`571-272-7822
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` Paper 35
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`Date: April 21, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`
`____________
`
`IPR2017-01068
`Patent 5,859,601 B2
`____________
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`
`
`
`Before JENNIFER S. BISK, ROBERT J. WEINSCHENK, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`I. INTRODUCTION
`LSI Corporation and Avago Technologies U.S. Inc. (“Petitioner”)
`filed a Petition requesting an inter partes review of claims 1, 2, 8, 10, 12–17,
`and 21 of U.S. Patent No. 5,859,601 B2 (Ex. 1001, “the ’601 patent”).
`Paper 1 (“Pet.”). Regents of the University of Minnesota (“Patent Owner”),
`identified as the owner of and real party in interest to the ’601 patent (Paper
`3, 2), did not file a Preliminary Response. Paper 34 (Patent Owner’s Waiver
`of Preliminary Response). On February 14, 2020, Patent Owner filed a
`statutory disclaimer of claims 1–12, 15, 16, and 21. Ex. 2001. Thus, this
`Decision considers only Petitioner’s challenges to claims 13, 14, and 17, the
`only remaining challenged claims of the ’601 patent. See 37 C.F.R.
`§ 42.107(e) (“No inter partes review will be instituted based on disclaimed
`claims.”)
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a) (2012). Based on our review
`of the record, we conclude that Petitioner is reasonably likely to prevail with
`respect to each of claims 13, 14, and 17.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties indicate that the ’601 patent is involved in litigation,
`Regents of the University of Minnesota v. LSI Corporation and Avago
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`Technologies U.S. Inc., No. 0:16-cv-02891-WMW-SER (D. Minn).1 Pet.
`69; Paper 3, 2.
`
`B. The ’320 Patent
`The ’601 patent, titled “Method and Apparatus for Implementing
`Maximum Transition Run Codes,” issued January 12, 1999. Ex. 1001,
`codes (45), (54). The ’601 patent relates generally to “a channel coding
`technique to improve data storage devices such as magnetic computer disk
`drives and professional and consumer tape recorders.” Id. at 2:40–43. In
`particular, the ’601 patent describes using maximum transition-run (“MTR”)
`coding to eliminate the storage of certain binary data patterns determined to
`be error-prone. Id. at 2:43–47. According to the ’601 patent, using MTR
`coding significantly improves the final bit error rate. Id. at 2:47–49.
`
`The ’601 patent describes MTR coding as “impos[ing] a limit on the
`maximum number of consecutive transitions that can occur in the written
`magnetization pattern in magnetic recording.” Id. at 2:59–61. In particular,
`performance is improved most significantly “when the maximum number of
`consecutive transitions [referred to as ‘constraint length j’] is limited to
`two.” Id. at 2:62–65.
`In addition to MTR coding, the ’601 patent describes prior art coding
`methods, such as Runlength limited (“RLL”) codes, which “impose a (d,k)
`constraint on the recorded data sequence.” Id. at 1:21–24. In describing
`RLL codes, the ’601 patent describes two commonly used formats for
`recording binary data that in turn dictate the permissible values of d and k,
`
`
`1 On February 7, 2018, this case was transferred to the Northern District of
`California as No. 5:18-cv-00821-EJD (N.D. Cal.).
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`(1) Non-Return-to-Zero (“NRZ”) in which “the binary ‘1’ represents a
`positive level in the magnetization waveform and the binary ‘0’ [represents
`a] negative level in the same waveform,” and (2) Non-Return-to-Zero-
`Inversion (“NRZI”) in which a 1 represents a magnetic transition and a 0
`represents no transition. Id. at 1:24–36. For NRZ formatting, d+1 defines
`the minimum number of consecutive like symbols and k+1 defines the
`maximum number of consecutive like symbols in the sequence. Id. at 1:24–
`29. For NRZI formatting, “d and k are the minimum and maximum number
`of consecutive 0’s between any two 1’s, respectively.” Id. at 1:29–36.
`According to the ’601 patent, RLL (1,k) codes, which do not allow
`consecutive transitions, eliminate some patterns that cause the most errors.
