Trials@uspto.gov
`571-272-7822
`
`
` Paper 58
`
`Entered: April 14, 2021
`
`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
`____________
`
`
`
`
`Before JENNIFER S. BISK, ROBERT J. WEINSCHENK, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
` Paper 58
`
`Entered: April 14, 2021
`
`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
`____________
`
`
`
`
`Before JENNIFER S. BISK, ROBERT J. WEINSCHENK, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2017-01068
`Patent 5,859,601 B2
`
`
`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. 2004. We
`instituted this review of Petitioner’s challenges to claims 13, 14, and 17, the
`only remaining challenged claims of the ’601 patent. Paper 35 (“Inst.
`Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 41 (“PO Resp.”). Petitioner filed a Reply. Paper 48
`(“Reply”).1 Patent Owner also filed a Sur-Reply. Paper 51 (“Sur-Reply”).
`A transcript of the oral hearing held on January 19, 2021, has been entered
`into the record as Paper 57 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, Petitioner has demonstrated by a preponderance
`of the evidence that claim 13 of the ’601 patent is unpatentable, but has not
`demonstrated by a preponderance of the evidence that claims 14 and 17 are
`unpatentable.
`
`
`1 Petitioner filed two versions of the Reply Brief, a confidential version
`(Paper 48), and a redacted version available to the public (Paper 46). For
`purposes of this Decision, we refer to the public version of the brief.
`
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`II. BACKGROUND
`
`A. Related Matters
`The parties indicate that the ’601 patent is involved in litigation,
`Regents of the University of Minnesota v. LSI Corp., No. 0:16-cv-02891-
`WMW-SER (D. Minn).2 Pet. 69; Paper 3, 2.
`B. The ’601 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)
`
`
`2 On February 7, 2018, the identified case was transferred to the Northern
`District of California as No. 5:18-cv-00821-EJD (N.D. Cal.).
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`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: (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
`any consecutive transitions in an NRZ format, eliminate some patterns
`which cause the most errors. Id. at 3:53–4:17. 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.
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`
`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
`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
`waveform;
`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.
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`D. Proposed Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability, each based
`on 35 U.S.C. § 102:3
`Claim(s) Challenged
`13, 14, 17
`13, 14, 17
`
`35 U.S.C. §
`102
`102
`
`Reference(s)/Basis
`Okada4
`Tsang5
`
`Pet. 2. Petitioner also relies on the Declaration of Emina Soljanin, Ph.D.
`Ex. 1010 (“Soljanin Decl.”).
`Patent Owner disputes each of these grounds of unpatentability and
`relies on the Declarations of Jaekyun Moon, Ph.D. (Ex. 2016), the first
`named inventor of the ’601 patent, and Steven W. McLaughlin, Ph.D. Ex.
`2017 (“McLaughlin Decl.”) as supporting its position. PO Resp. 5.
`
`III. ANALYSIS
`
`A. Level of Skill in the Art
`The level of skill in the art is a factual determination. See Al-Site
`Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The level of skill in
`the art informs the claim construction analysis. See Teva Pharm. USA, Inc.
`v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (explaining that claim
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–87 (2011), amended 35 U.S.C. § 102, effective March 16,
`2013. Because the application from which the ’601 patent issued was filed
`before March 16, 2013, the pre-AIA version of § 102 applies.
`4 U.S. 5,392,270 (issued Feb. 21, 1995) (Ex. 1007).
`5 U.S. 5,731,768 (filed Jan. 31, 1996; issued March 24, 1998) (Ex. 1009).
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`construction seeks the meaning “a skilled artisan would ascribe” to the claim
`term “in the context of the specific patent claim” (emphasis omitted)).
`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 Soljanin Decl. ¶¶ 21–26).
`Patent Owner does not address Petitioner’s proposed level of skill but,
`similarly, asserts that a person of ordinary skill would have “at least a
`bachelor’s degree in electrical engineering” and “several years (three or
`more) of work experience in the industry.” PO Resp. 35. Patent Owner
`adds that a person of ordinary skill in the art would specialize “in data
`coding and detection techniques used in connection with reading data from
`various storage media such as hard drives and optical media” and “would
`have studied and been familiar with traditional data coding and detection
`techniques and devices including RLL codes, peak detectors, and sequence
`detectors, such as Viterbi detectors.” Id. (citing McLaughlin Decl. ¶ 41).
