`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FUJIFILM CORPORATION
`Petitioner,
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`v.
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`SONY CORPORATION,
`Patent Owner.
`____________
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`Case IPR2017-01356
`Patent 7,016,137
`____________
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`Record of Oral Hearing
`Held: October 3, 2018
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`Before JEFFREY S. SMITH, BART A. GERSTENBLITH, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
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`ELIOT D. WILLIAMS, ESQUIRE
`ROBERT C. SCHEINFELD, ESQUIRE
`ROBERT L. MAIER, ESQUIRE
`MICHAEL KNIERIM
`Baker Botts L.L.P.
`30 Rockefeller Plaza
`New York, New York 10112-449
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`MATTHEW A. SMITH, ESQUIRE
`ANDREW S. BALUCH, ESQUIRE
`ZHUANJIA GU, ESQUIRE
`Smith Baluch L.L.P.
`1100 Alma Street
`Suite 109
`Menlo Park, California 94025
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`IPR2017-01356
`Patent 7,016,137
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF THE PATENT OWNER:
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`The above-entitled matter came on for hearing on Monday, October 3,
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`2018, commencing at 1:00 pm., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`P R O C E E D I N G S
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`JUDGE SMITH: You may be seated. Good afternoon. Welcome to
`the Patent Trial and Appeal Board. We're here for IPR2017-01356 -- a case
`where FujiFilm is the Petitioner and Sony is the Patent Owner. We have one
`colleague in the Denver office, Judge Boucher; so, I just want to remind the
`parties when you refer to your demonstratives, please also state what page
`number you're on so our colleague in Denver can follow and also when we
`review the transcript, it's easy to follow.
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`So, Counsel for Petitioner, please step up to the podium and make
`your appearance.
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`MR. KNIERIM: Good afternoon, Your Honors. Michael Knierim
`from Baker Botts for Petitioner, FujiFilm Corporation.
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`JUDGE SMITH: And who else do you have with you?
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`MR. KNIERIM: With me today is Eliot Williams, also from Baker
`Botts.
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`JUDGE SMITH: Okay; thank you. Counsel for Patent Owner, please
`step up to the podium and make your appearance.
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`MR. SMITH: Good afternoon, Your Honor. Matthew Smith, Smith
`Baluch LLP for Patent Owner, Sony Corporation; and I have with me today,
`Andrew Baluch of the same firm, (inaudible).
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`JUDGE SMITH: Thank you. Both sides have 60 minutes to present
`their case. Petitioner will go first, followed by Patent Owner; and Petitioner
`you may reserve time for rebuttal if you so desire. Do you wish to reserve
`time for rebuttal?
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`MR. KNIERIM: Yes, Your Honor, I'd like to reserve 20 minutes for
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`rebuttal.
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`JUDGE SMITH: 20 minutes; okay. You may begin when you're
`ready.
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`MR. KNIERIM: Good afternoon, and thank Your Honors. I have
`hard copies of the Petitioner's demonstratives, if you'd like them?
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`JUDGE SMITH: We have them (inaudible).
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`JUDGE BOUCHER: But you may want to give one to the court
`reporter, if you didn't.
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`MR. KNIERIM: I believe so; we have given one to the reporter.
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`JUDGE BOUCHER: Okay.
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`MR. KNIERIM: Your Honors, there is nothing inventive about these
`claims. If you ask Mr. Koski who actually worked with commercial
`(inaudible) firmware at the time of the invention, he'll tell you same thing.
`As best you can tell, Sony and Dr. Bain contend that the use of a specific
`field to control reading and writing is the invention; and that's the MIC
`Logical Format Type field -- shown in figure 12 of the 137 Patent -- which
`indicates, according to him, both format state information and format type
`information. But that's not new.
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`If we take a look at slide 31, this is the figure -- figure 12 -- in the 137
`Patent that shows the field that Sony alleges it is invented as combining both
`format and State, either formatted or unformatted; and format type. Now,
`there are two values here that are of particular interest -- 20 and 21. You can
`see that value 20 indicates an AIT-3 virgin cassette, and 21 indicates an
`AIT-3 formatted cassette.
