Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 1 of 49
`
`David E. Sipiora (State Bar No. 124951)
`dsipiora@kilpatricktownsend.com
`Edward J. Mayle (admitted pro hac vice)
`tmayle@kilpatricktownsend.com
`KILPATRICK TOWNSEND & STOCKTON LLP
`1400 Wewatta Street, Ste. 600
`Denver, CO 80202
`Telephone: 303 571 4000
`Facsimile: 303 571 4321
`
`Scott Kolassa (State Bar No. 294732)
`skolassa@kilpatricktownsend.com
`KILPATRICK TOWNSEND & STOCKTON LLP
`1080 Marsh Road
`Menlo Park, CA 94025
`Telephone: 650 324 6349
`Facsimile: 650 618 1544
`
`Attorneys for Defendants LSI Corporation
`and Avago Technologies U.S. Inc.
`
`UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`REGENTS OF THE UNIVERSITY OF
`MINNESOTA,
`
`Civil Action No. 18-cv-00821-EJD-NMC
`
`Plaintiff,
`
`v.
`
`LSI CORPORATION AND
`AVAGO TECHNOLOGIES U.S. INC.,
`
`Defendants.
`
`DECLARATION OF PROFESSOR
`EMINA SOLJANIN
`
`I, Professor Emina Soljanin, declare as follows:
`
`I.
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`INTRODUCTION AND QUALIFICATIONS
`
`A.
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`1.
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`Introduction.
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`I have been engaged as an expert on behalf of LSI Corporation and Avago
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`Technologies U.S. Inc. (collectively, Defendants or “LSI”) in the above-referenced case and
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`in the Inter Partes Review (“IPR”) proceeding involving the patent-in-suit (U.S. Patent and
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`DECLARATION OF PROF. EMINA SOLJANIN
`CASE NO. 18-CV-00821-EJD-NMC
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`Page 1 of 49
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`Exhibit #
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`UMN Exhibit 2007
`UMN EXHIBIT 2007
`06/12/20 - AB
`L::SI 1.,;orp. et a1. v. t< egents of Univ. of Minn.
`IPR2017-01068
`
`

`

`Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 2 of 49
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`Trademark Office Trial and Appeal Board, IPR2017-01068). The patent at issue in both
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`proceedings is U.S. Patent No. 5,859,601 (“the ’601 Patent”).
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`2.
`
`I understand that ownership of the ’601 Patent is claimed by the Regents of the
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`University of Minnesota (“the University”). I understand that the University sued LSI in the
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`U.S. District Court for the District of Minnesota on August 25, 2016, and that the ’601 Patent
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`expired on October 15, 2016. I understand that the District of Minnesota subsequently
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`transferred this case to the U.S. District Court for the Northern District of California, San Jose
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`Division.
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`3.
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`In this Declaration, I offer my opinions regarding, among other things, certain
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`terms in claims 13, 14, and 17 (“the Asserted Claims”) of the ’601 Patent. It is my opinion
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`that the Asserted Claims are indefinite under 35 U.S.C. § 112(b) because the claims, read in
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`light of the patent’s specification and its prosecution history, fail to inform, with reasonable
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`certainty, a person having ordinary skill in the art at the time of the invention the scope of the
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`alleged inventions. The reasons for this opinion are set forth more fully below.
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`4.
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`I also disclose below my understanding of certain legal principles regarding
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`claim construction and 35 U.S.C. § 112(b) provided to me by counsel, as well as my view of
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`the level of ordinary skill in the art at the time of the alleged inventions of the Asserted
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`Claims.
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`5.
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`I am being compensated at a rate of $420 per hour for my consulting services,
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`including the preparation of this Declaration. I have no stake in the outcome of this civil
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`action or the related IPR proceedings concerning the ’601 Patent.
`
`B.
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`6.
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`Expert Qualifications.
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`I am currently a professor of electrical and computer engineering at Rutgers
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`University. My research interests are broad, but mainly concern theoretical understanding and
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`practical solutions that enable efficient, reliable, and secure operation of communications
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`networks. I also have expertise and interest in power systems and quantum computation.
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`7.