`Patent Owner does not further address these additional specialization and
`knowledge requirements or explain how it differs from Petitioner’s proposal
`of “industry experience in the field of read channel technology.” Id.
`Moreover, Patent Owner does not contend that Petitioner’s proposed level of
`skill, which we adopted in the Institution Decision, is incorrect or
`incomplete. Id.
`We adopt the definition that a person of ordinary skill in the art would
`have had at least an undergraduate degree in electrical engineering or similar
`field and at least three years of relevant industry experience in the field of
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`read channel technology. This level is consistent with the level reflected by
`the references themselves.
`
`B. Dr. Soljanin’s Testimony
`Patent Owner did not file any motions to exclude evidence. Tr.
`50:10–13. However, Patent Owner makes several arguments asserting that
`Dr. Soljanin’s testimony (Exhibit 1010) should not be given any weight. PO
`Resp. 2–3; 21.6 First, according to Patent Owner, because Dr. Soljanin
`opined, in the related district court proceeding, that several terms in the
`challenged claims are indefinite, she “can hardly now find those elements of
`the Challenged Claims in any prior art reference.” Id. (citing Ex. 2007
`¶¶ 37–59), 30–31.
`Petitioner argues that Dr. Soljanin’s testimony in the related case did
`not address the indefiniteness of the term “transition” and, therefore that
`testimony is not relevant to this proceeding. Reply 11. Moreover,
`indefiniteness is not an issue that can be raised in an IPR. Id. We agree with
`Petitioner that Dr. Soljanin’s testimony regarding indefiniteness of claim
`terms not addressed in the briefing in this case is not relevant to these
`proceedings.
`Second, Patent Owner argues that Dr. Soljanin is not properly familiar
`with optical recording physics, the subject of Okada. PO Resp. 3, 33; see
`also PO Resp. 21–24 (discussing Dr. Soljanin’s testimony regarding optical
`recording systems).
`
`6 Patent Owner also argues that certain of Petitioner’s filed exhibits are
`“inadmissible.” Sur-Reply 9–12 (citing Exs. 1014–1021). Because we do
`not rely on those exhibits, we do not address whether they are admissible or
`should be given any weight.
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`Petitioner explains that Dr. Soljanin “is an accomplished professor
`and author, a Bell Labs alumna, and an elected IEEE Fellow for
`‘contributions to coding theory and coding themes for transmission and
`storage systems’” and is, thus, “eminently qualified to opine” on the
`meaning of the claim language at issue here. Reply 10 (citing Soljanin Decl.
`¶¶ 5–17). According to Petitioner, it is irrelevant that Dr. Soljanin is
`unfamiliar with optical recording physics because the claims, on their face,
`are directed to encoding m-bit datawords into n-bit codewords, and do not
`mention the specific recording media. Id. at 10–11.
`We agree with Petitioner and decline to determine that all of Dr.
`Soljanin’s testimony should be disregarded based on any lack of expertise in
`optical recording systems. Instead, we evaluate the persuasive value of Dr.
`Soljanin’s testimony below in the context of analyzing the arguments and
`evidence regarding each limitation in turn.
`Third, Patent Owner asserts that Dr. Soljanin “contradicted herself on
`whether Okada discloses the required j constraint of the Challenged Claims.”
`PO Resp. 3; 33. Dr. Soljanin’s testimony on the recited j-constraint
`limitation, and the weight it should be given, is evaluated below in the
`context of analyzing the arguments and evidence regarding that limitation.
`
`C. Claim Construction
`The ’601 patent is expired (see Pet. 12; PO Resp. 35 n.8), so its claims
`are construed in the same manner used in a civil action under 35 U.S.C.
`§ 282(b). Thus, the claims are construed 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. Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only
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`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 propose explicit constructions for any terms of the
`challenged claims, and indicates that “[u]n[l]ess otherwise addressed herein,
`no express construction of any additional term is believed to be needed to
`resolve the challenges herein.” Pet. 17. In our Institution Decision, we
`determined that no express construction of any terms of the challenged
`claims is necessary. Inst. Dec. 6–7. At this stage of the proceeding, we
`determine that it is necessary to address the parties’ arguments regarding the
`term “transition.”
