Trials@uspto.gov
`571-272-7822
`
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`
`
`
`
` Paper No. 46
`Entered: October 22, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJIFILM CORPORATION,
`Petitioner,
`
`v.
`
`SONY CORPORATION
`Patent Owner.
`____________
`
`Case IPR2017-01267
`Patent 7,029,774 B1
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. §42.73
`
`

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`IPR2017-01267
`Patent 7,029,774 B1
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`
`I. INTRODUCTION
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6, and this Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
`determine that Petitioner has not shown by a preponderance of the evidence
`that claims 1–13 and 15–20 of U.S. Patent No. 7,029,774 B1 (“the ’774
`patent,” Ex. 1001) are unpatentable.
`A.
`Procedural History
`FUJIFILM Corporation (“Petitioner”) filed a Petition (“Pet.”) to
`institute an inter partes review of claims 1–13 and 15–20 of the ’774 patent
`based on the following grounds: (1) whether claims 1–12 and 15–20 are
`unpatentable under 35 U.S.C. § 102 as being anticipated by Law1, and (2)
`whether claims 1–13 and 15–20 are unpatentable under 35 U.S.C. § 103 as
`being obvious over the combined teachings of Law and Sasaki2. Paper 1, 5.
`Sony Corporation (“Patent Owner”) did not file a Preliminary Response.
`Pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review of
`claims 1–13 and 15–20 based on our determination that the information
`presented in the Petition demonstrated a reasonable likelihood that Petitioner
`would prevail on its challenge that claims 1–13 and 15–20 are unpatentable
`under 35 U.S.C. § 103 as obvious over the combined teachings of Law and
`Sasaki. 3 Paper 11 (“Dec. on Inst.” or “Institution Decision”), 16.
`
`
`1 U.S. Patent No. 5,507,747, issued March 4, 1997 (Ex. 1004).
`2 Japanese Patent App. Pub. No. P2003-317228A, published Nov. 7, 2003
`(Ex. 1005). We refer to the English translation of the original reference as
`“Sasaki.”
`3 We subsequently modified our Institution Decision to include review of
`“all challenged claims and all of the grounds presented in the Petition”
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`Patent 7,029,774 B1
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`
`After institution of trial, Patent Owner filed a Patent Owner Response
`(“PO Resp.,” Paper 18), and Petitioner filed a Reply (“Reply,” Paper 25).
`Petitioner relies on the Declaration of Ryosuke Isobe4 (“the Isobe
`Declaration,” Ex. 1003), and the Rebuttal Declaration of Dr. Bart
`Raeymaekers (“the Raeymaekers Declaration,” Ex. 1031). Patent Owner
`relies on the Declaration of Prof. Frank Talke (“the Talke Declaration,”
`Ex. 2026). Patent Owner also filed a Motion for Observations on Cross-
`Examination of Dr. Raeymaekers (Paper 37), and Petitioner filed a Response
`(Paper 38). An oral hearing was held on July 31, 2018, and a transcript is
`included in the record. Paper 42 (“Tr.”).
`B.
`Related Proceedings
`Petitioner identifies Sony Corp. v. FUJIFILM Holdings Corp., Case
`1:16-cv-05988 (S.D.N.Y.) as a related matter. Pet. 63. Patent Owner
`identifies Sony Corp. v. FUJIFILM Holdings Corp., No. 337-TA-1036 (ITC)
`and Sony Corp. v. FUJIFILM Holdings Corp., No. 1:16-cv-25210 (S.D.
`Fla.) as related matters. Paper 5, 1. The ’774 patent currently is the subject
`of IPR2017-01268, also filed by Petitioner. Pet. 63.
`
`
`(Paper 21, 2), then granted (Paper 29) the parties’ Joint Motion to Limit the
`Petition (Paper 28), limiting this proceeding to the originally instituted
`ground, namely, obviousness of claims 1–13 and 15–20 based on the
`combined teachings of Law and Sasaki.
`4 With Board authorization (Paper 6), Patent Owner filed a Motion to
`Exclude and Disqualify Ryosuke Isobe as Petitioner’s Expert Witness (Paper
`7), and Petitioner filed an Opposition (Paper 8). We denied Patent Owner’s
`Motion. Paper 9.