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`The problem for Sony is that this is exactly what was already taught
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`by the ECMA-329 prior art. If you look at slide 76, down at the bottom
`here, you'll see that this is what ECMA-329 actually discloses. In this field
`you can store information indicating an AIT-3 virgin cassette; and you can
`store information indicating AIT-3 formatted cassette. That's the AIT RMIC
`Logical Format Type; and, in fact, these values correspond, exactly, to the
`values in figure 12 of the 137 Patent. Now you'll note that 14 and 15 here
`are in parentheses, and that means there in hexadecimal; and when you
`convert 14 and hex, 15 and hex to decimal, you get 20 and 21, which are the
`values in figure 12 of the 137 Patent. So, all Sony's has done with the 137 is
`to copy the exact field, with the exact same values from ECMA-329.
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`Now, here is where it's a little helpful to have a little bit of
`background -- if we could turn to slide 10? This is from Sony's Patent
`Owner response; and as Sony explains, Sony was involved in a development
`of the AIT products; and they were first introduced in 1996. You can see a
`picture here in Sony's Patent Owner response of some AIT cassettes; and if
`we turn to slide 11, here's a chart that shows the 137 Patent, Takayama, as
`well as Ikeda II and Ishihara, and it's got figures from each of those
`references, and you can see they're all very similar. Each of these references
`is owned by Sony and they have overlapping inventors. They're all directed
`to AIT products.
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`And if we turn to slide 14 -- this is also from Sony's Patent Owner
`response. Sony explains that by way of background that certain AIT
`formats were standardized by ECMA; one of which is ECMA-329 which
`corresponds to AIT-3. Now, if we flip to slide 15, here are the references
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`again with different figures shown, as well as ECMA-329, Table 10, and you
`can see that each of the references has a field called MIC Logical Format
`Type store in the MIC; and each reference stores that field in the same area
`of memory E-drive initialization part.
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`Now, I note that ECMA-329, again here, uses the values of 14 and 15
`-- those are in hex. If we flip back to slide 31, you can see 14 and 15 in hex
`in 20 and 21 -- 20 and 21, of course, responds to AIT-3 version and AIT-3
`formatted.
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`Even according to Dr. Bain, Sony's expert, the two pieces of
`information in this field, format state, and format type, were prudent if not
`necessary for any drive to be able to read and write to the tape. Let's take a
`look at slide 19. This is an excerpt from Dr. Bain's deposition transcript.
`Every drive he's aware of -- all of the drives he's aware of -- required format
`state and format type information in order to read or write.
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`Now, the 137 Patent doesn't claim the MIC Logical Format Type
`(inaudible); it uses the phrase Format State-Designation Information. And
`I'll refer to that today, with your Honors permission, as FSDI, for simplicity.
`Now although that phase is not a common one, it's also not new. If we turn
`to slide 21 -- this is an additional quote from Dr. Bain's deposition transcript
`-- and he admits that even under his construction of that term -- which isn't
`proper and overly narrow -- but even under his construction, that it
`additionally requires format type, it was known prior to the 137 Patent to
`store Format State-Designation Information -- of course it was. You just
`saw that each of the references we're dealing with has a similar field -- MIC
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`Logical Format Type. Dr. Bain testified to this during an ITC Proceeding
`and he stood by that testimony in his deposition in this matter.
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`Now, I'd like to start or turn to Ground 4, Takayama (inaudible
`19:59:55 tech. problem) and ECMA-329, I'd like to start with slide 74. As a
`preliminary matter, Sony's arguments in its Patent Owner response are based
`on improper claim instructions, many of which have already been rejected
`by the Board.
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`JUDGE GERSTENBLITH: Counsel, let me just -- before we get into
`the claim construction -- let me just ask you, what's happening with the ITC
`investigation right now?
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`MR. KNIERIM: That's an excellent question, Your Honor. Sony
`filed an unopposed motion to terminate that proceeding with respect to the
`137 Patent, and my understanding is that with respect to the other patents
`that are at issue in that proceeding, the ITC found in FujiFilm's favor and did
`not find a violation of Section 327.