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`My research has been funded by the National Science Foundation, the Center
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`for Discrete Mathematics and Theoretical Computer Science (DIMACS), DARPA, and other
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`DECLARATION OF PROF. EMINA SOLJANIN
`CASE NO. 18-CV-00821-EJD-NMC
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`IPR2017-01068
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`Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 3 of 49
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`funding agencies.
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`8.
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`All of my degrees are in electrical engineering. I earned a European Diploma
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`degree from the University of Sarajevo, Bosnia, in 1986, and M.S. and Ph.D. degrees from
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`Texas A & M University in 1989 and 1994, respectively.
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`9.
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`Between my studies at the University of Sarajevo and my graduate studies,
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`from 1986 to 1989, I worked in industry developing optimization algorithms and software for
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`power system control.
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`10.
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`Upon earning my Ph.D., I joined Bell Laboratories in Murray Hill, NJ, where I
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`was a Member of the Technical Staff in the Mathematics of Networks and Communications
`
`research department. Over a dozen alumni of Bell Labs have won the Nobel prize in physics,
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`with several more having been awarded the Turing Award, the highest distinction in computer
`
`science. In 2004 I was elevated to Distinguished Member of the Technical Staff.
`
`11.
`
`During my time at Bell Labs, I was also an adjunct professor, guest lecturer, or
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`visiting professor at various academic institutions around the world including, Columbia
`
`University, ENSE in Cergy-Pontoise, France, the University College Dublin, and others. I
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`also mentored many students, interns, and postdoctoral researchers during that time.
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`12.
`
`In the course of my twenty year employment with Bell Labs, I participated in a
`
`wide range of research and business projects. These projects include designing the first
`
`distance enhancing codes to be implemented in commercial magnetic storage devices. Other
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`projects that I worked on at Bell Labs included the first forward error correction for Lucent’s
`
`optical transmission devices, color space quantization and color image processing, quantum
`
`computation, link error prediction methods for the third generation wireless network
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`standards, and anomaly and intrusion detection. Some of my most recent activities are in the
`
`area of network and application layer coding.
`
`13.
`
`According to the University’s allegations in the First Amended Complaint in
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`this case, the alleged invention of the ’601 Patent is a “maximum transition run” (“MTR”)
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`code featuring a “j constraint” which “imposes a limit on the maximum number of
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`consecutive transitions” in a binary system. I was conducting research in this area before the
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`DECLARATION OF PROF. EMINA SOLJANIN
`CASE NO. 18-CV-00821-EJD-NMC
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`IPR2017-01068
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`Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 4 of 49
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`application that matured into the ’601 Patent was filed.
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`14.
`
`The named inventors of the ’601 Patent, Professor Jaekyun Moon and his then-
`
`graduate student Dr. Barrett Brickner, published a paper in 1996 entitled “Maximum
`
`Transition Run Codes for Data Storage Systems,” which paper is attached to the First
`
`Amended Complaint as Exhibit 3, and referred to therein by the University as “the Moon
`
`1996 IEEE Paper.” (See First Amended Complaint, Dkt. No. 40, at ¶¶ 49-52; attached hereto
`
`as Appendix A.)
`
`15.
`
`The University alleges that this Moon 1996 IEEE Paper is “substantially
`
`similar to the ’601 Patent.” (See id.) This is noteworthy because Dr. Moon and Dr. Brickner
`
`confirmed in their 1996 IEEE Paper that I, in my “independent study,” had disclosed that
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`“removing long runs of consecutive transitions” can improve the performance of data storage
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`systems. (See Moon 1996 IEEE Paper, Appendix A, right column of first page, citing
`
`reference [6].) Reference [6], cited by Dr. Moon and Dr. Brickner in their 1996 IEEE paper,
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`relates to my conference presentation in October 1995. (See Appendix A, Reference [6] listed
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`as “E. Soljanin, ‘On-track and off-track distance properties of class4 partial response
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`channels,’ SPIE Conference, Philadelphia, PA, Oct. 1995.”).
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`16.
