Trials@uspto.gov
`571-272-7822
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` Paper No. 56
`Entered: November 7, 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 IPR2017-01268
`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
`
`
`571-272-7822
`
`
`
`
`
`
` Paper No. 56
`Entered: November 7, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJIFILM CORPORATION,
`Petitioner,
`
`v.
`
`SONY CORPORATION
`Patent Owner.
`____________
`
`Case IPR2017-01268
`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
`
`
`
`IPR2017-01268
`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 shown by a preponderance of the evidence that
`claims 15 and 17 of U.S. Patent No. 7,029,774 B1 (“the ’774 patent,”
`Ex. 1001) are unpatentable, and has not shown by a preponderance of the
`evidence that claims 1–11, 16, and 18–20 of the ’774 patent are
`unpatentable.
`A.
`Procedural History
`FUJIFILM Corporation (“Petitioner”) filed a Petition (“Pet.”) to
`institute an inter partes review of claims 1–11 and 15–20 (“the challenged
`claims”) of the ’774 patent based on the following grounds: (1) whether
`claims 15 and 17 are unpatentable under 35 U.S.C. § 102 as being
`anticipated by Ishikawa1, (2) whether claims 1–11 and 15–20 are
`unpatentable under 35 U.S.C. § 103 as being obvious over Aonuma2, and (3)
`whether claims 1–11 and 15–20 are unpatentable under 35 U.S.C. § 103 as
`being obvious over the combined teachings of Aonuma and Abe3. Paper 1,
`12. 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
`
`
`1 U.S. Patent App. Pub. No. US 2003/0054203 A1, published March 20,
`2003 (Ex. 1015).
`2 Japanese Patent App. Pub. No. P2003-36520A, published Feb. 7, 2003
`(Ex. 1017). We refer to “Aonuma” as the English translation of the original
`reference.
`3 European Patent App. Pub. No. 0 494 793 A1, published July 15, 1992
`(Ex. 1013).
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`claims 1–11 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 1–11 and 15–20 are unpatentable
`with respect to all three grounds set forth in the Petition. Paper 11 (“Dec. on
`Inst.”), 17–18.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(“PO Resp.,” Paper 21), and Petitioner filed a Reply (“Reply,” Paper 27).
`Petitioner relies on the Declaration of Ryosuke Isobe4 (“the Isobe
`Declaration,” Ex. 1003), the Declaration of Norihito Kasada (“the Kasada
`Declaration,” Ex. 1019), the Declaration of Dr. Bart Raeymaekers (“the
`Raeymaekers Declaration,” Ex. 1018), and the Rebuttal Declaration of
`Dr. Bart Raeymaekers (“the Raeymaekers Rebuttal 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 38), and Petitioner filed a
`Response (Paper 39).
`Petitioner filed a Motion to Exclude Exhibit 2040, and
`paragraphs 121–126 of the Talke Declaration. Paper 33. Patent Owner filed
`an Opposition (Paper 41), and Petitioner filed a Reply (Paper 42). Patent
`Owner filed a Motion to Exclude certain paragraphs of the Kasada
`Declaration, the Isobe Declaration, the Raeymaekers Declaration, and the
`Raeymaekers Rebuttal Declaration, and Exhibits 1037 and 1038. Paper 36.
`
`
`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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`Petitioner filed an Opposition (Paper 40), and Patent Owner filed a Reply
`(Paper 43).
`An oral hearing was held on July 31, 2018, and a transcript is included
`in the record. Paper 47 (“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. 64. 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. Additionally, the ’774 patent is the
`subject of IPR2017-01267, also filed by Petitioner. Pet. 64.
`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
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`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.
`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
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`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
`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 “the 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 “measures 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
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`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 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 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 a 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 coated on 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 the embossment of the recording
`surface, wherein the backside defines 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
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`height mean of less than about 200, and a 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
`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. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60).
`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, 163–64 (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
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`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
`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 Decision on Institution, 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–
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`79 (Fed. Cir. 2015) (discussing the burdens of persuasion and production in
`inter partes review).
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). Although the elements must be arranged in the same way as in the
`claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity
`of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed.
`Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`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
`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.
`Ishikawa
`Ishikawa generally “relates to magnetic tape having optical servo
`tracks on the side opposite to the magnetic recording side.” Ex. 1015 ¶ 1.
`Ishikawa describes “incorporating specific fine particles into the backcoating
`layer of the magnetic tape and forming specific voids in the backcoating
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`layer to make the backcoating layer capable of forming servo tracks.” Id.
`¶ 8. Ishikawa further teaches that the backcoating “comprises a binder and
`fine particles having been dispersed in the binder and being capable of
`irreversible changing in color on oxidation reaction, and has a sufficient
`number of microvoids of sufficient size to supply sufficient oxygen to cause
`the oxidation reaction.” Id. ¶ 9.