`1. “transition”
`Claim 13 recites “generating no more than j consecutive transitions of
`said sequence in the recorded waveform such that j≥2” (“the j-constraint
`limitation”) and “generating no more than k consecutive sample periods of
`said sequences without a transition in the record waveform” (“the k-
`constraint limitation”). Patent Owner asserts that the Board should construe
`the term “transition,” as recited by claim 13, to mean “a reversal in the
`magnetic orientation of adjacent bit regions along a recording track of a
`magnetic recording medium” (Patent Owner’s “magnetic construction”). PO
`Resp. 36. Patent Owner adds that “[e]ven if ‘transitions’ is not construed to
`mean magnetic transitions, at a minimum it should be construed to mean ‘a
`change from one state or stage to another’” (Patent Owner’s “alternative
`construction”). Id. at 39.
`Petitioner argues that the record does not support Patent Owner’s
`magnetic construction. Reply 2–11. Further, Petitioner asserts that Patent
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`Owner’s alternative construction does not provide “any more clarity than the
`word ‘transition’ standing alone.” Id. at 12.
`a. Patent Owner’s magnetic construction
`Patent Owner asserts that the ’601 patent “stress[es] that the [recited]
`transitions are magnetic transitions.” PO Resp. 36; Sur-Reply 4–6. In
`particular, Patent Owner points to language in the ’601 patent’s summary
`that the invention relates to magnetic computer disk drives and that “the
`MTR code imposes a limit on the maximum number of consecutive
`transitions that can occur in the written magnetization pattern in magnetic
`recording.” PO Resp. 36–37 (quoting Ex. 1001, 2:40–42, 2:59–61
`(emphasis added by Patent Owner)). Dr. McLaughlin testifies that this
`language would lead a person of ordinary skill in the art to conclude that the
`claimed transitions are limited to “magnetic transitions in magnetic
`recording.” Id. at 37; McLaughlin Decl. ¶ 49.
`Patent Owner further argues that the claim language itself supports a
`construction limited to magnetic transitions, pointing to the fact that
`dependent claims 16 and 17, which indirectly depend from claim 13, recite
`both NRZI (claim 16) and NRZ (claim 17) recording formats, and, thus,
`claim 13 must cover both formats. Id. at 38. Dr. McLaughlin testifies that
`because claim 13 covers both NRZI and NRZ recording formats, the use of
`the term “transitions” must not be “limited to particular bit values used to
`record a transition in one or both of these recording formats,” but instead a
`person skilled in the art would understand “that the important concept is the
`effect on the medium, i.e., whether there is a reversal in the magnetic
`polarities in adjacent bit regions.” McLaughlin Decl. ¶ 50.
`
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`According to Patent Owner, “a skilled person in the field of digital
`data storage would understand the term ‘transitions’ to mean magnetic
`polarity changes on the recording medium.” PO Resp. 38 (citing
`McLaughlin Decl. ¶¶ 43–48); Ex. 2026, 1344; Ex. 2027, 45, 199; Ex. 2028,
`207–208. Patent Owner also asserts that the magnetic construction is
`“consistent with the non-technical, ordinary meaning of ‘transition,’ which is
`‘a passage from one state, stage, subject or place to another; change.” PO
`Resp. 39 (citing Ex. 2029, 1254; Ex. 3031, 1287).
`“[A] claim construction analysis must begin and remain centered on
`the claim language itself . . . .” Innova/Pure Water, Inc. v. Safari Water
`Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). The disputed
`claim language does not include any reference to the type of media on which
`the n-bit binary codewords are recorded. The claim’s focus, instead, is on
`how the n-bit codewords are generated. Notably, the patentee could have
`included language specifying that the codewords be recorded on magnetic
`media—but instead used the very general term “transition.”
`Given the broad nature of the claim language, we do not limit further
`the scope of the claim merely because the Specification discusses magnetic
`media as a type of storage device that may be used with the invention. See
`SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
`2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
`1054 (Fed. Cir. 1994) (“Though understanding the claim language may be
`aided by the explanations contained in the written description, it is important
`not to import into a claim limitations that are not a part of the claim. For
`example, a particular embodiment appearing in the written description may
`not be read into a claim when the claim language is broader than the
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`embodiment.”)). The language of claims 13, 14, and 17 is broader than the
`embodiment Patent Owner proffers as support for its proposed construction.