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`Patent 7,029,774 B1
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`C.
`
`The ’774 Patent
`The ’774 patent, titled “Magnetic Recording Medium with Backside
`to Decrease Recording Surface Embossment,” relates to “magnetic recording
`media, such as magnetic tapes, having a backside configured to decrease
`pitting or embossment” of a recording surface of the magnetic recording
`media. Ex. 1001, 1:7–12. The ’774 patent explains that the backside surface
`of a typical recording medium has bimodal roughness that defines a plurality
`of peaks and valleys, and that when the medium is wound such that the
`second winding extends on top of the first winding, the peaks on the
`backside of the second winding contact the front surface of the first winding.
`Id. at 2:5–12. This limits the contact between the first winding and the
`second winding, decreasing friction between the windings as well as
`between the medium and the read/write mechanism during use. Id. at 2:13–
`17. The interaction between the peaks on the second winding and the
`surface of the first winding can also cause the peaks to imprint upon the
`front surface of the first winding, creating pits or embossments that can
`damage the recording characteristics of the magnetic recording medium. Id.
`at 2:17–23. Therefore, according to the ’774 patent, “it is desirable to create
`a magnetic recording medium having a backside configured to improve the
`durability and frictional characteristics of the magnetic recording medium
`while decreasing embossment of the recording surfaces of the magnetic
`recording medium.” Id. at 2:24–28.
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`
`Figure 2 of the ’774 patent is reproduced below.
`
`
`Figure 2 is a schematic illustration of a cross-sectional view of one
`embodiment of the magnetic recording medium described in the ’774 patent.
`Ex. 1001, 3:10–11. Magnetic recording medium 30 includes substrate 32,
`magnetic side 34, and backside 36. Id. at 3:36–37. Substrate 32 defines top
`surface 38 and bottom surface 40 opposite top surface 38, and magnetic side
`34 (which provides the recordable material to magnetic recording medium
`30) extends over and is bonded to top surface 38. Id. at 3:38–43. Magnetic
`side 34 includes support layer 50 and magnetic recording layer 52. Id. at
`4:12–16. Support layer 50 extends over and is bonded to top surface 38, and
`defines a top surface 54 opposite top surface 38. Id. at 4:16–19. Magnetic
`recording layer 52 extends over and is bonded to top surface 54 of support
`layer 50, defining recording surface 56 opposite support layer 50. Id. at
`4:19–22. Backside 36 extends along and is bonded to bottom surface 40,
`and defines an outer surface 42 opposite substrate 32. Id. at 3:43–46.
`According to the ’774 patent, “magnetic recording medium 30
`exhibits improved signal and error characteristics by decreasing pitting or
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`embossment of the recording surface 56.” Id. at 3:53–55. Backside 36 “is
`configured to provide a relatively random backside surface 42 (e.g., a
`surface approaching a Gaussian surface) as compared to the typical bimodal
`backside surface” of the prior art. Id. at 5:18–21. The ’774 patent describes
`an embodiment in which “backside 36 comprises carbon black particles
`combined with appropriate binder resins,” where the carbon black particles
`“are substantially uniform in size” and “are chosen from one or more groups
`having a primary particle or average particle size from about 10 nm to about
`30 nm, more preferably, on the order of about 15 nm to about 25 nm.” Id. at
`5:11–12, 21–27. The ’774 patent states that, because “large particles are
`generally not utilized in the backside 36, the backside surface 42 generally
`decreases the number and/or predominance of any pits or embossments
`formed in recording surface 56.” Id. at 5:30–38.
`The ’774 patent teaches that skew is a measure of “the asymmetry of
`the surface profile about a mean plane of the surface being evaluated,” and
`that “[n]egative skew indicates a predominance of valleys, while positive
`skew indicates a predominance of peaks.” Ex. 1001, 8:13–17. According to
`the ’774 patent, “[w]ith regard to magnetic recording medium 30, it is
`generally desirable to decrease positive skew by decreasing the
`predominance of high peaks, and, consequently, decreasing the number
`and/or size of pits or embossments,” but that “it is also generally desirable to
`maintain at least a low level of positive skew to decrease excess frictional
`forces on the magnetic recording medium that can cause handling problems
`during the use of the magnetic recording medium.” Id. at 8:20–27.
