`
`
`
`Paper No. 9
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJIFILM CORPORATION
`Petitioner,
`
`v.
`
`SONY CORPORATION
`Patent Owner.
`____________
`
`Case IPR2017-01356
`Patent 7,016,137
`____________
`
`
`
`
`
`
`PATENT OWNER (REPLACEMENT) PRELIMINARY RESPONSE
`
`37 C.F.R. § 42.107
`
`
`
`
`

`

`IPR2017-01356
`Patent 7,016,137
`
`
`
`
`
`Replacement Preliminary Response
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`OVERVIEW .................................................................................................... 5
`
`SUMMARY OF THE ’137 PATENT ............................................................. 7
`
`III. CLAIM CONSTRUCTION .......................................................................... 16
`“format state designation information” ............................................... 16
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`“tape-oriented recording and/or reproducing means” ....................... 20
`“memory accessing means” ................................................................. 21
`“information acquiring means” ........................................................... 21
`“operation controlling means” ............................................................ 21
`“formatted” .......................................................................................... 22
`“once said magnetic tape is formatted” .............................................. 22
`
`IV. PETIONER HAS FAILED TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF UNPATENTBAILITY OF ANY CLAIM ..................... 25
`
`A. Ground 1: Anticipation by Platte ........................................................ 26
`
`1. Overview of Platte ........................................................................ 26
`
`2. Missing Claim Limitations ........................................................... 27
`
`B.
`
`Ground 2: Obviousness over Ikeda II and Platte ................................ 35
`
`1. Overview of Ikeda II ..................................................................... 36
`
`2. Missing Claim Limitations ........................................................... 37
`
`3. Asserted Combination is Not Obvious ......................................... 40
`
`C.
`
`Ground 3: Obviousness over Ikeda II and ECMA Standard .............. 42
`
`1. Overview of ECMA Standard ....................................................... 42
`
`2. Missing Claim Limitations ........................................................... 42
`
`
`
`2
`
`

`

`IPR2017-01356
`Patent 7,016,137
`3. Asserted Combination is Not Obvious ......................................... 48
`
`
`
`
`
`Replacement Preliminary Response
`
`D. Grounds 4-6: Takayama and Ikeda in view of ECMA Standard and/or
`Platte .................................................................................................... 49
`
`V.
`
`CONCLUSION ............................................................................................. 50
`
`
`
`
`
`
`
`
`
`
`
`3
`
`

`

`IPR2017-01356
`Patent 7,016,137
`
`
`
`
`
`Replacement Preliminary Response
`
`EXHIBITS
`
`Exhibit
`
`Description
`
`Declaration of Prof. James A. Bain in IPR2017-01356
`
`Deposition Testimony of Dr. William Messner in IPR2016-01181
`(Feb. 21, 2017).
`
`Deposition Testimony of Dr. William Messner in IPR2016-01183
`(Feb. 21, 2017)
`
`Declaration of Dr. William Messner in IPR2016-01183
`
`Curriculum Vitae of Prof. James A. Bain
`
`Dictionary.com definition of “once”.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2017-01356
`Patent 7,016,137
`I.
`OVERVIEW
`
`
`
`
`
`Replacement Preliminary Response
`
`As authorized by the Board in Paper 8, Sony Corporation (“Patent Owner”)
`
`submits this Replacement Preliminary Response within thirty (30) calendar days of
`
`the filing of the corrected version of Exhibit 1008 (filed September 8, 2017).1
`
`This Preliminary Response is supported by the sworn declaration of
`
`Professor James Bain, a tenured Professor of Electrical and Computer Engineering
`
`and Associate Director of the Data Storage Systems Center at Carnegie Mellon
`
`University. (Ex. 2001, ¶¶6-14).
`
`As explained below, Fujifilm Corporation (“Petitioner”) has not shown a
`
`reasonable likelihood that it would prevail in proving the unpatentability of any of
`
`claims 1-4 of U.S. Patent No. 7,016,137 (“the ’137 patent”).
`
`Petitioner relies on the Corrected Declaration of Mr. John Koski (Ex. 1008).2
`
`Under each of the asserted grounds, Mr. Koski often merely parrots the prior art
`
`verbatim, without explaining how the parroted words meet the elements of the
`
`patent claims. Mr. Koski’s vague, conclusory testimony cannot create a “genuine
`
`
`1 The deadline fell on a weekend. Monday, October 9, 2017 was a federal holiday.
`
`This filing is timely under 37 C.F.R. § 42.1(a) (incorporating § 1.7).
`
`2 Citations herein to the Koski Declaration (Ex. 1008) are to the “corrected”
`
`version filed on September 8, 2017.
`
`
`
`5
`
`