`Moreover, Patent Owner points to nothing in the claim language, including
`the dependent claims, which limits the claims to magnetic media.
`Moreover, the bulk of the Specification does not refer to magnetic
`recording. See Ex. 1001, code (54) (“Method and Apparatus for
`Implementing Maximum Transition Run Codes”), code (57) (describing
`“storage systems,” but not referring to magnetic devices). We do not agree
`with Patent Owner’s assertion that “the intrinsic evidence refers exclusively
`to magnetic recording.” Sur-Reply 5. To the contrary, the Specification
`makes clear that the invention is not limited to magnetic media. See, e.g.,
`Ex. 1001, 2:40–42 (“The present invention relates to a channel coding
`technique to improve data storage device such as magnetic computer disk
`drives.”), 3:49–52 (“The invention is advantageously used in storage and
`similar systems operating at high data densities.”). And the Specification
`specifically discusses optical data storage. Ex. 1001, 1:61–66 (“In optical
`data storage, a special type of RLL constraint is applied to guarantee the
`minimum size of the written mark on the medium.”). The two isolated
`sentences pointed to by Patent Owner referring to magnetic recording do not
`outweigh the rest of the Specification’s focus on all types of storage devices
`such that the claims are limited to magnetic recording devices. PO Resp.
`36–37 (citing Ex. 1001, 2:59–61); Sur-Reply 4–5 (citing Ex. 1001, 2:40–62,
`2:65–3:1, 4:31–34, 4:1–4, 7:30–40).
`Petitioner also points to the language of claim 17, which depends
`indirectly from claim 13, as refuting Patent Owner’s magnetic construction.
`Reply 3. Claim 17 recites “the binary sequences produced by combining
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`codewords have no more than one of j consecutive transitions from 0 to 1
`and from 1 to 0 . . . when used in conjunction with the NRZ recording
`format.” Ex. 1001, 11:1–6. According to Petitioner, Patent Owner’s
`magnetic construction is narrower than the transitions recited in claim 17.
`Reply 3. We agree with Petitioner that the language of claim 17 does not
`make sense if the term “transition” in claim 13 is given Patent Owner’s
`magnetic construction. Patent Owner’s declarants seem to agree. See
`Ex. 1035, 104:15–22 (Dr. McLaughlin stating that the word “transition” in
`claim 13 cannot mean “transitions from 0 to 1 and from 1 to 0 in a binary
`sequence”); Ex. 1034, 87:18–88:4 (Dr. Moon stating that in claim 13 the
`term “transition” does not include “a change from 0 to 1 in a binary
`sequence”).
`Patent Owner argues that Petitioner reads the language of claim 17 in
`isolation, without regard to the Specification. Sur-Reply 6. According to
`Patent Owner, a transition in a waveform, as recited in claim 13, “is
`reflected by a reversal of the magnetic orientation of adjacent bit regions
`along [a] recording track, not 0s and 1s.” Id. (citing McLaughlin Decl. ¶¶ 7–
`10). We do not find this argument persuasive as it relies on Dr.
`McLaughlin’s testimony discussing the basics of hard drive technology (see
`McLaughlin Decl. ¶¶ 7–10), which Patent Owner does not tie to any
`particular claim language. As explained above, nothing in the claim
`language limits the recorded waveform to any particular type of media.
`As for claim 17’s recitation of “transitions from 0 to 1 and from 1 to
`0,” Patent Owner argues that it “limits the recording format to NRZ, where
`the ‘binary “1” represents a positive level in the magnetization waveform
`and the binary “0” negative level in the same waveform,’ such that a 01 or
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`10 corresponds to a reversal in the magnetic orientation of bit regions on the
`recording track.” Id. at 7 (citing McLaughlin Decl. ¶¶ 7–12; Ex. 1001, 1:24–
`27. Again, we do not agree that the claim language is so limited. Patent
`Owner again points, as support for this assertion, to testimony by Dr.