`The ’774 patent further teaches that kurtosis “is a measure of the distribution
`of spikes above and below the mean line of the backside surface 42 and
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`generally indicates the randomness of the surface,” and “for relatively spiky
`surfaces, kurtosis is greater than three; for wavy surfaces, kurtosis is less
`than three; and for perfectly random surfaces, kurtosis is generally equal to
`three.” Id. at 8:65–67; 9:2–5. Because “it is desirable to have a surface
`roughness approximating a Gaussian surface as opposed to the bimodal
`surface of prior art[] magnetic recording mediums,” and “a truly Gaussian
`surface generally has a kurtosis value of three,” the ’774 patent describes an
`embodiment where “magnetic recording medium 30 has a kurtosis of less
`than or equal to about 4.0, more preferably of less than or equal to about
`3.7.” Id. at 9:5–12.
`Claims 1, 15, and 20 are the challenged independent claims. Claim 20
`is representative, and is reproduced below.
`20. A magnetic recording medium comprising:
`a substrate defining a first surface and a second surface opposite
`the first surface;
`a magnetic side formed over the first surface of the substrate and
`defining a recording surface; and
`a backside coated on the second surface of the substrate and
`configured to decrease embossment of the recording
`surface, the backside defining a backside surface opposite
`the substrate, the backside surface having a skew less than
`about 0.5, a kurtosis less than about 4.0, a peak height
`mean of less than about 200, and peak-to-valley roughness
`less than about 325 nm.
`Ex. 1001, 14:29–41.
`
`A.
`
`II. ANALYSIS
`Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art
`(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s
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`degree in materials science, electrical engineering, mechanical engineering,
`chemistry, or a closely related field, and at least five years of experience” in
`industry or academic research relating to magnetic tape, or “a master’s
`degree or higher” in the same fields and at least three years of experience
`relating to magnetic tape. Pet. 17–18 (citing Ex. 1003 ¶ 65). Patent Owner
`does not dispute Petitioner’s assessment in its Response, and Dr. Talke
`agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26.
`Petitioner’s assessment appears consistent with the level of ordinary
`skill in the art at the time of the invention as reflected in the prior art in this
`proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (explaining that specific findings regarding ordinary skill level are not
`required “where the prior art itself reflects an appropriate level and a need
`for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State
`Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Accordingly, we adopt
`Petitioner’s assessment of the level of ordinary skill in the art.
`Claim Interpretation
`B.
`We interpret claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with
`the broadest reasonable construction, claim terms are presumed to have their
`ordinary and customary meaning as understood by a person of ordinary skill
`in the art in the context of the entire patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
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`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`For the purposes of the Institution Decision, we determined that,
`based on the record at that time, no claim term required express construction
`(Dec. on Inst. 7), and we see no reason to modify that determination in light
`of the record developed during trial.
`C.
`Principles of Law
`To prevail on its challenges to the patentability of the claims, a
`petitioner must establish facts supporting its challenge by a preponderance
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter
`partes review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden of persuasion never shifts to the patent owner.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–
`79 (Fed. Cir. 2015) (discussing the burdens of persuasion and production in
`inter partes review).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious to a person
`having ordinary skill in the art to which the subject matter pertains. KSR
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
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`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) objective evidence of nonobviousness. See Graham
`v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`D. Overview of the Prior Art
`1.
`Law
`Law “relates to magnetic recording media, and in particular, to a
`backside coating of magnetic recording media wherein the backside coating
`includes a particulate filler.” Ex. 1004, 1:8–11. Law states that, although
`“[t]he prior art provides the skilled artisan with various particles which may
`be included in the backside coating of a magnetic recording media to
`improve the running properties of the media,” many of the particles “are so
`hard they can be too abrasive and can cause excessive wear to mechanisms
`within a recording/playback device,” and “[t]he use of softer particles can
`result in different problems, for instance, higher coefficients of friction and a
`lack of durability of the backside coating.” Id. at 2:20–28. Law, therefore,
`teaches incorporating “multicomponent, nonmagnetic particles which
`combine the characteristics of both softer and harder compounds, but which
`attain running properties superior to media without such multicomponent
`particles” into the backside coating of a magnetic recording medium. Id. at
`2:29–33.