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`JUDGE GERSTENBLITH: Okay; thank you.
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`MR. KNIERIM: Okay. So, Sony's arguments in its Patent Owner's
`response are based on improper claim constructions, and beyond that there's
`very little new in its Patent Owner response that wasn't in its preliminary
`response. Now, I won't spend a lot of time on claim construction here; and
`that's because even if Sony's constructions are adopted, the claims are still
`invalid. And although, at the outset, that a lot of the arguments here will
`overlap with the arguments for the substitute claims because what Sony has
`done is taken its claim construction positions -- some, but not all of them --
`and incorporated those by way of amended in the substitute claims.
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`Now, as another preliminary matter, at least two of the members of
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`this Panel are likely familiar with Takayama. Now, if Takayama looks
`familiar to you that's because it's the foreign counterpart to the 596 Patent;
`and two of the members of this Panel ruled back in November that claims 14
`and 19 of that patent were invalid over and among other references, Platte --
`which is another reference at issue in this proceeding. We'll get back to
`Platte in a minute.
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`Now, before turning to the merits of each of these disputes, I will note
`that Petitioner's argument for Ground 4 is really straightforward. Takayama
`discloses virtually everything. There is no dispute that Takayama discloses
`the preambles and the first and second limitations of both claims 1 and 4, as
`well as claims 2 and 3. If we could turn to slide 102 -- there's also no
`dispute that Takayama is directed to the same problem to be solved as the
`137 Patent. Both are directed to the problem of preventing tampering by
`illicitly swapping the memory for WORM cassettes.
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`Now, there's no dispute that Takayama discloses a WORM in the old
`system controller. That's a requirement of Sony's construction for the terms
`Information Acquiring Means and Operation Control Means. Even though
`it's improper, there's no dispute that Takayama does meet that. Now,
`Takayama discloses two techniques to prevent tampering. The first is on
`slide 103. There is no dispute -- you can see here there's some quoted
`testimony from Dr. Bain -- there's no dispute that Takayama discloses
`comparing information from the MIC on the one hand, and information read
`from the tape on the other, to detect an illicitly swapped MIC to detect
`tampering and thereby control reading or writing. A mismatch between
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`information on the tape and information on the MIC shows that the MIC's
`been swapped and Dr. Bain agrees with that.
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`So what's different between Takayama and the claims to the 137
`Patent? Well, Takayama tells you that you can compare identification
`information from the MIC and the tape to detect tampering. So, in other
`words, all you need to do to get from Takayama to the 137 Patent is to either
`additionally or alternatively compare information that qualifies as Format
`State-Designation Information.
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`Now, Petitioner's Ground 4 just takes the RMIC Logical Format Type
`field of ECMA-329 -- which we just looked at -- and uses that, either
`additionally or alternatively, in Takayama's comparison. There is no dispute
`that the ECMA-329's RMIC Logical Format Type field would qualify as
`FSDI, Format State-Designation Information, under the Board's
`construction. It would also qualify under Sony's proposed construction,
`which adds a requirement that it indicate format type -- and I'll get back to
`that in just one minute.
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`If we could flip back to slide 74 -- here are the three disputes; and as
`I've alluded to the first is that Sony disputes that Ground 4 discloses FSDI --
`again this is under Sony's construction; and I'll tell you why even under
`Sony's construction (inaudible) -- but, importantly, there's no dispute here if
`the Board's construction is adopted.
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`The second dispute concerns the phrase once a said magnetic tape is
`formatted -- again, this is under Sony's proposed construction -- if the
`Board's construction is adopted, there's no dispute here; and I'll tell you why
`even under Sony's construction, this limitation is (inaudible).