`McLaughlin discussing the basics of hard drive technology (see McLaughlin
`Decl. ¶¶ 7–12). Patent Owner also points to a discussion in the background
`of the ’601 patent describing the NRZ recording format in the context of
`magnetic recording. Id. (citing Ex. 1001, 1:24–27). Importantly, however,
`the ’601 patent points out that “modulation codes, are mappings of data bits
`into symbols that are either transmitted in a communication system or
`recorded onto a medium in a storage device,” not limiting such storage
`devices to those using magnetic recording. Ex. 1001, 1:16–19. The fact that
`the ’601 patent then goes on to explain RLL codes, including NRZ and
`NRZI formats, in the context of magnetic recording systems does not
`indicate that the invention is limited to such systems. To the contrary, later
`in the same section, the ’601 patent notes that “[i]n optical data storage, a
`special type of RLL constraint is applied to guarantee the minimum size of
`the written mark on the medium” and the section ends with a reference to an
`article on coding in “Proceedings of the International Society for Optical
`Engineering.” Ex. 1001, 1:61–65, 2:33–37.
`We are also not persuaded by Dr. McLaughlin’s testimony that a
`person of ordinary skill in the art would have read the ’601 patent to be
`limited to magnetic transitions in magnetic recording. See McLaughlin
`Decl. ¶ 49. Dr. McLaughlin bases this conclusion on the previously
`discussed language in the ’601 patent describing magnetic media as one type
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`of device that may be used with the invention. Id. (citing Ex. 1001, 1:40–42,
`2:59–61).
`Patent Owner’s reliance on extrinsic evidence is similarly
`unpersuasive. Dr. McLaughlin refers to several books and academic papers
`that use the term “transition” as limited to magnetic polarity changes on the
`recording medium. McLaughlin Decl. ¶¶ 43–48; PO Resp. 38. However, as
`pointed out by Petitioner (Reply 8–9), all of these publications are
`specifically directed to magnetic storage. See Ex. 2026 (titled “Recording
`Codes for Digital Magnetic Storage”); Ex. 2027 (titled “Magnetic Disk
`Drive Technology”); Ex. 2028 (titled “Theory of Magnetic Recording”).
`These publications, therefore, provide little, if any, evidence of how a person
`of ordinary skill in the art would understand the term “transition” in the
`context of the ’601 patent, which applies to storage systems generally, and is
`not limited to magnetic storage systems. Instead, we agree with Dr. Soljanin
`that the term “transition” is very general and may have different meanings
`depending on context. See Ex. 2011, 55:21–56:11; see also Ex. 2029, 1254
`(dictionary definition “passage from one state, stage, subject, or place to
`another”); Ex. 2031, 1287 (dictionary definition “[t]he process or an instance
`of changing from one form, state, activity, or place to another”).
`Accordingly, we do not adopt Patent Owner’s proposed construction
`of transition as recited by claims 13, 14, and 17 to be a reversal in the
`magnetic orientation of adjacent bit regions along a recording track of a
`magnetic recording medium.
`b. Patent Owner’s alternative construction
`Patent Owner asserts, as an alternative, that the term “transition” at
`least means “a change from one state or stage to another.” PO Resp. 39.
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`Although this language is broad and does not explicitly refer to physical
`changes of a recording medium, Patent Owner apparently interprets this
`definition to be limited to “an actual change in state of the recording
`medium.” See id. at 40 (explaining that the Board should reject Petitioner’s
`constructions because “the mere label used (a ‘1’ or a ‘0-1’) does not reflect
`an actual change in state of the recording medium that the detector
`subsequently detects to read the written data”). Patent Owner relies on the
`non-technical dictionary definitions discussed above as supporting this
`construction. Id. at 39 (citing Ex. 2029, 1254; Ex. 2031, 1287).
`Petitioner argues that Patent Owner “fails to explain how its
`reformulation of [the dictionary] definition provides any more clarity than
`the word ‘transition’ standing alone.” Reply 12. Petitioner adds that there is
`no support in either the intrinsic record or the relied upon dictionary
`definitions for a construction requiring “an actual change in state of the
`recording medium.” Id. Thus, Petitioner states that the Board should reject
`this construction and find that “one of ordinary skill in the art would
`understand ‘transition’ without formal construction.” Id. Moreover,
`Petitioner asserts that “transition” encompasses transitions in any binary
`system. Tr. 5:10–14.
`We agree with Petitioner that Patent Owner’s articulation of this
`alternate construction as “a change from one state or stage to another” does
`not illuminate further the plain and ordinary definition of the term
`“transition.” See Ex. 2029, 1254; Ex. 2031, 1287. Moreover, without any
`supporting intrinsic or extrinsic evidence, we do not adopt Patent Owner’s
`implied limitation requiring that the term “transition” requires “an actual
`change in state of the recording medium.” See PO Resp. 39 (citing Ex.