`Specifically, Law teaches that the backside coating includes
`nonmagnetic particles dispersed in a binder, wherein a first component of
`the particles has a Mohs hardness equal to or less than 7, and a second
`component of the particles has a Mohs hardness greater than 7. Id. at 2:51–
`
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`56. Law explains that relatively harder particles, which can be “excessively
`abrasive,” “are known to reduce friction between the backside and guide
`pins, and are considered stable over time,” and relatively softer particles are
`less abrasive, “but may not be effective in reducing friction, and may
`actually increase friction,” and “are also considered to provide a less stable
`backside coating.” Id. at 3:47–57. Therefore, according to Law,
`“combining these various harder and softer components into a single particle
`creates the synergistic effect of improving frictional properties, while at the
`same time reducing the abrasiveness of the backside coating.” Id. at 3:57–
`61.
`
`Law further teaches that “the size of the particles in a backside
`coating, the roughness of the backside, and/or the ratio of particle size to
`backside coating caliper may affect the running properties of a magnetic
`recording medium.” Id. at 5:29–33. Law teaches that particles “may be any
`size which, when included in the backside coating of a magnetic recording
`medium, will improve the running properties of that magnetic recording
`medium,” and “generally have a mean particle size in the range from about
`0.1 to 4 μm, with in the range from about 0.4 to 1.2 μm being preferred, and
`the range from about 0.95 to 1.05 μm being most preferred.” Id. at 5:40–48.
`Because roughness is “a major factor in affecting the frictional and running
`properties of a magnetic recording medium,” Law states that “[a] moderately
`rough backside is preferred.” Id. at 5:49–52. If the backside is too rough,
`however, it “might cause defects in the magnetic side of the medium due to
`embossing.” Id. at 5:57–59. In that regard, Law describes an embodiment
`for use in digital video recording media where the roughness of the backside
`coating “is preferably in the range from about 0.1 to 0.22 microns, most
`
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`preferably within the range from about 0.1065 to 0.15,” and another
`embodiment for use in computer cartridge tape where “the roughness value
`is preferably in the range from about 0.05 to 0.6 microns, most preferably in
`the range from about 0.2 to 0.4 microns.” Id. at 6:9–16.
`2.
`Sasaki
`Sasaki “seeks to provide highly reliable magnetic recording mediums
`by increasing the medium’s durability through preventing damage to the
`magnetic layers caused by the non-magnetic back coat on the opposite
`surface of the non-magnetic substrate.” Ex. 1005 ¶ 17. Sasaki teaches a
`magnetic recording medium “consisting of a non-magnetic substrate with a
`magnetic layer of magnetic powder and binder applied over a non-magnetic
`layer of non-magnetic powder and binder on one surface, with a non-
`magnetic back coat applied to the opposite side,” wherein the “back coat
`surface has protrusion sizes and distribution” as follows: (1) protrusions of
`20–40 nm—1.2 protrusions per μm2; (2) protrusions of 40–80 nm—0.4
`protrusions per μm2; (3) protrusions of 80–100 nm—0.02 protrusions per
`μm2; and (4) protrusions over 100 nm—none. Id. ¶¶ 19–20. The back coat
`“is comprised of a binder and non-magnetic powder,” and “[t]he non-
`magnetic powder consists of carbon black with a mean particle diameter
`of 10–50 nm, and carbon black with a mean particle diameter of 60–100
`nm.” Id. ¶ 21. According to Sasaki, when the back coat meets these
`specifications, “the damage that occurs to the magnetic layer surface during
`repeated operations” is reduced, and “the amount of structural imprints of
`the protrusions from the back coat imprinted onto the magnetic layer when
`wound by methods such as tape reels for long-term storage” is minimized.
`Id. ¶ 22.