`Id. at 4:53–5:17. However, this coding allows for fewer patterns overall,
`resulting in a lower code rate and increasing inefficiency. Id. at 4:18–24.
`MTR coding, on the other hand, “eliminate[s] all sequences with three or
`more consecutive transitions, but allow[s] the dibit pattern to survive,”
`which eliminates error-prone patterns with less inefficiency than a RLL (1,k)
`code. Id. at 4:24–30. MTR parameters are written as (j;k) where j is the
`MTR constraint described above and “k is the usual RLL constraint.” Id. at
`4:46–48.
`
`C. Illustrative Claim
`Independent claim 13 is illustrative of the subject matter at issue and
`
`reads as follows:
`13. A method for encoding m-bit binary datawords into n-bit
`binary codewords in a recorded waveform, where m and n are
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`preselected positive integers such that n is greater than m,
`comprising the steps of:
`receiving binary datawords; and
`producing sequences of n-bit codewords;
`imposing a pair of constraints (j;k) on the encoded wave-
`form;
`generating no more than j consecutive transitions of said
`
`sequence in the recorded waveform such that j≧2; and
`
`generating no more than k consecutive sample periods of
`said sequences without a transition in the recorded
`waveform.
`Ex. 1001, 10:46–61.
`D. Proposed Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability, each based
`on 35 U.S.C. § 103(a)2:
`Claims Challenged
`13, 14, 17
`13, 14, 17
`
`35 U.S.C. §
`102
`102
`
`Okada3
`Tsang4
`
`Reference
`
`Pet. 2. Petitioner also relies on the Declaration of Emina Soljanin, Ph.D.
`Ex. 1010 (“Soljanin Decl.”).
`
`
`2 Because the application from which the ’320 patent issued was filed
`before March 16, 2013, the effective date of the relevant amendment, the
`pre-AIA version of § 103 applies. The Leahy-Smith America Invents Act
`(“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended
`35 U.S.C. § 103.
`3 U.S. 5,392,270 (issued Feb. 21, 1995) (Ex. 1007).
`4 U.S. 5,731,768 (filed Jan. 31, 1996; issued March 24, 1998) (Ex. 1009).
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`III. ANALYSIS
`
`A. Level of Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art “would have
`had at least an undergraduate degree in electrical engineering or similar
`field, and three years of industry experience in the field of read channel
`technology.” Pet. 12 (citing Ex. 1010 ¶¶ 21–26). Because Patent Owner did
`not file a Preliminary Response, Patent Owner does not offer an alternate
`contention at this time.
`We determine that it is unnecessary to ascribe a particular level of
`skill in deciding the relevant issues in this case at this time. We see no
`reason why the level of ordinary skill in the art is not adequately reflected by
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`B. Claim Construction
`For petitions filed on or after November 13, 2018, such as the one in
`this case, we interpret claims in the same manner used in a civil action
`under 35 U.S.C. § 282(b), “including construing the claim in accordance
`with the ordinary and customary meaning of such claim as understood by
`one of ordinary skill in the art and the prosecution history pertaining to the
`patent.” 37 C.F.R. § 42.100(b) (2019). Only terms that are in controversy
`need to be construed, and then only to the extent necessary to resolve the
`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner does not offer any constructions for any terms of the
`remaining challenged claims, and indicates that “[u]ness otherwise
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`addressed herein, no express construction of any additional term is believed
`to be needed to resolve the challenges herein.” Pet. 17. Having filed no
`response, Patent Owner does not offer any constructions of its own.
`At this time, we determine that no express construction of any terms
`of the challenged claims is necessary. The parties are hereby given notice
`that claim construction, in general, is an issue to be addressed at trial. A
`final determination as to claim construction will be made at the close of the
`proceeding, after any hearing, based on all the evidence of record. The
`parties are expected to assert all of their claim construction arguments and
`evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, or
`otherwise during trial, as permitted by our rules.
`
`C. Anticipation by Okada
`Petitioner contends that claims 13, 14, and 17 of the ’601 patent are
`anticipated by Okada. Pet. 17–37. For the reasons that follow, we
`determine that Petitioner establishes a reasonable likelihood that it would
`prevail in this assertion.