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`2029, 1254 (broad definition of the term “transition” unrelated to the
`recording medium); Ex. 2031, 1287 (same); Soljanin Decl. ¶¶ 63–64 (Dr.
`Soljanin stating that she has considered the claim terms, specification, and
`prosecution history, and is familiar with the relevant scientific principles and
`the state of the art); Ex. 2011, 57:5–6 (Dr. Soljanin stating that “a transition
`generally, . . . has to be some kind of a change”).
`c. Petitioner’s construction
`As mentioned above, the Petition did not propose explicit
`constructions for any terms of the challenged claims, including the term
`“transition.” Pet. 17.
`Patent Owner asserts that Petitioner changed its implied construction
`of the term “transition” between the filing of Dr. Soljanin’s declaration and
`her deposition. PO Resp. 31–32, 40; Sur-Reply 3–4. According to Patent
`Owner, in the declaration, Dr. Soljanin applied a construction of “transition”
`as a “1,” but on cross-examination changed to a “0-to-1 and 1-to-0
`construction.” PO Resp. 40; see also PO Resp. 31–32 (stating that in her
`declaration Dr. Soljanin asserted that “a ‘1’ in a NRZI sequence is a
`transition in a recorded waveform”); 32 (stating that on cross-examination,
`Dr. Soljanin “testified that ‘transition’ as used in the Challenged Claims
`occurs ‘whenever a 0 is followed by a 1”); Sur-Reply 3–4.
`We do not agree with Patent Owner’s assertion that Dr. Soljanin made
`such a change between her declaration and her cross-examination.
`According to Petitioner, at the logical level, where encoding takes place, a
`transition can be represented in multiple ways depending on the format used.
`Tr. 6:21–7:5. For example, a transition can be a change from 0 to 1 or from
`1 to 0 when using NRZ format, and can also be represented by a 1 when
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`using NRZI format. Id. We understand this to be Petitioner’s position
`throughout the proceeding.
`Although the Petition does not explicitly lay out this construction, it is
`implied in the analysis. For example, when analyzing anticipation of claim
`1 by Okada, Petitioner states that “each of the 13-bit data sequences shown
`in Tables 1-7 . . . has a finite number of consecutive transitions (e.g.,
`sequences where the data switches consecutively between ‘1’ and ‘0’),” and
`“such constraint causes the ‘8-to-13 converter 10 to perform data conversion
`before NRZI modulation in such a way that ‘1’ will not appear three or more
`times in a row in a train of information data after the NRZi modulation.’”
`Pet. 23–24, 26 (emphasis omitted) (citing Ex. 1007, 3:54–60). In her
`declaration, Dr. Soljanin makes similar statements. See, e.g., Soljanin Decl.
`¶ 87. Thus, we do not agree with Patent Owner that in her declaration, Dr.
`Soljanin applied a construction of “transition” as a “1.” See PO Resp. 40.
`Instead, Dr. Soljanin, in her declaration, applies a construction that a
`transition can be represented by a “1” or by a change from 0 to 1 and 1 to 0,
`depending on the format being used. See, e.g., Soljanin Decl. ¶ 87.
`This construction is consistent with Petitioner’s and Dr. Soljanin’s
`positions post-institution. See Reply 16 (referring to “at most four
`transitions from ‘0’-to-‘1’ or ‘1’-to-‘0’ are allowed per NRZ codeword” and
`“NRZI data where a ‘1’ represents a transition”); Ex. 2011, 53:8–10 (Dr.
`Soljanin stating on cross-examination that “it can be a transition from 0 to 1”
`and “from 1 to 0”), 55:21–56:4 (explaining that transitions are different
`based on whether NRZ or NRZI is used).
`We, therefore, do not agree with Patent Owner’s assertion that
`Petitioner and Dr. Soljanin improperly shifted their construction of the term
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`“transition” after the Petition. Instead, we determine that Petitioner and Dr.
`Soljanin consistently apply a construction of “transition” such that it can be
`logically represented in multiple ways depending on the encoding format
`used—a change from 0 to 1 or from 1 to 0, when using NRZ format, for
`example, or a 1 when using NRZI format.
`Moreover, we agree with Petitione
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