`

`IPR2017-01356
`Patent 7,016,137
`issue of material fact” in the face of Dr. Bain’s particularized testimony. 37 C.F.R.
`
`
`
`
`
`Replacement Preliminary Response
`
`§ 42.108(c); cf. Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd.,
`
`731 F.2d 831, 836 (Fed. Cir. 1984) (“specific facts” necessary to create a “genuine
`
`issue of material fact” to survive summary judgment means that “[m]ere denials or
`
`conclusory statements are insufficient”).
`
`The Board can easily deny all grounds (Grounds 1-6) based on Petitioner’s
`
`own proposed construction of the term “operation controlling means,” without
`
`resolving the parties’ dispute concerning this term.3 In particular, Petitioner
`
`proposes that the term’s corresponding structure is “system controller 15” that is
`
`“programmed to carry out an algorithm described with reference to Fig. 15.” Pet.
`
`19. Referenced “Fig. 15” is an entire process flowchart that contains steps S101 to
`
`S122. Petitioner does not limit its proposed construction to any individual step or
`
`steps of the algorithm (unlike Petitioner’s construction of “information acquiring
`
`means” which focuses on “Step S104” of Fig. 15). Thus, unlike its construction of
`
`“information acquiring means,” Petitioner’s construction of “operation controlling
`
`means” by its own terms requires all of Fig. 15’s steps S101 to S122 to be
`
`
`3 To be clear, Patent Owner does not urge the Board to adopt Petitioner’s proposed
`
`construction (which Patent Owner disputes), but instead to simply consider
`
`whether Petitioner can even prevail under its own construction.
`
`
`
`6
`
`

`

`IPR2017-01356
`Patent 7,016,137
`performed by the algorithm. Petitioner, however, has not shown how all of these
`
`
`
`
`
`Replacement Preliminary Response
`
`steps are performed in any of Grounds 1-6.
`
`In addition, the Board can deny all grounds (Grounds 1-6) based on Patent
`
`Owner’s straightforward and reasoned constructions of either “format state
`
`designation information” or “once said magnetic tape is formatted.” As to the
`
`former, the specification clearly equates the term “format state” with “formatted or
`
`unformatted, and format type.” E.g., Ex. 1001, 23:41-49 (“…mismatch between
`
`the format state (formatted or unformatted, and format type)…”)(Emphasis added).
`
`As to the latter, Petitioner’s own expert in IPR2016-01181 confirmed that the ’137
`
`patent specification’s discussion of the MIC logical format “always” containing the
`
`format state designation information once the tape is formatted (id. at 16:30-35)
`
`means that the “memory itself” prevents a user from re-writing it (Ex. 2002, 31:10-
`
`32:12). Thus, the format state designation information must be stored in read-only
`
`memory. Under either one of these claim terms, Grounds 1-6 can all be denied.
`
`II.
`
`SUMMARY OF THE ’137 PATENT
`
`The ’137 patent describes a method for enhancing the security of data stored
`
`on a magnetic tape. (Ex. 1001, Abstract, 18:3-24:24; Ex. 2001, ¶ 43). In
`
`particular, it teaches a new use for known tape management data—namely, to
`
`prevent tampering with Write Once Read Many (“WORM”) cartridges (as distinct,
`
`for example, from a blank tape or defective formatting) by unauthorized parties
`
`
`
`7
`
`