`
`Additionally, my work was published in a 1995 paper entitled “On-track and
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`off-track distance properties of class4 partial response channels,” which paper is attached as
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`Appendix B. This paper discloses that digital storage systems can be improved “by limiting
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`the length of subsequences of alternating symbols to four,” and that in the NRZI recording
`
`format, “this can be achieved by a code that limits the runs of consecutive ones to three” and
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`discloses a “simple and inexpensive implementation” for such a code. (See Appendix A, at
`
`Section 4.2.) The first-named inventor on the ’601 Patent, Prof. Moon, attended my
`
`presentation given at the above-referenced conference, as described in LSI’s counterclaim for
`
`inequitable conduct. (Dkt. No. 62 at p. 23 et seq., ¶¶ 18-49.)
`
`17.
`
`Further, one of my own patents, U.S. Patent No. 5,608,397, is cited on the face
`
`of the ’601 Patent. During prosecution, the examiner found that my U.S. Patent No.
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`5,608,397 (among others) “is considered pertinent to applicant’s disclosure.” (See File
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`DECLARATION OF PROF. EMINA SOLJANIN
`CASE NO. 18-CV-00821-EJD-NMC
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`Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 5 of 49
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`History, Office Action dated Sept. 16, 1997.)
`
`18.
`
`In addition to U.S. Patent No. 5,608,397, cited by the patent examiner and
`
`listed on the face of the ’601 Patent, I am the inventor of additional patents and pending patent
`
`applications. I have authored numerous peer-reviewed journal and conference publications, as
`
`well as books and book chapters. Among other professional recognitions, I was elected an
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`IEEE Fellow for my “contributions to coding theory and coding schemes for transmission and
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`storage systems.” My curriculum vitae includes additional details about my experience and
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`professional background. It is attached as Appendix C.
`
`II. MATERIALS REVIEWED
`
`19. My opinions are based on years of education, research and experience, as well
`
`as investigation and study of relevant materials. In forming my opinions, I have considered
`
`the materials identified in this declaration, including the ’601 Patent’s claims (both the
`
`Asserted Claims and the non-asserted claims), its specification (including the figures and all
`
`of the written disclosure), and the prosecution history of the application that matured into the
`
`’601 Patent. I have also reviewed the documents discussed in Section I.B above.1
`
`III.
`
`THE HYPOTHETICAL PERSON OF ORDINARY SKILL IN THE ART
`
`20.
`
`I have been informed that patent claims are to be interpreted the way a
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`hypothetical person having ordinary skill in the art would have interpreted the claims at the
`
`time of the invention. For shorthand, I may refer to such a person herein as a “POSITA.”
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`21.
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`The application resulting in the ’601 Patent was filed on October 15, 1996.
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`The face of the patent claims priority to “Provisional application No. 60/014,954” filed April
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`5, 1996. Merely for argument’s sake, therefore, I will assume that the Asserted Claims are
`
`entitled to a priority date of April 5, 1996. As mentioned above, I was conducting research
`
`1 I may rely upon these materials and/or additional materials to respond to arguments raised
`by the University or its expert(s). I may also consider additional documents and information
`in forming any necessary opinions—including documents that may not yet have been
`provided to me. My analysis of the materials produced in this investigation is ongoing and I
`will continue to review any new material as it is provided. This report represents only those
`opinions I have formed to date. I reserve the right to revise, supplement, and/or amend my
`opinions stated herein based on new information and on my continuing analysis of the
`materials already provided.
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`DECLARATION OF PROF. EMINA SOLJANIN
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`and publishing my work in the relevant technological field prior to April 5, 1996.
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`22.
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`In determining the characteristics of a person of ordinary skill in the art at the
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`time of the claimed invention, I considered several things, including the factors discussed
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`below, as well as (1) the levels of education and experience of the inventor and other persons
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`actively working in the relevant field; (2) the types of problems encountered in the field; (3)
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`prior art solutions to these problems; (4) the rapidity in which innovations are made; and (5)
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`the sophistication of the relevant technology. I also placed myself back in the relevant time
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`period and considered the individuals that I had worked with in the field.
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`23.