`Ishikawa teaches that, in order to provide a tape with satisfactory
`running properties, “it is preferred” that the backcoating layer “have a
`moderate surface roughness,” but that it is also preferred that the
`backcoating layer “be as smooth as possible to prevent the surface profile of
`the backcoating layer [] from being transferred to the magnetic layer while
`the tape is wound.” Id. ¶ 44. According to Ishikawa, taking both these
`requirements into consideration, the backcoating layer “preferably has an
`arithmetic mean roughness Ra of 7 to 50 nm, particularly 8 to 30 nm, and a
`10 point mean roughness Rz of 40 to 250 nm, particularly 50 to 200 nm.”
`Id. Ishikawa further teaches that, in order for the backcoating layer to
`achieve arithmetic mean roughness Ra and 10 point mean roughness Rz
`values within the preferred ranges, the backcoating layer preferably contains
`carbon black having a primary particle size of 15 to 80 nm, or, more
`preferably, 25 to 80 nm. Id. ¶ 51.
`2.
`Aonuma
`Aonuma generally relates “to a coated-type magnetic recording
`medium.” Ex. 1017 ¶ 1. In particular, Aonuma describes “[a] magnetic
`recording medium that comprises” layers “on at least one plane of a
`nonmagnetic substrate,” including “[a] magnetic layer containing a
`ferromagnetic powder and a binder,” “[a] nonmagnetic layer containing a
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`nonmagnetic powder and a binder as well as a magnetic layer containing a
`ferromagnetic powder and a binder in the order given,” and “[a] back-coat
`layer on the surface of the aforementioned the [sic] nonmagnetic substrate
`opposite the surface provided with the aforementioned magnetic layer or the
`aforementioned nonmagnetic layer and the aforementioned magnetic layer.”
`Id. ¶ 9. According to Aonuma, “further smoothening of the magnetic layer
`surface and the optimization of protuberances” makes it possible “to achieve
`both low noise in terms of the medium noise and durability against running
`motions in the system that uses an MR head.” Id. ¶ 6.
`Aonuma teaches that “[t]he back-coat layer primarily contains a
`carbon black or a conductive oxide powder,” and “it is preferable to use two
`types of the carbon black with different mean grain sizes,” such as “a fine-
`powder carbon black with a mean grain size of 10 to 30 nm but preferably
`10 to 20 nm, and a coarse-powder carbon black with a mean grain size of
`150 to 300 nm but preferably 230 to 300 nm.” Id. ¶ 86. Aonuma further
`teaches that “the fine-powder carbon black generally has a superior liquid-
`lubricant retention force and can therefore contribute to the reduction of
`frictional coefficient when used in combination with a lubricant,” and the
`coarse-powder carbon black “functions as a solid lubricant” that “forms
`minute projections on the surface of the back-coat layer, thereby reducing
`the contact surface area and contributing to the reduction of frictional
`coefficient.” Id. ¶ 87.
`Abe
`3.
`Abe “relates to magnetic recording media comprising improved
`backside coating layers, wherein the backside coating layers have excellent
`tracking, friction, and smoothness characteristics.” Ex. 1013, 2:4–6. Abe
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`recognizes that backside coating layers that are too smooth tend to trap air
`under the tape as it moves, making tracking difficult to control, and also
`have poor durability because the coefficient of friction is too high, and that
`backside coating layers that are too rough “tend[] to damage the smooth
`surface of the magnetic layer as the magnetic recording tape is wound and
`unwound.” Id. at 2:17–23.
`Abe teaches that “excellent” tracking, friction, and smoothness
`characteristics “may be achieved by incorporating two kinds of carbon black
`particles in a backside coating layer, wherein each kind of carbon black
`particle has a particle size within a certain specified range.” Id. at 2:46–50.
`According to Abe, using “the two kinds of carbon black particles introduces
`a plurality of projections into an otherwise smooth surface,” wherein “the
`projections have a size and surface density such that the surface of the
`backside coating layer has a rough texture for minimizing air entrapment
`during tape transport, yet is smooth enough” that it “has less of a tendency to
`damage the magnetic layer relative to previously known backside coating
`layers comprising two different kinds of carbon black particles.” Id. at
`2:51–56.