`1. Overview of Okada
`Okada, titled “Information Recording Reproducing Apparatus Using
`Data Conversion to Provide for Accurate Reproduction of High Density
`Recording Using an Optical Recording Medium,” was filed June 6, 1994,
`and issued February 21, 1995. Ex. 1007, codes (54), (22), (45). Because
`Okada issued more than one year prior before the earliest priority date
`(April 5, 1996) of the ’601 patent, this reference is prior art to the ’601
`patent under pre-AIA 35 U.S.C. § 102(b).
`Okada describes performing data conversion for storage on an optical
`recording medium using NRZI recording format such that “‘1’ [will] not
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`appear three or more times in a row in a train of information data at the time
`of recording information.” Ex. 1007, 3:35–44, 3:54–60. Specifically, an
`embodiment of Okada converts 8-bit data into 13-bit data using one of two
`rules. Id. at Figs. 6, 3:61–68. “Rule (1)” requires “at least one ‘0’ and an
`even number of consecutive ‘1[s].’” Id. at 3:64–65. “Rule (2)” requires “a
`section consisting of ‘01010’ and a section consisting of at least one ‘0’ or
`an even number of consecutive ‘1[s].’” Id. at 3:66–68. Example
`applications of these two rules are shown in nine conversion tables. Id. at
`4:1–8:65 (demonstrating Rule (1) in Tables 1–7 and Rule (2) in Tables 8 and
`9).
`
`2. Analysis
`The preamble of claim 13 recites, “A method for encoding m-bit
`binary datawords into n-bit binary codewords in a recorded waveform,
`where m and n are preselected positive integers such that n is greater than
`m.”5 Ex. 1001, 10:46–49. Petitioner relies on Okada’s teaching of encoding
`8-bit binary datawords into 13-bit binary codewords as disclosing such a
`method. Pet. 17–19, 33 (citing Soljanin Decl. ¶¶ 76–80; Ex. 1007, Figs. 6,
`7, 2:48–3:3, 3:35–8:64, 9:24–10:22).
`The first limitation of claim 1 requires, “receiving binary datawords.”
`Ex. 1001, 10:51. Petitioner identifies Okada’s 8-bit input record
`information, which is read from a digital signal, as disclosing the claimed
`
`
`5 Petitioner asserts that the preamble is not limiting, but nonetheless
`addresses how Okada discloses the preamble’s subject matter. Pet. 17–19.
`Because Petitioner has shown that the recitation in the preamble is satisfied
`by the prior art, there is no need at this time to determine whether the
`preamble is limiting. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999).
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`dataword. Pet. 19–20, 33–34 (citing Soljanin Decl. ¶¶ 81–82; Ex. 1007,
`Fig. 6, 2:57–61, 3:35–4:16, 8:65–10:22, Tables 1–9).
`The second limitation of claim 1 requires, “producing sequences of
`n-bit codewords.” Ex. 1001, 10:52. Petitioner identifies Okada’s 13-bit data
`output, produced by 8-to-13 converter 10, as disclosing the claimed
`codewords. Pet. 20–21, 34 (citing Soljanin Decl. ¶¶ 85–86; Ex. 1007, Fig. 6,
`3:35–4:16, 8:65–10:22, Tables 1–9).
`The third limitation of claim 1 requires, “imposing a pair of
`constraints (j;k) on the encoded waveform.” Ex. 1001, 10:53–54. Petitioner
`identifies Okada’s two rules, used to convert the 8-bit dataword to the 13-bit
`codeword, as disclosing the claimed j and k restraints because they constrain
`the maximum number of consecutive transitions allowed on consecutive
`clock periods in the encoded waveform. Pet. 23–28, 34 (citing Soljanin
`Decl. ¶¶ 83–93; Ex. 1007, Figs. 1, 6, 7, 1:21–48, 3:35–4:16, 8:65–10:22,
`Tables 1–9; Ex. 1011).