`

`IPR2017-01356
`Patent 7,016,137
`seeking to defeat the “write once” feature specific to WORM-enabled cartridges.
`
`
`
`
`
`Replacement Preliminary Response
`
`Preventing tampering is of particular importance in the context of highly sensitive
`
`data, such as that typically stored on WORM media. As the ‘137 patent explains,
`
`“WORM tape cassettes are actually utilized most often for the recording of
`
`important data that call for secure measures to maintain their high storage value.”
`
`(Ex. 1001 at 3:6-7; Ex. 2001, ¶43).
`
`The specification provides several examples of tampering with WORM
`
`products. For example, it describes “a malicious user” intentionally replacing the
`
`memory of a WORM tape cassette with a memory from a non-WORM tape
`
`cassette. (Ex. 1001 at 2:36-3:5; Ex. 2001, ¶45). Under this scenario, recorded data
`
`may no longer be protected if the tape drive wrongly identifies the tape cassette as
`
`a normal, rewriteable type. The patent provides a similar example of illicit
`
`replacement of remote memory at column 19, lines 35 to 64. (Ex. 2001, ¶45).
`
`The ’137 patent solves this problem by using a particular type of information
`
`that relates to the tape’s format state, which is known as “format state designation
`
`information.” According to the patent’s disclosure, this information indicates the
`
`existence of formatting (“formatted or unformatted”), as well as the type of
`
`formatting (“format type”). (Ex. 1001 at 23:41-42; Ex. 2001, ¶46). The ’137
`
`patent uses format information to achieve a specific benefit: the ability to
`
`distinguish between different scenarios of likely tampering and scenarios where
`
`
`
`8
`
`

`

`IPR2017-01356
`Patent 7,016,137
`innocent technical errors have occurred.
`
`
`
`
`
`Replacement Preliminary Response
`
`This benefit is explained in the ’137 patent with reference to the
`
`embodiment depicted in Fig. 15, reproduced below:
`
`
`
`The flowchart of Fig. 15 lays out the steps of a principal embodiment of the
`
`’137 patent. (Ex. 1001, 17:60-23:66). The flowchart begins in steps S101-S103
`
`with the loading of a cassette into a tape drive. The drive then checks whether the
`
`cassette has an in-cassette memory (“MIC”) with logically consistent contents at
`
`steps S102 and S103. (Ex. 1001, 18:47-54; Ex. 2001, ¶48).
`
`If the result is affirmative, the drive loads system log data from both the
`
`MIC (step S104) and the tape (step S105). (Ex. 1001, 18:55-19:6; Ex. 2001, ¶49).
`
`
`
`9
`
`

`

`IPR2017-01356
`Patent 7,016,137
`The drive then checks in step S106 whether the system log data matches a
`
`
`
`
`
`Replacement Preliminary Response
`
`stipulated format type (see highlighted version of Fig. 15, below). (Ex. 1001, 19:7-
`
`18; Ex. 2001, ¶49).
`
`
`
`If the answer is yes, the drive next checks (steps S107 and S108) whether the
`
`
`
`MIC indicates the tape is unformatted. (Ex. 1001, 19:19-25; Ex. 2001, ¶50). To
`
`do this, the drive uses the MIC logical format type. (Id.). If the MIC indicates that
`
`the tape is formatted, normal processing proceeds. (Ex. 1001, 19:16-20:23; Ex.
`
`2001, ¶50).
`
`If, on the other hand, the MIC indicates that the tape is unformatted (S108),
`
`
`
`10
`
`