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`E. Obviousness over Law and Sasaki
`Petitioner contends that claims 1–13 and 15–20 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over the combined teachings of Law
`and Sasaki. Pet. 37–63; Reply 14–27. Petitioner relies on the Isobe
`Declaration and the Raeymaekers Declaration in support of its contentions.
`Id. Patent Owner disagrees with Petitioner’s assertions, and relies on the
`Talke Declaration. PO Resp. 7–69.
`Claims 1 and 20
`1.
`Independent claims 1 and 20 require that the backside surface of the
`claimed magnetic recording medium have “a skew less than about 0.5” and
`“a kurtosis less than about 4.0.” Ex. 1001, 12:59–61, 14:38–40. Petitioner’s
`obviousness challenge is predicated on the inherency of the skew and
`kurtosis values of the backside surface of Law’s magnetic tape, when it is
`modified in light of the teachings in Sasaki. See Tr. 18:19–25 (“JUDGE
`KOKOSKI: So then, are you relying on the inherency argument that they
`would meet the claimed—that the combination would meet the claimed
`skew and kurtosis values in claim 1? MR. WILLIAMS: So, with respect to
`Ground 2, we don’t have any reported skew kurtosis, right. So the question
`is: would the making of that tape have inherently included the skew and
`kurtosis? I think the answer is yes, it would have.”). In particular, Petitioner
`argues that skew and kurtosis values within the claimed range would
`naturally result from reducing the size and prevalence of protrusions in
`Law’s backcoat. See Pet. 45 (“[A] reduction of protrusions would have
`naturally led to a backside surface having a skew less than about 0.5 and a
`kurtosis less than about 4.0 . . . .”), 46 (“By reducing the number of peaks,
`the overall surface may become closer to a Gaussian distribution, which by
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`definition has a skew of 0.”), 47 (“[T]he claimed kurtosis measurement is
`merely the result of removing large protrusions from the backside surface.”),
`48 (“[A] reduction of backside protrusions would naturally result in a
`kurtosis of less than 4.0.”), 49 (“As the frequency of large protrusions is
`reduced, the skew of the backcoat surface approaches 0 and the kurtosis
`becomes closer to 3.”); Reply 23 (“Skew and kurtosis are inherent roughness
`properties of a surface. The reduction in skew and kurtosis to approach
`Gaussian values of 0 and 3.0 are natural consequences of removing large
`protrusions on a surface while leaving the smaller protrusions.”). Patent
`Owner argues that there is “no reason to expect that the combination of Law
`and Sasaki would inherently meet” the claimed roughness parameters. PO
`Resp. 47 (citing Ex. 2026 ¶¶ 75–83).
`The Federal Circuit has explained that the concept of inherency in the
`patentability analysis was originally rooted in anticipation and “must be
`limited when applied to obviousness.” PAR Pharm., Inc. v. TWI Pharms.,
`Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014); see also Honeywell Int’l Inc. v.
`Mexichem Amanco Holdings S.A. de C.V., 865 F.3d 1348, 1354–55 (Fed.
`Cir. 2017) (cautioning that “the use of inherency in the context of
`obviousness must be carefully circumscribed.”). The Federal Circuit has
`further explained that:
`A party must . . . meet a high standard in order to rely on
`inherency to establish the existence of a claim limitation in the
`prior art in an obviousness analysis—the limitation at issue must
`necessarily be present, or the natural result of the combination of
`elements explicitly disclosed by the prior art.
`PAR Pharm., 773 F.3d at 1195–96. Thus, inherency “may not be established
`by probabilities or possibilities.” Id. at 1195 (quoting In re Oelrich, 666
`F.2d 578, 581 (CCPA 1981)). “‘The mere fact that a certain thing may
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`result from a given set of circumstances is not sufficient’ to render the result
`inherent.” Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1367
`(Fed. Cir. 2017) (quoting Oelrich, 666 F.2d at 581).
