
`
`January 31,
`1996
`
`• Kost writes letter to
`UMN that Seagate is
`interested in licensing
`MTR code technology.
`Ex. 2013.
`
`• Tsang files patent
`application.
`• Admits MTR codes “are
`known.”
`• Cites to and reports data
`from Seagate Annual
`Report.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Tsang Patent, Ex. 1009, col. 2
`
`Seagate Annual Report,
`Ex. 2025, p. 6
`
`53
`
`
`Page 53 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Undisputed Timeline
`
`March 4, 1996
`
`April 5, 1996
`
`April 12, 1996
`
`• Moon & Brickner submit
`manuscript to IEEE. Ex.
`1012.
`
`• UMN files provisional
`application.
`
`• Inventors present MTR
`codes at Intermag
`Conference. Ex. 2020.
`
`September 1996
`
`October 15, 1996
`
`January 1998
`
`• IEEE publishes Moon &
`Brickner’s paper.
`Ex. 1012.
`
`• UMN files nonprovisional
`application that claims
`priority to provisional
`application and that
`issues as ‘601 Patent.
`
`• Kost publishes paper
`about MTR codes. Ex.
`2018.
`• Introduction cites
`Moon/Brickner 1996 IEEE
`paper as proposing MTR codes.
`• Cites Tsang Patent only for
`specific 6/7 MTR code.
`
`54
`
`
`Page 54 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Tsang Patent Is Not Prior Art
`Two Independent Reasons:
`1. Tsang Patent is not “by another,” as required by Section
`102(e)
`2. Tsang Patent not filed “before the invention”
`by Moon and Brickner, as required by Section 102(e)
`
`55
`
`
`Page 55 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Tsang Patent Is Not “By Another”
`
`• Tsang Patent is not “by another” because Tsang derived it from
`Moon and Brickner
`• Requirements for “derivation” (see Price v. Symsek, 988 F.2d 1187 (Fed. Cir.
`2003); In re Land, 368 F.3d 866 (CCPA 1966))
`• 102(e) reference patentee learned of applicant’s invention from
`applicant by being associated with applicant
`Undisputed that prior to Jan. 1996 (Tsang Patent filing date), Moon &
`Brickner gave SAR to Seagate and educated Tsang about MTR codes
`• 102(e) reference patentee thereafter describes invention in patent
`application
`Undisputed that Tsang Patent describes MTR codes in patent application
`and cites the SAR as showing prior knowledge of MTR codes
` Petitioners and Soljanin asserted that SAR shows prior invention of MTR
`code
`
`56
`
`
`Page 56 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Tsang Patent Is Not “By Another”
`Key Points of Tsang Cited in Petition Rely on SAR
`• Claim element 13[A]: Petition relies on Tsang Patent’s citation to SAR
`(Petition, p. 38)
`• Claims elements 13[B] and [C]: Petition relies on encoder in Tsang
`Patent (Petition, p. 52)
`• SAR discloses encoder.
`
`• Claim element 13[D]: Petition relies on j=2, k=9 MTR code in Tsang
`Patent (Petition, pp. 52‐53)
`• SAR discloses j=2, k=9 MTR codes
`
`Ex. 2025, pp. 7, 10
`
`57
`
`
`Page 57 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Moon and Brickner Invented Before Tsang
`
`• Two components of making an invention
`• Conception
`Moon and Brickner conceived their MTR invention in Spring
`1995
`• Reduction to Practice
`Moon and Brickner actually reduced the MTR invention to
`practice by at least September 1995
`• Tsang’s filing date is Jan. 31, 1996, which is after the
`actual reduction to practice
`
`58
`
`
`Page 58 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Moon and Brickner Invented Before Tsang
`
`• Conception
`• By at least May 1995, Moon and Brickner conceived
`MTR codes. Ex. 2033.
`
`j=2, k=8 MTR Code
`m=4; n=5
`
`59
`
`
`Page 59 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Moon and Brickner Invented Before Tsang
`• Conception
`• By at least May 1995, Moon
`and Brickner conceived
`MTR codes. Ex. 2033.
`• September 1995 SAR further
`demonstrates conception.
`Ex. 2025.
`
`SAR discloses all elements
`of Challenged Claims. Ex.
`2017, ¶¶ 96‐104.
`
`60
`
`
`Page 60 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Moon and Brickner Invented Before Tsang
`• Conception
`• By at least May 1995, Moon and Brickner conceived MTR codes.
`Ex. 2033.
`• September 1995 SAR further demonstrates conception. Ex.
`2025.
`• Undisputed that the SAR discloses all elements of
`Challenged Claims. Ex. 2017, ¶¶ 96‐104; Ex. 2016,
`¶¶ 55, 73.
`• SAR provides exemplary logic rules for rate 4/5 code and
`describes how similar logic rules could be used for other rate
`codes. Ex. 2025, p. 9; Ex. 1035, pp. 147‐48.
`• Even Petitioners assert that SAR discloses MTR codes.
`• See Petition, p. 6; Soljanin Decl. (Ex. 1010), ¶ 60.
`
`61
`
`
`Page 61 of 63
`
`
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`Moon and Brickner Invented Before Tsang
`
`• Reduction to Practice
`• In 1995, Moon and Brickner used simulations to
`test MTR invention.
`• Simulations corroborated.
`• 601 Patent (Ex. 1001), col. 3:10.
`• 1996 IEEE paper (Ex. 1012), pp. 3933‐34.
`• May 1995 Report to Seagate (Ex. 2033), Fig. 5.
`• September 1995 SAR (Ex. 2025), pp. 17‐18.
`• Simulations included all elements of claim 13. Ex. 2016, ¶ 70.
`• Involved physical encoder. Ex. 1035, pp. 24‐25.
`• Simulations “performed using an actual magnetoresistive (MR)
`head response.” Ex. 2025.
`
`62
`
`
`Page 62 of 63
`
`
`
`Tsang Patent Is Not Prior Art Under § 102(g)
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`• Alleged prior invention under § 102(g) cannot
`be used to cancel a claim in an inter partes
`review because an IPR must be based on prior
`art consisting of patents or printed publications.
`• Becton, Dickinson and Co. v. Baxter Corp., IPR2019‐
`00119, Paper 15 at 17 (PTAB May 3, 2019) (citing 35
`U.S.C. § 311(a)).
`• Petitioners do not refute this.
`
`63
`
`
`Page 63 of 63
`
`
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