`

`IPR2017-01356
`Patent 7,016,137
`the drive concludes that the tape has been tampered with. (Ex. 2001, ¶51). The
`
`
`
`
`
`Replacement Preliminary Response
`
`’137 patent states:
`
`“If the result of the check in step S108 is affirmative, that
`means the MIC logical format type from the MIC indicates the
`unformatted state despite the fact that earlier in step S106 the
`magnetic tape was found to be formatted in keeping with
`the stipulated format type. That is, there is an inconsistency
`between the format state (formatted or unformatted) actually
`detected from the magnetic tape on the one hand and the format
`state designated by a data item from the MIC on the other
`hand.”
`
`(Ex. 1001, 19:26-34)(Emphasis added)(Ex. 2001, ¶51). To reach this conclusion,
`
`the drive relies on the fact that the “MIC logical format type” and other data in the
`
`“drive initialize part” disclosed by the ’137 patent is stored in non-rewritable (i.e.,
`
`read-only) memory:
`
`“As mentioned above, the drive initialize part including the
`MIC logical format type in the MIC is established as a ROM
`area once the magnetic tape is formatted. The tape streamer
`drive 10 will not rewrite this area during its normal operations.
`The inconsistency above strongly suggests the possibility that
`the original MIC was removed from the tape cassette with its
`magnetic
`tape formatted and has been replaced by an
`illegitimate memory.”
`
`(Ex. 1001, 19:35-42)(Emphasis added)(Ex. 2001, ¶51).
`
`
`
`11
`
`

`

`IPR2017-01356
`Patent 7,016,137
`The situation is different, however, if the format type stipulated does not
`
`
`
`
`
`Replacement Preliminary Response
`
`correspond to the system log information found on the tape—that is, if step S106
`
`results in a negative. In that case, the drive will then check (steps S109 and S110)
`
`whether it can read a specified signal from the tape (see highlighted version of Fig.
`
`15, below). (Ex. 1001, 20:24-44; Ex. 2001, ¶52).
`
`
`
`If the drive cannot read the signal (step S111), then the drive checks the MIC
`
`logical format type (step S112) to determine whether the tape has been formatted.
`
`If the MIC indicates that the tape is unformatted, the drive concludes that an
`
`unformatted tape has been inserted. If the MIC indicates that the tape is formatted,
`
`the drive concludes that tampering has occurred. (Ex. 1001, 20:40-63; Ex. 2001,
`
`
`
`12
`
`

`

`IPR2017-01356
`Patent 7,016,137
`¶53).
`
`
`
`
`
`Replacement Preliminary Response
`
`If, on the other hand, the drive checks (step S110) for a specified signal on
`
`the tape and does find it, then drive again checks (step S113) the information
`
`obtained from the MIC (e.g. the MIC logical format type) to determine whether the
`
`tape has been formatted. If the MIC indicates the tape was not formatted, although
`
`a signal can be read from the tape, the drive again concludes that tampering has
`
`occurred. (Ex. 1001, 21:39-53; Ex. 2001, ¶54).
`
`If, however, the MIC indicates that the tape was formatted, the drive
`
`concludes (step S121) that the tape was defectively formatted (see highlighted
`
`version of Fig. 15, below). (Ex. 1001, 21:7-38; Ex. 2001, ¶55).
`
`
`
`13
`
`

`

`IPR2017-01356
`Patent 7,016,137
`
`
`
`
`
`Replacement Preliminary Response
`
`
`
`In this case, the drive is not finding tampering, but rather a simple technical
`
`
`
`error. For example, the ’137 patent teaches:
`
`“If the result of the check in step S114 is negative indicating
`that the magnetic tape has been formatted, the following can be
`deduced: earlier, in step S106, the system log from the
`magnetic tape was not found to have the stipulated format. In
`the earlier step S110, the reproduced signal was found to be
`obtained from the magnetic tape. That means there are some
`signals recorded on the magnetic tape. In other words, the
`magnetic tape has been formatted in keeping with some format
`type. Since the existence of the MIC was confirmed in step
`S103 in addition to the MIC logical format type indicating the
`
`
`
`14
`
`