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`And the third dispute is that Sony argues that FujiFilm has failed to
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`meet its burden of Petitioner's motivation to combine. Now, this is also
`based, at least in part, on Sony's improper construction. So, for example,
`page 71 of Sony's Patent Owner response, Paper 19, argues that FujiFilm
`does not point to any disclosures that would lead one of ordinary skill in the
`art to modify its embodiments to add Format State-Designation Information
`to store such information in a non-rewritable (inaudible). That last part is
`Sony's improper construction for the term, who wants to set magnet tape
`(inaudible). And in other respects, for this third dispute, Sony either
`misapprehends or just simply does not rebut FujiFilm's arguments regarding
`(inaudible).
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`Now, turning back to the first dispute, even if Sony's construction is
`adopted, ECMA-329 discloses both format state and format type; and Dr.
`Bain's deposition testimony confirms this. If we move to slide 76, we
`looked at the bottom of this slide a little bit -- and you can see this is the
`disclosure from ECMA-329 -- Dr. Bain's testimony is at the top; and he
`admits that the value of 14 indicates that the cassette is an AIT-3 virgin
`cassette; and he also admits that a value of 15 indicates that it's an AIT-3
`formatted cassette. That alone is format state and format type information.
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`But we can go even further if we turn to the next slide, 77.
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`JUDGE SMITH: Let me just make sure I'm clear on your point. The
`format -- before it's recorded on, it's unformatted; and after it's recorded, it's
`formatted, is that what you're saying?
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`MR. KNIERIM: That's correct, Your Honor.
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`JUDGE SMITH: Okay.
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`MR. KNIERIM: So, format state, which under Sony's construction is
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`one piece of Format State-Designation Information, indicates whether or not
`the tape has been formatted.
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`JUDGE SMITH: And the blank tape is, by definition, unformatted?
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`MR. KNIERIM: That's correct.
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`JUDGE SMITH: Okay.
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`JUDGE GERSTENBLITH: So, maybe this is a good time to ask my
`question then because you just (inaudible) the phrase format state-
`designation information for the format state. Doesn't the presence of
`designation in there suggest that the Patent Owner has a point with respect to
`claim construction? That it is actually designating the format type?
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`MR. KNIERIM: I don't think so, Your Honor; and there's a few
`reasons for that. First, the specification does use the phrase Format State-
`Designation Information on several occasions -- sort of refer to just format
`state, meaning formatted or unformatted. But perhaps more importantly, the
`claim, itself, defines what Format State-Designation Information is. The
`claim itself says that it designates a formatted state or an unformatted state
`after it's been formatted. Does that answer the question?
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`JUDGE GERSTENBLITH: It answers the question. I still struggle
`over -- I mean to me designate has more substance behind it than simply
`indicating that it is formatted because designation implies something is
`designated; but I understand what you're saying.
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`MR. KNIERIM: You know I would like to follow up on that. You
`know, you could conceive of a situation where there's a field or a set of
`fields by which you could infer that something is formatted or unformatted.
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`Now, our position is that actually would suffice to meet the definition of
`Format State-Designation Information as properly construed; but even if not,
`the field we're talking about on slide 76 -- if we could flip back -- it does
`provide actual designation information. That field, itself, is a dedicated field
`that provides information, formatted or unformatted, as well as we'll see
`format type if we turn to slide 77.
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`Now, even if you were looking just at the definition of the RMIC
`Logical Format Type field that we just looked at, and you didn't conclude
`that disclosed format type, we see here an excerpt from page five of ECMA-
`329 where it says the AIT-3 drives are able to read the MIC of AIT-1 and
`AIT-2 cartridges. They can identify the type of cartridge inserted -- the
`AIT-1, the AIT-2, the AIT-3, or else, by reading the MIC or the RMIC. Dr.
`Bain admits that this passage indicates that the drive can read format the
`RMIC or the MIC to determine format type. And this does raise an issue
`that I want to address later about Dr. Bain's credibility. I'll turn to that
`shortly.
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`This passage of ECMA-329 though is plainly referring to the field we
`just spoke about, the RMIC Logical Format Type field; and Mr. Koski
`explains that. But even if not; even if it didn't refer to that, Dr. Bain -- even
`according to Dr. Bain under his construction, you don't need a single field to
`indicate format state and format type; you can have multiple fields.