`To support its contention that reducing the protrusions on the backcoat
`of Law’s magnetic tape, as taught by Sasaki, would result in a backside
`surface that necessarily has “a skew less than about 0.5 and a kurtosis less
`than about 4.0,” Petitioner first directs us to Law’s magnetic tape, which
`Petitioner characterizes as having “the same structure that the ’774 Patent
`alleges to result in the claimed properties.” Pet. 37–38. In particular,
`Petitioner points to Law’s Sample 5, and argues that it produces a magnetic
`tape “with a structure and composition that is substantially identical to” the
`magnetic tapes described in Examples 1 and 2 in the ’774 patent. Id. at 22–
`25. As we noted in the Institution Decision, however, there are several
`differences between Examples 1 and 2 in the ’774 patent and Sample 5 in
`Law. Dec. on Inst. 11–12. For example, Law’s Sample 5 does not include
`the same size carbon black in the same amounts as Examples 1 or 2 of the
`’774 patent. Compare Ex. 1004, col. 9–10, Table 1, with Ex. 1001, 10:46–
`52. There are also “differences in amounts of ‘Filler,’ ‘Wear Particles,’ and
`‘Hard Binder’ used in the ’774 examples and Law’s Sample 5.” Dec. on
`Inst. 12. We determined that these differences between Law’s Sample 5 and
`Examples 1 and 2 in the ’774 patent precluded a finding that Law’s magnetic
`tape inherently discloses the claimed skew and kurtosis values. Id. The
`record developed during trial does not change this conclusion.
`Petitioner then directs us to Sasaki, which recognizes that to improve
`the quality of magnetic tape “it is necessary to create a back coat that
`reduces protrusions imprinting upon the magnetic layer during long-term
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`storage while preventing damage to the magnetic layer during repeated
`operations.” Ex. 1005 ¶ 16. Petitioner argues that Sasaki teaches “that the
`use of fine-grain, uniformly-sized carbon black particles in the backside
`coating would prevent embossment by removing the large backside particles
`that created protrusions on the surface.” Pet. 38 (citing Ex. 1005 ¶ 130;
`Ex. 1003 ¶ 157). Petitioner specifically identifies Sasaki’s Examples 1–4,
`where the backing layer used a fine carbon black with a mean
`particle size of 20 to 70 nm, [and] the backing layer’s protrusion
`distribution was:
`20 to 40nm – 1.2/μm2
`40 to 80nm – 0.4/μm2
`80 to 100nm – 0.2/μm2
`Over 100nm – None.
`In these samples, there was almost no sign of backing layer
`protrusions imprinting on to the magnetic layer after storage, and
`there was no observable damage after the run durability stress
`testing.
`Ex. 1005 ¶ 130.
`Petitioner also points to the following testimony from the Isobe
`Declaration:
`As would have been understood by a person of ordinary skill in
`the art, a reduction of protrusions would have naturally led to a
`backside surface having a skew less than about 0.5 and kurtosis
`less than about 4.0, and a person of ordinary skill in the art would
`have found it obvious, when applying Sasaki’s teachings to Law,
`to create a tape with such measurements.
`. . . .
`As the frequency of large protrusions is reduced, the skew of the
`backcoat surface approaches 0 and the kurtosis becomes closer
`to 3. Thus, a person of ordinary skill in the art would have found
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`it obvious to create magnetic tape according to Law’s
`formulation, and reducing the prevalence of backside peaks and
`embossment per Sasaki’s teachings, resulting in a magnetic tape
`with a backside surface roughness with skew less than about 0.5
`and a kurtosis less than about 4.0.
`Ex. 1003 ¶¶ 170–174.
`Petitioner’s cited evidence establishes several facts. First, it
`establishes that Law discloses a process using 30 nm carbon black to
`produce the backside coating of the magnetic tape. Ex. 1004, col. 9–10,
`Table 1. Second, it establishes that Law teaches that protrusions in the
`backside surface can cause embossing on the magnetic tape’s magnetic
`layer. Id. at 5:56–59, 6:31–39. Third, it establishes that Sasaki teaches that
`reducing the size and prevalence of protrusions in the backside surface
`prevents embossing on, and damage to, the magnetic layer of the magnetic
`tape. Ex. 1005 ¶¶ 15–16. Fourth, it establishes that Sasaki discloses a
`backside surface with a protrusion size distribution having the following
`specifications: 1.2 protrusions of 20 to 40 nm per μm2, 0.4 protrusions of 40
`to 80 nm per μm2, 0.02 protrusions of 80 to 100 nm per μm2, and no
`protrusions over 100 nm. Id. ¶ 19. Fifth, it establishes that Sasaki discloses
`a backside coating made using 20 nm fine particle carbon black that matches
`these protrusion size distribution specifications. Id. ¶¶ 92, 129; see also id.