`Specifically, Abe describes backside coating layers that have a
`centerline average roughness of 30 nm or less, wherein the surface density of
`the projections having a height of 30 nm or more is 2% or more, and the
`surface density of the projections having a height of 100 nm or more is 2%
`or less. Id. at 3:9–14. Abe teaches that “only the projections having a height
`of 30 nm or more contact the magnetic layer for the most part,” and,
`therefore, “the real contact between the backside coating layer and the
`magnetic layer is minimized,” providing a low friction coefficient. Id. at
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`3:17–19. Abe further teaches that, in order to provide a centerline average
`roughness of 30 nm or less, “it is preferred to use a relatively large amount
`of finely divided carbon black particles having a particle size in the range
`from 10 nm to 30 nm,” and, in order to provide a surface density of 2% or
`more of projections having a height of 30 nm or more, “it is preferred to use
`relatively small amounts of larger carbon black particles having a particle
`size in the range from 150 to 1000 nm.” Id. at 3:21–25. The surface density
`of 2% of projections having a particle size of 100 nm or more is preferably
`obtained when “the weight ratio of the finely divided carbon black particles
`to the larger carbon black particles is in the range of 99.9/0.1 to 70/30.” Id.
`at 3:25–28.
`E.
`Anticipation by Ishikawa
`Petitioner contends that the subject matter of claims 15 and 17 is
`unpatentable under 35 U.S.C. § 102 as anticipated by Ishikawa. Pet. 21–26;
`Reply 5–8. 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. 66–73.
`The parties specifically focus their arguments on the “peak height mean less
`than about 200 [nm] and a peak-to-valley roughness less than about 325 nm”
`limitation of claim 15. As to the other elements of claims 15 and 17, we
`have reviewed the evidence and arguments presented in the Petition and find
`that Petitioner has shown sufficiently that those elements are disclosed and
`arranged as in the claims. Pet. 21–24.
`Petitioner argues that “[t]he backcoating layer of Ishikawa’s magnetic
`tape ‘preferably has . . . a 10 point mean roughness Rz of 40 to 250 nm,
`particularly 50 to 200 nm.” Pet. 24 (citing Ex. 1015 ¶ 44; Ex. 1003 ¶ 216).
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`Pointing to Table 1 in Ishikawa, Petitioner argues that “[a]ll examples of
`tape made according to Ishikawa’s teachings feature peak-to-valley
`roughness (Rz) less than 87 nm.” Id. (citing Ex. 1015, Table 1; Ex. 1003
`¶ 216). Therefore, according to Petitioner, “Ishikawa discloses several tapes
`(Examples 1–5) with a ‘peak-to-valley roughness of less than about 325
`nm.’” Id. (citing Ex. 1003 ¶ 216).
`Patent Owner responds that “Ishikawa did not properly measure peak-
`to-valley roughness (Rz),” and the actual peak-to-valley roughness “is likely
`to be far higher than reported in Ishikawa.” PO Resp. 68–69 (citing
`Ex. 2026 ¶ 91). Patent Owner contends that the stylus-type profilometer
`used to measure the reported peak-to-valley roughness values in Ishikawa
`“does not work well for magnetic tape” because when a stylus tip is pressed
`against the backcoat surface and dragged, “it digs into the surface, thereby
`underestimating the variations in height that exist on the surface.” Id. at 70
`(citing Ex. 2026 ¶ 95). Patent Owner also contends that “the stylus would
`not have registered the microvoids in Ishikawa’s backcoat,” which “are a
`large percentage of the backcoat” and “are intended to permeate the entire
`thickness of the backcoat, and to be open at the surface.” Id. at 72 (citing
`Ex. 1015 ¶¶ 29, 146, Table 1; Ex. 2026 ¶¶ 96–98). Patent Owner further
`contends that “Ishikawa is not clear where its roughness measurements were
`taken” because it “does not specify whether its stylus-based roughness
`measurements were taken on the oxidized or unoxidized portions of the
`backcoat, or performed in some way which attempts to account for both.”
`Id. at 72–73 (citing Ex. 2026 ¶ 99).
`Petitioner replies that Patent Owner admitted that the specification of
`the ’774 patent does not define peak-to-valley roughness by its measurement
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`method, and that “the claims recite the required characteristics, without
`specifying that a 2-D optical interferometer measurement must be included.”
`Reply 5 (quoting PO Resp. 22–23). Petitioner also argues that “several prior
`art references from leading tape companies in the 2004–2005 time period,
`including Ishikawa, used stylus-type measurements on magnetic tape.” Id.
`at 6 (citing Ex. 1015 ¶ 45; Ex. 1027, 7:28–40; Ex. 1028 ¶ 36). According to
`Petitioner, Patent Owner’s “speculative arguments against Ishikawa do not
`show that Ishikawa’s reported Rz values would be off by a factor of 3 or
`more, which is what would be required to push its results out of the claimed
`range.” Id. at 8 (citing Ex. 1015 ¶ 146).