`The fourth limitation of claim 1 requires, “generating no more than j
`consecutive transitions of said sequence in the recorded waveform such that
`
`j≧2.” Ex. 1001, 10:55–56. Petitioner explains that both of Okada’s rules
`
`for encoding result in a maximum of two consecutive transitions allowed on
`consecutive clock periods, and, therefore, Okada discloses the fourth
`limitation. Pet. 28–29, 35 (citing Soljanin Decl. ¶¶ 94–96; Ex. 1007, Fig. 6,
`3:35–4:16, 8:65–10:22, Tables 1–9; Ex. 1011).
`The fifth limitation of claim 1 requires, “generating no more than k
`consecutive sample periods of said sequences without a transition in the
`recorded waveform.” Ex. 1001, 10:57–59. Petitioner explains that both of
`Okada’s rules ensure “there can never be a codeword consisting of all 0’s or
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`all 1’s—thus, k is a finite number” and, therefore, Okada discloses the fifth
`claim limitation. Pet. 29–30, 35 (citing Soljanin Decl. ¶¶ 97–98; Ex. 1007,
`Fig. 6, 3:35–4:16, 8:65–10:22, Tables 1–9; Ex. 1011).
`Claim 14 depends from claim 13 and recites “wherein the consecutive
`
`transition limit is defined by the relationship 2≦j<10.” Petitioner explains
`
`that “Okada discloses a constraint length of j=2, and thus anticipates claim
`14.” Pet. 35–36 (citing Soljanin Decl. ¶¶ 112–113; Ex. 1007, Fig. 6, 3:35–
`4:16, 8:65–10:22, Tables 1–9).
`Claim 17 depends from claim 14 and recites “wherein the binary
`sequences produced by combining codewords have no more than one of j
`consecutive transitions from 0 to 1 and from 1 to 0 and no more than one of
`k+1 consecutive 0’s and k+1 consecutive 1’s when used in conjunction with
`the NRZ recording format.” Petitioner explains that “as confirmed in the
`’601 [p]atent, k consecutive 0’s in NRZI format is equivalent to no more
`than k+1 consecutive 0’s and k+1 consecutive 1’s, in NRZ format.” Pet. 32–
`33 (citing Ex. 1001, 1:15–36; Soljanin Decl. ¶¶ 102–104; Ex. 1007, Tables
`1–9; Ex. 1011). Thus, according to Petitioner, “Okada discloses that the
`binary sequences produced by combining codewords have no more than one
`of j consecutive transitions from 0 to 1 and from 1 to 0 and no more than one
`of k+1 consecutive 0’s and k+1 consecutive 1’s when used in conjunction
`with the NRZ recording format. Okada thus anticipates claim 17.” Pet. 35
`(citing Soljanin Decl. ¶¶ 116–118).
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`On review of the record, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail with respect to its
`challenge of claims 13, 14, and 17 as anticipated by Okada.
`
`D. Anticipation by Tsang
`Petitioner contends that claims 13, 14, and 17 of the ’601 patent are
`anticipated by Tsang. Pet. 37–55. For the reasons that follow, we determine
`that Petitioner establishes a reasonable likelihood that it would prevail in this
`assertion.
`1. Overview of Tsang
`Tsang, titled “Method and Apparatus for Implementing Codes with
`Maximum Transition Run Length,” was filed January 31, 1996, and issued
`March 24, 1998. Ex. 1009, codes (54), (22), (45). Because Tsang was filed
`before the earliest priority date of the ’601 patent, this reference is prior art
`to the ’601 patent under pre-AIA 35 U.S.C. § 102(e).
`Tsang describes “a method and apparatus for implementing maximum
`transition run (MTR) codes in a digital data magnetic recording system.”
`Ex. 1009, 1:6–9. Further, Tsang states that “[a]t densities considerably
`greater than those in currently commercially available products, the most
`likely error sequence has been demonstrated to consist of write patterns that
`contain three or more unspaced consecutive transitions.” Id. at 2:18–22. To
`avoid such patterns, Tsang discloses that “codes with MTR values (no more
`than two successive binary ‘1’s’ in the coding result) equal to two are
`desirable.” Id. at 2:25–28.