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`It is my opinion that a person having ordinary skill in the relevant art at the
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`time of the invention would have been someone with at least an undergraduate degree in
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`electrical engineering or similar field, and three years of industry experience in the field of
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`read channel technology.
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`24.
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`I am prepared to testify as an expert in this field and also as someone who had
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`at least the knowledge of a POSITA, and someone who worked with other POSITAs at the
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`time of the alleged invention.
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`25.
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`Unless otherwise stated, my statements below refer to the knowledge, beliefs,
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`and abilities of a POSITA at the time of the claimed invention of the ‘601 patent.
`
`IV.
`
`CLAIM CONSTRUCTION STANDARD
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`26.
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`I understand that the Asserted Claims are construed as understood by a
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`POSITA. Counsel informs me that sometimes the meaning of claim terms are readily
`
`apparent even to lay judges, and that, in such scenarios, claim construction involves little
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`more than the application of widely accepted meaning of commonly understood words.
`
`27.
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`Otherwise, especially in highly-technical patents, courts look to the “intrinsic
`
`evidence” (i.e., the words of the claims themselves, the specification and figures, and the
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`prosecution history), and in some circumstances resort to consideration of extrinsic evidence
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`concerning relevant scientific principles, the meaning of technical terms, and the state of the
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`art to interpret a patent.
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`28.
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`Regarding the intrinsic evidence, I understand that the claims themselves
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`DECLARATION OF PROF. EMINA SOLJANIN
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`provide substantial guidance as to the meaning of particular claim terms. For example, the
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`context in which a term is used in the asserted claim can be highly instructive. Other claims
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`of the patent in question, both asserted and un-asserted, can also be valuable sources of
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`enlightenment as to the meaning of a claim term.
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`29.
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`The claims do not stand alone, as they must be read in view of the
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`specification, of which they are a part. I understand that the specification is always highly
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`relevant to the claim construction analysis and is usually the single best guide to the meaning
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`of a disputed term. I understand that the importance of the specification in claim construction
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`derives from its statutory role, as the close kinship between the written description and the
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`claims is enforced by the statutory requirement that the specification describe the claimed
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`invention in “full, clear, concise, and exact terms.” 35 U.S.C. § 112(a).
`
`30.
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`I understand further that the specification may reveal a “special definition”
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`given to a claim term by the patentee that differs from the meaning it would otherwise
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`possess. In such cases, the inventor’s “lexicography” governs. In other cases, the
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`specification may reveal an “intentional disclaimer, or disavowal, of claim scope by the
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`inventor.” In that instance as well, the inventor’s intention governs.
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`31.
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`In addition to consulting the claims and the specification, I understand that a
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`court should also consider the patent’s prosecution history. The prosecution history is a part
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`of the intrinsic evidence and consists of the complete record of the proceedings before the
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`Patent Office and includes the prior art cited during the examination of the patent. Like the
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`specification, the prosecution provides evidence of how the Patent Office and the inventor
`
`understood the patent. Furthermore, like the specification, the prosecution history was created
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`by the patentee in attempting to explain and obtain the patent. Yet because the prosecution
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`history represents an ongoing negotiation between the Patent Office and the applicant, rather
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`than the final product of that negotiation, it often lacks the clarity of the specification and thus
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`is less useful for claim construction purposes.
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`32.
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`I further understand that while extrinsic evidence (e.g., expert testimony,
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`dictionaries, learned treatises) can shed useful light on the relevant art, it is less significant
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`DECLARATION OF PROF. EMINA SOLJANIN
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`Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 8 of 49
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`than the intrinsic record in determining the legally operative meaning of claim language. I
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`understand further that the United States Court of Appeals for the Federal Circuit has viewed
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`extrinsic evidence in general as less reliable than the patent and its prosecution history in
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`determining how to read claims.
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`V.
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`INDEFINITENESS STANDARD
`
`33.
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`A provision in the Patent Act states that “[t]he specification shall conclude
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`with one or more claims particularly pointing out and distinctly claiming the subject matter
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`which the inventor or joint inventor regards as the invention.” 35 U.S.C. ¶ 112(b). I
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`understand that a claim that does not comply with this provision is said to be “indefinite,” and
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`is invalid for that reason.