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`If we turn to slide 78, the second dispute for Ground 4 was over the
`term one said magnetic tape was formatted; and Sony argues in its Patent
`Owner response that the term should be construed to require that the FSDI
`be stored in an area of memory which cannot be rewritten. Now, this
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`construction is improper and it should be rejected; but even assuming that
`it's adopted, the combination of Takayama and ECMA-329 meets this
`limitation.
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`Now, it bears noting that Sony's construction for the substitute claims
`adds an interesting limitation. There they construe the phrase cannot be
`rewritten to mean cannot be rewritten by the user doing normal operations.
`That's not present in Sony's construction for the original claims. ECMA-329
`certainly doesn't tell you that the MIC Logical Format Type field can be
`changed during normal operation or by the user. That would make no sense;
`that would be inconsistent with the standard. The standard tells you prior to
`writing it's 14, and after you write it it's 15; but although ECMA-329 doesn't
`tell you that you can or should protect or prevent rewriting of this field,
`Petitioner will concede that ECMA-329 doesn't expressly disclose that you
`store the RMIC Logical Format Type field in memory that cannot be
`rewritten. But Takayama tells you that it should be. If it's going to be used
`to prevent tampering, there's no dispute that Takayama tells you to store
`information in an area of memory that cannot be rewritten in order to
`prevent users from changing it and, thereby, prevent tampering with WORM
`cartridges. And Takayama tells you exactly how to do this for any area of
`memory.
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`If we take a look at slide 114 -- this is paragraph 71 from Takayama --
`so to convert an area of memory into one that cannot be rewritten, the drive
`simply needs to set the values of two fields. There's the right-protect top
`address and the right-protect count. So, what these fields do is specify an
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`area of memory by byte offset -- starting and ending byte, essentially --
`which would be protected from rewriting.
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`Takayama's disclosure here is not special; there's nothing new about
`this; this is completely conventional; and if you look at slide 22, here's an
`excerpt from Mr. Koski. He explains the concept of storing information in
`non-rewriteable memory -- was very well memoed -- and that a person of
`ordinary skill of the art, at the time, would have been aware of various
`techniques to do this. In fact, if we look at slide 13, here's another chart that
`shows Ishihara, Takayama, Ikeda II, and ECMA-329. You see each of the
`Ishihara, Takayama, Ikeda II has the same fields -- write-protect start
`address, write-protect byte count. This is how you protect areas of memory
`from rewriting -- it's as simple as that.
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`So, in sum, a person of ordinary skill in the art would be motivated to
`store the MIC Logical Format Type field in a non-rewriteable area of
`memory based on both Takayama's teaching, ECMA-329's teaching, and as
`well as the general knowledge of a person of ordinary skill in the art.
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`To be pointed about it, a motivation would be that you would store in
`such an area of memory because if this field is going to be used to prevent
`tampering, a person of ordinary skill in the art would not want users to be
`able to change it. That's common sense.
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`JUDGE GERSTENBLITH: Counsel, what's Ishihara's relevance
`here?
`MR. KNIERIM: That's a good point, Your Honor. Ishihara is not
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`relevant to the original claims, and it's not part of one of the institute
`Grounds. This chart is from Mr. Koski's declaration. It happens to include
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`Ishihara here; but you can ignore that for purposes of the original claims, we
`can get back to that (inaudible).
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`So, the last dispute for Ground 4, starting on slide 79, is that Sony
`disputes that there's a motivation to combine Takayama. So, why would a
`person of ordinary skill in the art use the MIC Logical Format Type field,
`additionally or alternatively, to Takayama's identification information field
`to control reading or writing? Well, there are a few reasons, but first, as
`explained in the petition, using ECMA-329's dedicated MIC Logical Format
`Type field would speed up determination that the loaded tape is blank; and
`since ECMA-329 provides a dedicated field of this information, a person of
`ordinary skill in the art would have recognized that it could applied to
`Takayama's comparison to provide tampering and corruption protection to
`the tape cassette.
