IPR2017-01068
`LSI Corporation and Avago Technologies U.S., Inc. v.
`Regents of the University of Minnesota
`Petitioners’ Demonstrative Exhibits
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`LSI Corp. Exhibit 1040
`Page 1
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`
`LSI Corporation and Avago Technologies U.S., Inc. v.
`Regents of the University of Minnesota
`Petitioners’ Demonstrative Exhibits
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`LSI Corp. Exhibit 1040
`Page 1
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`
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`U.S. Patent No. 5,859,601
`Claim Construction
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`2
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`LSI Corp. Exhibit 1040
`Page 2
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`“transitions”
` The only disputed term is “transition(s)” as used in Claim 13 of the ’601 Patent
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`3
`
`Ex. 1001 at 10:46-59
`
`LSI Corp. Exhibit 1040
`Page 3
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`“transitions”
` UMN asks the Board to import multiple “magnetic” limitations into claim 13:
`
`“UMN asserts that the Board should construe the term
`“transition” 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.”
`UMN Resp. at 36 (emphasis added)
`
` Both the intrinsic and extrinsic evidence refute UMN’s construction
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`4
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`LSI Corp. Exhibit 1040
`Page 4
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`“transitions”
` Claim 13 does not say “magnetic”– and UMN’s argument contradicts claim 17
`
`Claim 13 (Ex. 1001 at 10:46-59)
`
`Claim 17 (Ex. 1001 at 11:1-6)
`
`Ex. 1035 at 104:15-22 (UMN’s expert Prof. McLaughlin);
`also LSI Reply at 2-4.
`
`Ex. 1034 at 87:18-88:4 (lead inventor Dr. Moon);
`also LSI Reply at 2-4.
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`5
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`LSI Corp. Exhibit 1040
`Page 5
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`“transitions”
` The specification provides no special definition for “transitions,” nor does it
`contain a “clear and unmistakable disclaimer” of non-magnetic media such
`as optical disks
` The Background of the Invention discusses using channel codes “[i]n optical
`data storage,” and the specification section relied on by UMN only refers only
`to “data storage devices such as magnetic computer disk drives[.]”
`
`Ex. 1001 at 1:61-66; 2:40-47; 59-61;
`see also LSI Reply at 4-5.
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`6
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`LSI Corp. Exhibit 1040
`Page 6
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`“transitions”
` People in the art during the same period—including UMN’s own expert—used
`the term “transitions” in the context of optical storage
`
`Ex. 1032 at 5:45-51 (Immink patent); see Ex. 1035 at 77:8-78:6;
`also LSI Reply at 9 n.3.
`
`Ex. 1033 at 8:34-39 (McLaughlin patent); see Ex. 1035 at 83:3-87:5;
`also LSI Reply at 9 n.3.
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`7
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`LSI Corp. Exhibit 1040
`Page 7
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`“transitions”
` Before this IPR, UMN and Dr. Moon (as well as their patent attorneys) believed
`that claim 13 covers optical recording
`
`Ex. 1021 at 1
`
`Ex. 1020 at 1; see also Exs. 1014-1022 and
`LSI Reply at 6-8 (discussing Exs. 1014-1022)
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`8
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`LSI Corp. Exhibit 1040
`Page 8
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`How to count “transitions”
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`Claim 17 (Ex. 1001 at 11:1-6)
`
`1
`
`3
`
`2
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`Ex. 2011 at 85:4-86:22 (Prof. Soljanin Dep. Tr.); also Ex. 2011 at 53:4-55:9
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`9
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`LSI Corp. Exhibit 1040
`Page 9
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`Counting “transitions” in 0-1-0-1-0
`0-1-0-1-0
`Transitions = 2
`0-1-0-1-0
`Transitions = 2
`0-1-0-1-0
`Transitions = 2
`Transitions = 4
`0-1-0-1-0
` Under any counting method of record, both Okada and Tsang
`still anticipate claims 13, 14, and 17 of the ’601 Patent
`
`1 2
`
`2
`
`3
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`10
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`LSI Corp. Exhibit 1040
`Page 10
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`U.S. Patent No. 5,859,601
`Anticipation by Okada
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`11
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`LSI Corp. Exhibit 1040
`Page 11
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`Overview of Okada
`
`Ex. 1007 Fig. 6 (annotated); see also Ex. 1011; Petition at 17-37; Ex. 1010 at ¶¶ 76-118: LSI Reply at 13-19; Ex. 1035 at 118:14-128:4
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`12
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`LSI Corp. Exhibit 1040
`Page 12
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`NRZ and NRZI in Okada
`
`LSI Reply at 18 (Depo. of Dr. McLaughlin Ex. 1035 at 10:2-4)
`
`NRZ Data After Okada’s
`“NRZI Modulator”
`
`Ex. 1011 at 15
`
`13
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`LSI Corp. Exhibit 1040
`Page 13
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`Okada’s Two Embodiments Separately Anticipate
` Rule 1 embodiment anticipates at least claim 13
`• Maximum run of consecutive 0-1 / 1-0 transitions is finite (“j”
`constraint)
`• Maximum run of 0’s and 1’s is finite (“k” constraint)
` Rule 2 embodiment anticipates claims 13, 14, 17
`• Maximum run of consecutive 0-1 / 1-0 transitions is less than 10
`(“j” <10)
`• Maximum run of 0’s and 1’s is finite (“k” constraint)
`
`See Ex. 1007 at 3:48-4:17 and Tables 1-9; Ex. 1011; Ex. 2011 at 88:22-92:13 (Soljanin Dep. Tr.); Ex. 1035 at 136:8-137:22, 130:4-135:3 (McLaughlin Dep. Tr.);
`see also Petition at at 17-37; Ex. 1010 at ¶¶ 76-118: LSI Reply at 13-19.