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`34.
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`I understand that until recently, the legal standard for definiteness was
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`determining whether a claim is “amenable to construction,” and the claim, as construed, is not
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`“insolubly ambiguous.” If a claim could be construed and was not “insolubly ambiguous,”
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`then it was definite under 35 U.S.C. ¶ 112(b).
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`35.
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`I understand that the United States Supreme Court relaxed this test in 2014.
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`Counsel informs me that the Court, in a case called Nautilus, Inc. v. Biosig Instruments, Inc.,
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`(“Nautilus”) stated as follows:
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`“We conclude that the Federal Circuit’s formulation, which tolerates some
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`ambiguous claims but not others, does not satisfy the statute’s definiteness
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`requirement. In place of the ‘insolubly ambiguous’ standard, we hold that
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`a patent is invalid for indefiniteness if its claims, read in light of the
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`specification delineating the patent, and the prosecution history, fail to
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`inform, with reasonable certainty, those skilled in the art about the scope
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`of the invention.”
`
`VI.
`
`THE ASSERTED CLAIMS
`
`36.
`
`The text of the Asserted Claims is listed below:
`
`Claim 13
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`DECLARATION OF PROF. EMINA SOLJANIN
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`[Preamble:] 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, comprising the steps of:
`
`[Step 1:] receiving binary datawords; and
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`[Step 2:] producing sequences of n-bit codewords;
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`[Step 3:] imposing a pair of constraints (j;k) on the encoded waveform;
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`[Step 4:] generating no more than j consecutive transitions of said sequence in the
`recorded waveform such that j 2: 2; and
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`[Step 5:] generating no more than k consecutive sample periods of said sequences
`without a transition in the recorded waveform.
`
`Claim 14
`
`The method as in claim 13 wherein the consecutive transition limited is defined by
`2::; j < 10
`.
`the equation
`
`Claim 17
`
`The method as in claim 14 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 k+1 consecutive 0’s and k+1 consecutive 1’s when used in
`conjunction with the NRZ recording format.
`
`VII.
`
`THE ASSERTED CLAIMS ARE INDEFINITE
`
`37.
`
`It is my opinion that the claim terms below are indefinite: (1) “the encoded
`
`waveform” (claim 13); (2) “generating no more than j consecutive transitions of said
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`sequence in the recorded waveform such thatj2:2" (claim 13); (3) "generating no more thank
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`consecutive sample periods of said sequences without a transition in the recorded waveform”
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`(claim 13); (4) “wherein the binary sequences produced by combining codewords have no
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`more than one of j consecutive transitions from 0 to 1 and from 1 to 0” (claim 17); and (5)
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`“wherein the binary sequences produced by combining codewords have … no more than one
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`of k+1 consecutive 0’s and k+1 consecutive 1’s” (claim 17).
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`38. My opinions are explained further below.
`
`1.
`
`39.
`
`“The Encoded Waveform” (Claim 13)
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`Step 3 of claim 13 recites “imposing a pair of constraints (j;k) on the encoded
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`waveform.” The phrase “encoded waveform” renders claim 13 indefinite (as well as all
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`CASE NO. 18-CV-00821-EJD-NMC
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`LSI Corp. et al. v. Regents of Univ. of Minn.
`IPR2017-01068
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`Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 10 of 49
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`claims depending from it) because the claim, read in light of the specification of the ’601
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`Patent and the prosecution history, fails to inform, with reasonable certainty, those skilled in
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`the art about the scope of the purported invention.
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`40.
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`First, there is no antecedent basis for the phrase “the encoded waveform” in the
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`claim. The phrase begins with the word “the,” which, according to counsel, is understood to
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`be used in patent claims (and as I understand in normal English usage) to refer back to an
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`element that was recited earlier in the same claim or in an independent claim from which the
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`claim at issue depends. However, there is no earlier reference to “encoded waveform” in
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`claim 13. The term is indefinite for at least this reason.
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`41.