`2. Analysis
`Petitioner explains that Tsang explicitly discloses a method for
`encoding “data words . . . having ‘m’ successive bits” into “code words . . .
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`having ‘n’ bits where ‘n’ is greater than ‘m’” and, thus, discloses the claimed
`preamble. Pet. 38 (quoting Ex. 1009, 2:28–44); see also Ex. 1009, 19:34–38
`(“An apparatus for encoding selected data blocks having a selected data
`number of ordered symbols therein into corresponding code blocks having a
`selected code number of ordered symbols therein with said code number
`being greater than said data number.”), 19:65–68 (“The apparatus of claim 1
`wherein said selected data number equals five, and wherein said selected
`code number equals six.”).
`
`Petitioner also contends that Tsang discloses the receiving data words
`and producing code words as recited by the first and second limitations. Pet.
`39–44 (citing Ex. 1009 Fig. 4A, 9A, 6:5–28, 11:43–56, 19:34–20:3; Ex.
`1010 ¶¶ 124–135)). For the last three limitations, Petitioner points to
`Tsang’s “MRT value” as disclosing constraint j. Pet. 44–48, 53–54 (citing
`Ex. 1009, Figs. 3, 8, 1:1–26, 2:14–27, 5:25–6:28, 19:34–20:3; Ex. 1010
`¶¶ 136–144). And Petitioner explains that MTR may be equal to 2. Id.
`Petitioner also explains that both Tsang’s disclosed embodiments include
`constraint k with a value of 9. Id.
`For claim 14, Petitioner asserts that “Tsang discloses and claims
`apparatuses and methods wherein j=2,” and thus anticipates claim 14. Pet.
`54 (citing Ex. 1010 ¶¶ 164–167).
`For Claim 17, which depends from claim 14 and recites “wherein the
`binary sequences produced by combining codewords have no more than one
`of j consecutive transitions from 0 to 1 and from 1 to 0 and no more than one
`of k+1 consecutive 0’s and k+1 consecutive 1’s when used in conjunction
`with the NRZ recording format,” Petitioner explains that “as confirmed in
`the ’601 patent, k consecutive 0’s in NRZI format discloses no more than
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`k+1 consecutive 0’s and k+1 consecutive 1’s, in NRZ format.” Pet. 32–33
`(citing Ex. 1001, 1:15–36; Soljanin Decl. ¶¶ 102–104; Ex. 1007, Tables 1–9;
`Ex. 1011). Thus, according to Petitioner, “Tsang discloses that the binary
`sequences produced by combining codewords have no more than one of j
`consecutive transitions from 0 to 1 and from 1 to 0 and no more than one of
`k+1 consecutive 0’s and k+1 consecutive 1’s when used in conjunction with
`the NRZ recording format. Tsang thus anticipates claim 17.” Pet. 55–56
`(citing Soljanin Decl. ¶¶ 170–172).
`On review of the record, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail with respect to its
`challenge of claims 13, 14, and 17 as anticipated by Tsang.
`
`IV. CONCLUSION
`For the reasons expressed above, we determine that Petitioner has
`demonstrated a reasonable likelihood of showing that claims 13, 14, and 17
`of the ’601 patent are unpatentable on Petitioner’s proposed grounds.
`Accordingly, we institute an inter partes review of those remaining
`challenged claims of the ’601 patent on all grounds alleged by Petitioner.
`We note that this Decision does not reflect a final determination on
`the patentability of any claim, and that the burden remains on Petitioner to
`prove unpatentability of each challenged claim. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`V. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted of claims 13, 14, and
`17 of the ’601 patent with respect to all grounds of unpatentability set forth
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`in the Petition; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’601 patent is instituted commencing on the entry date
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`notice is given of the institution of a trial.
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`PETITIONER:
`Kristopher Reed
`Edward Mayle
`Kilpatrick Townsend & Stockton LLP
`kreed@kilpatricktownsend.com
`tmayle@kilpatricktownsend.com
`
`PATENT OWNER:
`Patrick McElhinny
`Mark Knedeisen
`K&L GATES LLP
`patrick.mcelhinny@klgates.com
`mark.knedeisen@klgates.com
`
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