`We agree with Petitioner that Ishikawa teaches “peak-to-valley
`roughness less than about 325 nm” as recited in claim 15. Pet. 24–25;
`Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating
`layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to
`250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five
`example embodiments of its magnetic tape, and reports the measurements of
`a number of characteristics of the backcoat layer for each example, including
`peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses
`that peak-to-valley roughness Rz was measured using a stylus-type
`profilometer under the following conditions:
`Stylus:
`
`
`diameter: 1.5 to 2.5 μm; curvature: 60º
`Contact pressure:
`50 to 300 μN
`Cut-off length:
`
`80 μm
`Sampling length:
`
`80 μm
`Assessment length:
`400 μm
`Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five
`examples ranged from 58 to 87 nm, as shown in the annotated portion of
`Ishikawa Table 1 from the Petition, reproduced below:
`
`16
`
`
`
`
`IPR2017-01268
`Patent 7,029,774 B1
`
`
`
`
`Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa
`Table 1 shows the results for the measured characteristics of the backcoat
`layer of Examples 1–5, with the peak-to-valley roughness Rz values
`highlighted by a red box. Id. Because Ishikawa teaches that the backcoating
`layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40
`to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents
`examples of magnetic tape with backside surfaces having a peak-to-valley
`roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness
`less than about 325 nm” as recited in claim 15.
`In light of these express disclosures in Ishikawa, Patent Owner does
`not provide sufficient objective evidence or analysis to support its contention
`that “Ishikawa did not properly measure the peak-to-valley roughness (Rz)”
`and the “actual peak-to-valley roughness is unknown, but is likely to be far
`higher than reported in Ishikawa.” PO Resp. 68–69 (citing Ex. 2026 ¶ 91).
`First, as Patent Owner admits, the ’774 patent specification “does not define
`the terms skew, kurtosis, peak-height mean and peak-to-valley roughness by
`the measurement method.” PO Resp. 23; see also id. at 22 (“[T]he claims
`recite the required characteristics, without specifying that a 2-D optical
`
`
`
`
`17
`
`
`
`IPR2017-01268
`Patent 7,029,774 B1
`
`interferometer measurement must be included.”). In that regard, the ’774
`patent describes one embodiment where the backside surface “is analyzed to
`determine values for a plurality of surface measurement parameters” “using
`a Wyko® Optical Profiler manufactured by Veeco Instruments, Inc. of
`Tucson, Ariz., or other suitable device.” Ex. 1001, 8:2–7 (emphasis added).
`Moreover, there is no indication in the ’774 patent that a stylus-type
`profilometer like the one used in Ishikawa is not suitable for measuring the
`claimed surface measurement parameters.
`Patent Owner next turns to the Talke Declaration, in which Dr. Talke
`testifies that Ishikawa’s backcoat is made with a polyurethane binder that “is
`soft compared to a profilometer tip” and, when the profilometer tip is
`“pressed against the coating surface and dragged,” it “is likely to dig in to
`the surface,” which will “reduce the apparent vertical change in the surface.”
`Ex. 2026 ¶ 95. Dr. Talke relies on Bhushan5 to support his testimony,
`particularly to Bhushan’s teaching that for “polymeric magnetic media,
`stylus instruments cannot be used because they scratch the surface
`(Fig. 2.16) and hence only an optical profiler can be used.” Id. (quoting
`Ex. 2039, 89). Bhushan further explains that “[t]he existence of scratches
`results in measurement errors and unacceptable damage,” and, with
`reference to a stylus trace on a magnetic tape, states that “the stylus digs into
`the surface and the results do not truly represent the microroughness.”
`Ex. 2039, 94. The magnetic tape stylus trace reported in Bhushan, however,
`was created using a stylus load of 1 mN (id. at 90, Fig. 2.16), which is
`
`
`5 BHARAT BHUSHAN, TRIBOLOGY AND MECHANICS OF MAGNETIC STORAGE
`DEVICES 63–156 (2d ed. 1996) (Ex. 2039). The cited page numbers in
`Bhushan refer to the original pagination of the document.
`
`18
`
`
`
`
`IPR2017-01268
`Patent 7,029,774 B1
`
`considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015
`¶ 45). The Talke Declaration does not address this discrepancy, and
`Dr. Talke stated during his deposition that reducing the stylus load would
`reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q:
`Would reducing the contact pressure for the stylus instrument reduce the
`scratching of the magnetic tape surface by the stylus? A: Yes, it would, but
`you have to remember the other problem is the diameter and size of the
`stylus.”).
`Moreover, Petitioner provides evidence that it was not uncommon to
`use stylus-type profilometers to measure the properties of magnetic tape,
`even after Bhushan was published in 1996. See Reply 6. In particular,
`Petitioner points to Saliba,6 which describes using a stylus-type
`profilometer, under identical conditions to those used in Ishikawa, to
`measure the surface characteristics (including peak-to-valley roughness) of
`the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner
`further points to Ohno,7 which also describes using “a stylus type 3D
`profilometer in accordance with JIS B0601” to measure the surface
`roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015
`¶ 45 (Ishikawa explaining that surface roughness characteristics were
`measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba
`explaining that surface roughness characteristics where measured “in
`accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the
`
`
`6 US
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