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`I am informed that the University’s expert, Prof. McLaughlin, agrees that the
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`word “the” signals that the following phrase “encoded waveform” must have an antecedent
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`basis in the claim. (See McLaughlin Declaration at ¶ 46.) Professor McLaughlin confirms
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`that no such antecedent basis exists in the claim, stating that “[t]he only waveform previously
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`referred to in the claim is the ‘recorded waveform’ referred to in the claim preamble, which
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`recorded waveform has encoded data as described above.” (Id. at ¶ 46) (emphasis added).
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`Unable to find antecedent basis for “the encoded waveform,” Professor McLaughlin simply
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`concludes that “the encoded waveform” is exactly the same as the “recorded” waveform. I do
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`not agree; the claim uses different words to mean different things. If “the encoded
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`waveform” was the same as the “recorded waveform,” then the claim would use the phrase
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`“the recorded waveform” in step 3. Instead, it uses a different phrase—“the encoded
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`waveform.”
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`42.
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`Second, the structure of claim 13 supports the conclusion that “the encoded
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`waveform” (recited in step 3) is not the same thing as the “recorded waveform” (recited in the
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`preamble and in “generating” steps 4 and 5.) In particular, each of the five method steps
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`recited in claim 13 begin with a verb ending in “ing”: receiving, producing, imposing,
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`generating, and generating, and logically they proceed in sequential order. A “recorded
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`waveform” does not exist until steps 4 and 5 are completed. In a digital storage device, the
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`“generating” steps would happen on the recording medium, not in the “encoder.” In contrast,
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`DECLARATION OF PROF. EMINA SOLJANIN
`CASE NO. 18-CV-00821-EJD-NMC
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`IPR2017-01068
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`Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 11 of 49
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`the “imposing” step, i.e., step 3 of claim 13, would happen in an encoder, which is typically a
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`discrete electrical component separate from the recording medium, such as a system on a chip.
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`The j and k constraints are “imposed” by the encoder on the sequence of n-bit codewords,
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`which are not “the recorded waveform.”
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`43.
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`Third, consideration of claims other than claim 13 bolster my opinion. For
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`example, see claim 18, which depends from claim 14, which in turn depends from claim 13.
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`Claim 18 states that “the encoder” (as opposed to a recording medium or a component that
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`can record on a medium) is the thing that “produces a codeword in response to each dataword
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`sequentially,” and the encoder imposes the j and k constraints by selecting the n-bit
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`codewords according to certain specified steps. This is consistent with my conclusion about
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`the distinction between the “recorded waveform” and “the encoded waveform” in claim 13.
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`44.
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`Fourth, because the term “encoded waveform” does not appear earlier in claim
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`1, or in any other claim of the ‘601 Patent, one naturally would look to the specification for
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`guidance. But the phrase does not appear in the specification. In addition, the phrase
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`“encoded waveform” has no standard or industry-specific definition. In fact, the phrase
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`“encoded waveform” was inserted during prosecution via a claim amendment and was
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`introduced into amended claim 1 (which is not asserted here) and amended claim 13.
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`However, neither the inventors nor the patent examiner provided a definition of this new
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`phrase, even though the inventors stated that Claims 1 and 13 had been amended “to better
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`define the invention.” (See Response to Office Action at 3.) The patent examiner did not
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`explain the meaning of “the encoded waveform” in the Notice of Allowability or elsewhere.
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`(See File History (Dkt. No. 165-2).) This prosecution history underscores the fact that this
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`term – “the encoded waveform” -- not only lacks an antecedent basis in claim 13, but lacks a
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`foundation in the patent itself.
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`45.
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`Fifth, it is not clear what is meant by a “waveform” in Step 3 of claim 13. In
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`particular, Step 3 is listed prior to Steps 4 and 5. A waveform (in particular, a “recorded
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`waveform”) is said to be “generated” in Steps 4 and 5. The phrase “the encoded waveform” is
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`used in Step 3, which is where the pair of constraints are “impos[ed].” According to the
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`IPR2017-01068
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`Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 12 of 49
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`specification, the step of “imposing” occurs in the production of binary codewords. See, e.g.,
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`’601 Patent at Fig. 6 and 5:12-47 (providing “equations for the encoder”). Binary codewords
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`are not a “waveform.” (See, e.g., Response to Office Action, Appendix A (“[C]ode bits are
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`indicated above the appropriate waveform”)); see also Claims 16, 17, 18 (showing that the j
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`and k constraints are “imposed” at the binary level, i.e., on sequences of 1’s and 0’s, and not
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`on the recorded waveform). This lack of clarity further would leave a POSITA uncertain as to
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`the meaning of the phrase “encoded waveform” in claim 13 of the ‘601 Patent.