`¶ 58 (“Carbon black may be a combination of fine particle carbon black with
`a mean particle size of 10 to 50nm, and medium particle carbon black with a
`mean particle size of 60 to 100nm, or preferably made up entirely of the fine
`particle carbon black.”).
`The evidence, however, does not establish that a backside surface
`having a skew less than about 0.5 and a kurtosis less than about 4.0
`necessarily results from reducing the size and prevalence of the protrusions
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`on the backside surface of Law’s magnetic tape. As Petitioner agrees, Law
`and Sasaki do not discuss skew and kurtosis values. See Pet. 29 (stating that
`Law does not expressly disclose skew or kurtosis values); Reply 23
`(recognizing that neither Law nor Sasaki contain express disclosures of skew
`and kurtosis); Tr. 18:22–23 (Petitioner’s counsel noting that there are no
`reported skew and kurtosis values in Law or Sasaki). Thus, Petitioner relies
`on Mr. Isobe’s testimony to establish that reducing the protrusions on Law’s
`backside surface would result in a skew less than about 0.5 and a kurtosis
`less than about 4.0. See Pet. 45–49; Ex. 1003 ¶¶ 79–81, 170–174. In that
`regard, Mr. Isobe testified as follows:
`The ’774 Patent admits that skew and kurtosis are
`measures of the degree to which the prevalence of peaks on the
`backside surface are reduced. Ex. 1001 at 8:20–23 (“[w]ith
`regard to magnetic recording medium 30, it is generally desirable
`to decrease positive skew by decreasing the predominance of
`high peaks, and, consequently, decreasing the number and/or size
`of pits or embossments.”). The prevalence of peaks on the
`backside surface (and therefore skew) can be reduced using only
`uniformly-sized, fine carbon black particles. Id. at 5:22–38
`(“since the largest particles are generally not utilized in the
`backside 36, the backside surface 42 generally decreases the
`number and/or predominance of any pits or embossments formed
`in recording surface 56.”). By reducing the number of peaks, the
`overall surface may become closer to a Gaussian distribution,
`which by definition has a skew of zero. See, e.g., Ex. 1014 at
`5:35–36; Fig. 2A[.]
`Ex. 1003 ¶ 171. Mr. Isobe further stated that “[t]he ’774 Patent admits that
`the claimed kurtosis measurement is merely the result of removing large
`protrusions from the backside surface,” and points to the ’774 patent’s
`description that “for relatively spiky surfaces, kurtosis is greater than three;
`for wavy surfaces, kurtosis is less than three; and for perfectly random
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`surfaces, kurtosis is generally equal to three.” Id. ¶ 172 (quoting Ex. 1001,
`9:2–5). According to Mr. Isobe, “[b]ecause a random surface would contain
`less extreme peaks and valleys, a surface approaching a ‘truly Gaussian
`surface’ is desired,” and, “[t]herefore, the ’774 Patent admits that a reduction
`of backside protrusions would naturally result in a kurtosis of less than 4.0.”
`Id. (citing Ex. 1001, 9:6–10; Ex. 1014, 4:17–32, 5:35–36).
`Mr. Isobe’s testimony is insufficient to support a finding that reducing
`the protrusions in the Law backside coating necessarily results in a backside
`surface having a skew of less than about 0.5 and a kurtosis of less than about
`4.0. First, Mr. Isobe mischaracterizes the disclosures of the ’774 patent.
`The ’774 patent does not teach that generally reducing protrusions on the
`backside surface results in the claimed skew and kurtosis values. Instead,
`the ’774 patent teaches configuring the backside surface to provide a larger
`number of peaks with relatively small and uniform heights, so that a large
`surface area of