`

`
`
`Replacement Preliminary Response
`
`
`
`IPR2017-01356
`Patent 7,016,137
`formatted state of the magnetic tape, it is presumed that the
`magnetic tape has been formatted in accordance with a format
`type that can be handled by the tape streamer drive 10. All
`things considered, it is highly likely that the magnetic tape
`has been formatted in keeping with a format type compatible
`with the tape streamer drive 10 but a write error or some
`other irregularities at the time of formatting prevented
`signals from getting recorded correctly to the magnetic tape.”
`
`(Ex. 1001, 21:14-32)(Emphasis added)(Ex. 2001, ¶56).
`
`In other words, a tape drive operating in accordance with Fig. 15 is not only
`
`capable of detecting a problem, it is capable of distinguishing between different
`
`forms of tampering and another type of technical error, if so desired. (Ex. 2001,
`
`¶57). To control reading and/or writing to the tape, the ’137 patent uses format
`
`state designation information specifically. An additional advantage is obtained by
`
`keeping the format state designation information in non-rewritable memory—and
`
`thus protected from alteration—at least after formatting.
`
`In sum, the method embodied in Fig. 15 allows for distinguishing between at
`
`least four different situations: (1) an illegitimate cartridge (e.g., a WORM cartridge
`
`that has been tampered with), (2) a blank tape; (3) a defectively formatted tape, and
`
`(4) a properly formatted tape. The first indicates fraud; the others do not. Thus by
`
`using information about the tape’s format state, the ‘137 patent is able to
`
`distinguish between these conditions. (Ex. 2001, ¶¶ 42, 57).
`
`
`
`15
`
`

`

`IPR2017-01356
`Patent 7,016,137
`III. CLAIM CONSTRUCTION
`
`
`
`
`
`Replacement Preliminary Response
`
`Certain issues of claim construction are addressed below, applying the
`
`“broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Technologies, LLC v Lee,
`
`136 S. Ct. 2131, 2144-45 (2016).
`
`Specific terms of relevance are discussed below. For terms that do not have
`
`constructions expressly set forth, Sony submits that the plain and ordinary meaning
`
`of the claim language as used in the context of the patent specification is
`
`applicable.
`
`A.
`
`“format state designation information”
`
`Both independent claims 1 and 4 recite the term “format state designation
`
`information.” Petitioner has not proposed a construction for this term in its
`
`petition, and Mr. Koski’s declaration does not address it either. The term “format
`
`state designation information” has not been construed to date in IPR2016-01181
`
`involving claim 5 of the ’137 patent. A proper construction would exclude all
`
`proposed Grounds of alleged unpatentability, because neither Platte nor ECMA
`
`Standard teaches this limitation.
`
`In Patent Owner’s view, which is supported by Dr. Bain’s declaration, the
`
`term “format state designation information” should be construed as “information
`
`indicating whether a tape is formatted, and if so, information indicating the
`
`
`
`16
`
`

`

`IPR2017-01356
`Patent 7,016,137
`format type.” (Ex. 2001, ¶88). The “format state” described in the specification
`
`
`
`
`
`Replacement Preliminary Response
`
`includes both an indication of whether or not a tape is formatted, and if it is, its
`
`format type. The format type should provide information that tends to indicate the
`
`type of formatting used on the tape, such as the type of drive that formatted the
`
`tape. (Ex. 2001, ¶89).
`
`In particular, the principal disclosure of the ’137 patent (the method of Fig.
`
`15) relies on information designating a state that includes both the existence of
`
`formatting and (if extant) the type of formatting. (Ex. 2001, ¶89). For example,
`
`the ’137 patent describes the format state in the following paragraph:
`
`“In any case, there is a mismatch between the format state
`(formatted or unformatted, and format type) detected by an
`actual read operation on the magnetic tape on the one hand and
`the format state designated by a data item held in the MIC on
`the other hand. In the cases above, the result of the check in
`step S108 turns out to be negative (indicated by a parenthesized
`"NO" (N) for step S108 FIG. 15). Then, step S108 is followed
`by step S119 in which the sequence process corresponding to
`the illegitimate cartridge is carried out.”
`
`(Ex. 1001, 23:41-49)(Emphasis added)(Ex. 2001, ¶89). Similar discussion is
`
`present throughout the specification. (Ex. 1001, 19:26-34, 20:1-8, 24:1-5)(Ex.
`
`2001, ¶89). For example, in column 19, the ’137 patent explains:
`
`“If the result of the check in step S108 is affirmative, that
`
`
`
`17
`
`