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`46.
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`For each of these reasons, taken alone or viewed together, claim 13 is
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`indefinite under Section 112.
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`2.
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`“Generating No More Than j Consecutive Transitions of Said Sequence
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`.” (Claim 13)
`in the Recorded Waveform Such That
`j2:2
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`47.
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`Step 4 of claim 13 recites “generating no more than j consecutive transitions of
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`said sequence in the recorded waveform
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`such that j2:2." This phrase renders claim 13
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`indefinite (as well as all claims depending from it) because the claim, read in light of the
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`specification of the ’601 Patent and the prosecution history, fails to inform, with reasonable
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`certainty, those skilled in the art about the scope of the purported invention.
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`48.
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`First, take the case of j = 2. If only 1 (one) consecutive transition is generated,
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`does this satisfy the limitation of Step 4? The claim disallows “more than” 2 consecutive
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`transitions. Because 1 is less than 2, 1 consecutive transition meets the claim language “no
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`more than j consecutive transitions.”
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`, which suggests that 1
`Yet the claim states that j2:2
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`consecutive transition would not satisfy the claim. In prosecution, its response to the patent
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`examiner’s rejection of the claims in view of prior art, the applicant attempted to explain what
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`was being claimed and how it was different than the prior art (see File History), but note that
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`claim 13 is written in terms of what is disallowed (i.e., “no more than”) instead of what is
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`allowed. Compare independent method claim 13 (“generating no more than j consecutive
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`transitions”) with independent apparatus claim 1 (“wherein the j constraint is defined as the
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`maximum number of consecutive transitions allowed on consecutive clock periods”)
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`(emphasis added). The “definition” in claim 1 is not recited in claim 13, even though claims 1
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`DECLARATION OF PROF. EMINA SOLJANIN
`CASE NO. 18-CV-00821-EJD-NMC
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`IPR2017-01068
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`Case 5:18-cv-00821-EJD Document 204-4 Filed 04/13/18 Page 13 of 49
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`and 13 were amended at the same time, in response to the same Office Action. Moreover, the
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`specification teaches that “the minimum distance pairs shown in FIG. 1 must be eliminated”
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`and that “[i]n accordance with the present invention, this can be accomplished using the
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`existing RLL (1,k) code, which does not allow consecutive transitions.” ’601 Patent at 4:8-12
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`(emphasis added). This adds up to lack of reasonable certainty as to the meaning of this claim
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`limitation.
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`49.
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`Second, Step 4 recites the phrase “transitions of said sequence.” The “said
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`sequence” appears to refer to n-bit codewords, but it does not make sense to speak of a
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`transitions “of codewords.” It does however make sense to think of transitions in terms of
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`transitions between binary bits – 1 to 0 or 0 to 1. (See e.g., claims 16 and 17.) This language
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`is unclear. Moreover, a waveform does not have binary bits, making the claim ambiguous on
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`multiple levels.
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`50.
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`Third, Step 2 recites “sequences” (plural) while Step 4 recites “said sequence”
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`(singular) and Step 5 recites “said sequences” (plural). There is no antecedent basis for the
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`phrase “said sequence.”
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`51.
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`For each of these additional reasons, taken alone or viewed together, claim 13
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`is indefinite under Section 112.
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`“Generating No More Than k Consecutive Sample Periods of Said
`3.
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`Sequences Without a Transition in the Recorded Waveform.” (Claim 13)
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`52.
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`Step 5 of claim 13 recites “generating no more than k consecutive sample
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`periods of said sequences without a transition in the recorded waveform.” This phrase renders
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`claim 13 indefinite (as well as all claims depending from it) because the claim, re