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`14
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`LSI Corp. Exhibit 1040
`Page 14
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`U.S. Patent No. 5,859,601
`Anticipation by Tsang
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`15
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`LSI Corp. Exhibit 1040
`Page 15
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`Actual Reduction to Practice: UMN’s Burden
`
`“The burden of showing actual reduction of practice is on the party seeking
`its benefit,” in this case UMN. In re Steed, 802 F.3d 1311, 1318 (Fed. Cir.
`2015).
`
`“To demonstrate an actual reduction to practice, the applicant must
`have: (1) constructed an embodiment or performed a process that met all
`the
`limitations of the claim and (2) determined that the invention would
`work for its intended purpose.” Id. (emphasis added).
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`16
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`LSI Corp. Exhibit 1040
`Page 16
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`UMN’s Simulations Did Not Actually Have
`“Transitions” or “Recorded Waveforms”
` Dr. Moon admitted that UMN’s simulations were entirely virtual
`
`Ex. 1034 at 24:1-26:14; see also LSI Reply at 20-21
`
` UMN did not even simulate claim 17, let alone actually reduce it to practice
`
`See LSI Reply at 21-22
`
` Tellingly UMN’s expert Dr. McLaughlin did not opine that UMN’s simulations
`practiced all the limitations of any challenged claim
`Ex. 1035 at 20:16-21:13
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`17
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`LSI Corp. Exhibit 1040
`Page 17
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`UMN’s Simulations Did Not Show That the
`Invention Would Work For Its Intended Purpose
`
` Here again, Prof. McLaughlin did not opine that UMN’s simulations showed
`that the invention would work for its intended purpose in a real device.
`
`Ex. 1035 at 20:16-21:13
`
` In contrast, LSI’s expert Prof. Soljanin testified that even with today’s “very
`sophisticated” simulation programs “each system is different” such that
`simulations do not show how a code would work in an “actual system.”
`Ex. 2011 at 100:13-102:6; see also LSI Reply at 22
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`18
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`LSI Corp. Exhibit 1040
`Page 18
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`“By Another”: Legal Standard
`“[T]he Board must (1) determine what portions of the reference patent were
`relied on as prior art to anticipate the claim limitations at issue, (2) evaluate the
`degree to which those portions were conceived ‘by another,’ and (3) decide
`whether that other person's contribution is significant enough, when measured
`against the full anticipating disclosure, to render him [at least] a joint inventor of
`the applied portions of the reference patent.”
`
`Duncan Parking Techs. v. IPS Grp., Inc., 914 F.3d 1347, 1358 (Fed. Cir. 2019).
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`19
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`LSI Corp. Exhibit 1040
`Page 19
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`LSI Reliance on Tsang’s Specific State-Dependent
`Rate 5/6 and 6/7 Codes
`
`Petition at 45; see also id. at 44-45 (relying on Tsang’s codes for
`claim element 1[D]), id. at 53 (relying on Tsang for claim element 13[D])
`
`Ex. 1009 (Tsang) at 3:44-65
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`20
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`LSI Corp. Exhibit 1040
`Page 20
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`Dr. Moon Confirmed That Tsang Alone—Not Moon
`and Brickner—Invented the Specific State-
`Dependent Codes Disclosed in the Tsang Patent
`
`Ex. 1034 at 75:20-76:2; see LSI Reply at 24
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`21
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`LSI Corp. Exhibit 1040
`Page 21
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`At Minimum, Tsang is a Joint Inventor of His State-
`Dependent Rate 5/6 and Rate 6/7 MTR Codes
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
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`22
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`See LSI Reply at 23-25
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`LSI Corp. Exhibit 1040
`Page 22
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`
`
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`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`www.kilpatricktownsend.com
`© 2020 Kilpatrick Townsend & Stockton LLP
`
`LSI Corp. Exhibit 1040
`Page 23
`
`
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