`

`
`
`Replacement Preliminary Response
`
`
`
`IPR2017-01356
`Patent 7,016,137
`means the MIC logical format type from the MIC indicates the
`unformatted state despite the fact that earlier in step S106 the
`magnetic tape was found to be formatted in keeping with the
`stipulated format type. That is, there is an inconsistency
`between the format state (formatted or unformatted) actually
`detected from the magnetic tape on the one hand and the
`format state designated by a data item from the MIC on the
`other hand.”
`
`(Ex. 1001, 19:26-24)(Emphasis added)(Ex. 2001, ¶90). This passage describes
`
`using both aspects of the “format state”: an indication of whether the tape is
`
`formatted, and if so its format type. (Ex. 2001, ¶91). The format type is used in
`
`Step S106, where the drive checks that the type matches the tape’s system log file.
`
`The existence of formatting is then used in step S108. (Ex. 2001, ¶91). By
`
`performing comparisons with both kinds of information, the method is able to
`
`glean useful information about both tampering and potential technical errors. (Ex.
`
`2001, ¶91).
`
`Not only is the “format state” described in general as including the format
`
`type, but the specific example of “format state designation information” used for
`
`Fig. 15 (the “MIC Logical Format Type”)—and indeed the only such example in
`
`the specification—also includes the format type. (Ex. 1001, 19:19-20)(Ex. 2001,
`
`¶92). The “MIC Logical Format Type” is shown in Fig. 12, and described as
`
`follows:
`
`
`
`18
`
`

`

`
`
`Replacement Preliminary Response
`
`
`
`IPR2017-01356
`Patent 7,016,137
`“As described, the MIC logical format type indicates whether
`the magnetic tape 3 is formatted or unformatted in keeping
`with each of the tape formats addressed by the tape streamer
`drive 10 of this invention. For example, the tape cassette of this
`invention has its magnetic tape left unformatted upon shipment
`from the factory; no signal is recorded on the magnetic tape. In
`conjunction with this unformatted state, the MIC is written with
`the MIC logical format type value indicating the unformatted
`state subject to the format type in question, upon shipment
`from the factory. If, say, the AIT-3 format is in effect, then the
`MIC is written with the MIC logical format type value of 20.”
`
`(Ex. 1001, 16:5-15)(Ex. 2001, ¶93)(Emphasis added). Figure 12 is reproduced
`
`below:
`
`
`
`19
`
`
`
`

`

`IPR2017-01356
`Patent 7,016,137
`As can be seen from Fig. 12, the MIC Logical Format Type has both
`
`
`
`
`
`Replacement Preliminary Response
`
`information indicating whether a tape is unformatted (e.g. “Virgin”), and if it is
`
`not, information indicating its format type (e.g. “AIT-1 Basic MIC Logical Format
`
`Type 1”)(Ex. 2001, ¶93).
`
`The broadest reasonable
`
`interpretation of “format state designation
`
`information” is, therefore, “information indicating whether a tape is formatted, and
`
`if so, information indicating the format type”.
`
`B.
`
`“tape-oriented recording and/or reproducing means”
`
`In proposing a construction for this term, Petitioner is somewhat unclear
`
`when referring to “these” as the corresponding structures for recording and/or
`
`reproducing information. Pet. 16 (citing Ex. 1008, ¶ 111). In the cited paragraph
`
`of the Koski Declaration, Petitioner’s expert clarifies that “One of skill in the art
`
`would have understood the corresponding structure disclosed in the specification to
`
`be that of a helical scan system using a rotary drum with two write heads and three
`
`read heads.” Ex. 1008, ¶ 111) (emphasis added). Therefore, Patent Owner
`
`understands that “a helical scan system using a rotary drum with two write heads
`
`and three read heads” is the corresponding structure in Petitioner’s proposed
`
`construction of the term “tape-oriented recording and/or reproducing means”.
`
`For purposes of the institution decision in this proceeding only, Patent
`
`Owner takes no position on the construction of this term. Instead, Patent Owner
`
`
`
`20
`
`

`

`IPR2017-01356
`Patent 7,016,137
`will show how Petitioner’s grounds fail under Petitioner’s own construction of this
`
`
`
`
`
`Replacement Preliminary Response
`
`term, without conceding it is the correct construction.4
`
`C.
`
`“memory accessing means”
`
`For purposes of the institution decision in this proceeding only, Patent
`
`Owner takes no position on the construction of this term.
`
`D.
`
`“information acquiring means”
`
`For purposes of the institution decision in this proceeding only, Patent
`
`Owner takes no position on the construction of this term.
`
`E.
`
`“operation controlling means”
`
`Petitioner has proposed the term “operation controlling means” to have the
`
`corresponding structure of “system controller 15” that is “programmed to carry out
`
`an algorithm described with reference to Fig. 15.” Pet. 19 (citing Ex. 1008, ¶ 117
`
`(“structure of the ‘operation controlling means’ corresponds to the algorithm
`
`carried out by system controller 15 described with reference to Fig. 15”)).
`
`Because Petitioner’s proposed construction refers generally to the algorithm
`
`of Fig. 15, rather than to any specific step or steps shown in that figure, Patent
`
`Owner understands Petitioner’s construction to require the controller to be
`
`programmed to perform the entire process flowchart of Fig. 15 (depicting steps
`
`4 Patent Owner’s expert Dr. Bain explains why Petitioner’s proposed construction
`
`of this term is incorrect. (Ex. 2001, ¶¶ 59-64).
`
`
`
`21
`
`

`

`IPR2017-01356
`Patent 7,016,137
`S101 to S122). Ex. 1001, 17:60-23:56 (describing flowchart of Fig. 15). Indeed,
`
`
`
`
`
`Replacement Preliminary Response
`
`this construction differs from Petitioner’s proposed construction of the term
`
`“information acquiring means” wherein Petitioner limited the algorithm to “Step
`
`S104” of Fig. 15. Compare Pet. 18 (referring to Fig. 15, Step S104), with Pet. 19
`
`(referring to Fig. 15 generally).
`
`For purposes of the institution decision in this proceeding only, Patent
`
`Owner takes no position on the construction of this term. Instead, Patent Owner
`
`will show how Petitioner’s grounds fail under Petitioner’s own construction of this
`
`term, without conceding it is the correct construction.5
`
`F.
`
`“formatted”
`
`Patent Owner agrees with Petitioner that “formatted” should be construed to
`
`mean “a signal has been recorded on the magnetic tape making it ready to accept
`
`user data.” Pet. 19-20.
`
`G.
`
`“once said magnetic tape is formatted”
`
`Both independent claims 1 and 4 end with the requirement that “said format
`
`state designation information designating a formatted state once said magnetic tape
`
`is formatted.” Petitioner has not proposed a construction for the term “once said
`
`magnetic tape is formatted.”
`
`5 Patent Owner’s expert Dr. Bain explains why Petitioner’s proposed construction
`
`of this term is incorrect. (Ex. 2001, ¶¶ 72-82).
`
`
`
`22
`
`

`

`IPR2017-01356
`Patent 7,016,137
`In Patent Owner’s view, this claim language requires that the format state
`
`
`
`
`
`Replacement Preliminary Response
`
`designation information be held in read-only portions of the memory once
`
`formatting has taken place. (Ex. 2001, ¶101).
`
`The word “once”, when used as a conjunction as in claim 5, means
`
`“whenever; as soon as”. (Ex. 2006, p. 1, bottom). Because the format state
`
`designation information must indicate the formatted state “whenever” the tape is
`
`formatted, it must be unchanging—that is, it cannot be rewritten. (Ex. 2001, ¶102).
`
`The specification supports this construction. Indeed, the specification
`
`teaches that it is instrumental to an advantage obtained by the invention. In
`
`particular, holding the format state designation information in read-only memory
`
`after the tape is formatted allows the drive under certain circumstances to infer that
`
`tampering has occurred. The ’137 patent states:
`
`“As mentioned above, the drive initialize part including the
`MIC logical format type in the MIC is established as a ROM
`area once the magnetic tape is formatted. The tape streamer
`drive 10 will not rewrite this area during its normal
`operations. The inconsistency above strongly suggests the
`possibility that the original MIC was removed from the tape
`cassette with its magnetic tape formatted and has been replaced
`by an illegitimate memory.”
`
`(Ex. 1001, 19:35-42)(Emphasis added)(Ex. 2001, ¶102). The ’137 patent further
`
`states:
`
`
`
`23
`
`

`

`
`
`Replacement Preliminary Response
`
`
`
`IPR2017-01356
`Patent 7,016,137
`“In the drive initialize part including the MIC logical format
`type, there is no history information to be updated in a manner
`reflecting the past write and read operations performed on the
`magnetic tape. For that reason, the drive initialize part is
`established as a ROM area once the magnetic tape is
`formatted as described above. If, however, the magnetic tape
`is reformatted after it was formatted once, then the drive
`initialize part
`is updated correspondingly.
` Still,
`the
`reformatting-leaves intact the MIC logical format type that
`contains a value designating a formatted state. That is, the MIC
`logical format type denotes the unformatted state only before
`the initial formatting; once the formatting is done, the MIC
`logical format type always contains the value indicative of
`the formatted state.”
`
`(Ex. 1001, 16:22-35)(Emphasis added)(Ex. 2001, ¶102).
`
`Petitioner’s expert
`
`in IPR2016-01181 (Dr. William Messner) also
`
`emphasized the importance of establishing the format state in ROM after
`
`formatting. In his declaration, Dr. Messner stated:
`
`“As explained in the '137 Patent, ‘[t]he MIC logical format
`denotes the unformatted state only before the initial formatting;
`once the formatting is done, the MIC logical format always
`contains the value indicative of the formatted state.’ (Ex. 1001
`at 16:32-35.).”
`
`(Ex. 1009, ¶90)(Emphasis added). When asked to clarify this during his
`
`
`
`24
`
`

`

`IPR2017-01356
`Patent 7,016,137
`deposition, Dr. Messner testified:
`
`
`
`
`
`Replacement Preliminary Response
`
`“[E]ssentially this in means, once you've written it the first
`time, it says you've formatted it and you can't unformat in some
`sense. You can go back and erase and so on, but the -- the
`memory and cassette, the MIC is indicating that you've already
`done it at least once and you're never allowed to change it.
`
`Q. Are they talking about the designation in the memory there
`or are they talking about the tape?
`
`A. My understanding that they're talking about -- that the
`memory itself. But let me make sure I've got that right. Yes.”
`
`(Ex. 2002, 31:10-32:12).
`
`Under any reasonable construction of the phrase “once said magnetic tape is
`
`formatted,” the format state designation information must be stored in read-only
`
`memory after the tape is formatted. (Ex. 2001, ¶101).
`
`IV. PETIONER HAS FAILED TO DEMONSTRATE A REASONABLE
`LIKELIHOOD OF UNPATENTBAILITY OF ANY CLAIM
`
`Petitioner bears the burden of establishing “a reasonable likelihood that the
`
`petitioner would prevail.” 35 U.S.C. § 314(a). In making this determination, the
`
`Board must consider both “the information presented in the petition filed under
`
`section 311 and any response filed under section 313.” Id. Where a preliminary
`
`response includes “testimonial evidence,” any “genuine issue of material fact
`
`created by such testimonial evidence will be viewed in the light most favorable to
`
`
`
`25
`
`

`

`IPR2017-01356
`Patent 7,016,137
`the petitioner solely for purposes of deciding whether to institute an inter
`
`
`
`
`
`Replacement Preliminary Response
`
`partes review.” 37 C.F.R. § 42.108(c).
`
`Here, no “genuine issue of material fact” can be created by Petitioner’s
`
`expert (Mr. Koski)’s declaration, which often merely parrots the asserted prior art,
`
`without analysis. By contrast, Patent Owner’s expert (Dr. Bain)’s declaration
`
`contains far more detailed reasoning, setting forth specific facts that Mr. Koski has
`
`not addressed (and thus has not specifically disputed). Cf. Barmag Barmer
`
`Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836 (Fed. Cir.
`
`1984) (“specific facts” necessary to create a “genuine issue of material fact” to
`
`survive summary judgment means that “[m]ere denials or conclusory statements
`
`are insufficient”).
`
`Petitioner Fujifilm has failed to carry its burden on institution.
`
`A. Ground 1: Antic