`
`But even under Sony's proposed constructions, there is ample
`motivation to combine. So, take for example Sony's construction of FSDI
`requires both format state and format type -- both of these pieces of
`information are actually necessary for a drive to be able to read or write
`from a tape. Slide 16 has an excerpt from Mr. Koski's declaration. It was
`widely recognized from a person of ordinary skill in the art at the time that
`drives required both format-State and format-Type information in order to
`read and write. Using such information was a fundamental premise the way
`drives operate. Dr. Bain agrees. We saw this earlier on slide 19. Dr. Bain's
`deposition testimony confirms that for all the drives he's aware of, they
`needed to know these two pieces of information.
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`Now, Patent Owner accuses Petitioner of making a big deal out of his
`
`testimony, but that's because it is a big deal. These same two pieces of
`information that Dr. Bain says are missing from the prior art, or that there
`would be no motivation to combine these into Takayama, are actually
`necessary for the drive to read or write. And since ECMA-329 provides
`both pieces of information in one dedicated field -- since you need them to
`be able to read or write -- well, of course, one of skill in the art would think
`to read these during a load process of Takayama.
`
`JUDGE GERSTENBLITH: Counsel, why would adding that feature
`to Takayama speed up the determination that the loaded tape is blank?
`
`MR. KNIERIM: So, simply because that field provides the
`designation that it's either blank or not, as well as other determination.
`Takayama doesn't actually tell you, or doesn't provide enough information
`for one to tell that there's a field by which you can do that in one step.
`
`JUDGE GERSTENBLITH: So, how does Takayama do it with
`(inaudible)?
`
`MR. KNIERIM: Well, Takayama doesn't really discuss the idea of
`checking whether the tape is blank, okay. So, one of skill in the art reading
`Takayama knows -- okay, this is a great tamper prevention feature, we can
`compare information from a MIC in a tape, there's a mismatch, we can
`detect tampering. One of skill in the art then reads ECMA-329 and realizes
`hey, there's this field -- the RMIC Logical Type field -- that gives us both
`format state and format type. I need that information any ways, of course
`I'm going (inaudible).
`
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`JUDGE GERSTENBLITH: So, in the petition on page 40, it says it
`
`would have been obvious to a person of ordinary skill in the art to include
`such a dedicated flag in the tape of Takayama to simplify and speed up
`determination that the loaded tape is blank. So, when I read that -- maybe
`I'm coming to it from a different perspective -- it reads to me that Takayama
`is making a determination that the loaded tape is blank; and that the reason
`why you would modify it to include a dedicated flag is to speed up
`something that Takayama's already doing. But what I just heard you say
`was that Takayama's not doing that at all, so that to me -- that sentence
`doesn't seem to make since, so I'm wondering what the disconnect is.
`
`MR. KNIERIM: Yeah, I think I can clarify; and thank you for that.
`So, Takayama will have to determine that the tape is blank, both of the
`experts agree with that. But what I said earlier, I think, or what I meant to
`say, was that Takayama doesn't focus a description on that determination.
`That's a conventional step that all drives need to perform, right. And so, one
`of ordinary skill in the art reading ECMA-329 and recognizing there's a
`dedicated field for this, would be motivated to use that.
`
`JUDGE GERSTENBLITH: So, what you're saying is Takayama does
`this but does it somewhere else in the process of what it's doing?
`
`MR. KNIERIM: That's right; that's right.
`
`JUDGE GERSTENBLITH: Through some other mechanism besides
`this particular field?
`
`MR. KNIERIM: That's correct.
`
`JUDGE SMITH: But we don't know how Takayama does it; it could
`be this field; it could be something else; we just don't know.
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`MR. KNIERIM: That's also correct, Your Honor. There's just no
`
`description in Takayama; but one of skill in the art reading Takayama would
`know that it has to happen somehow; he just doesn't say how.
`
`JUDGE GERSTENBLITH: So, if Takayama doesn't say how, and we
`don't know how; how do we know that it speeds it up?
`
`MR. KNIERIM: Well, Your Honor, it's because ECMA-329 gives
`you a dedicated flag for that information. It's a one-step process.
`
`JUDGE GERSTENBLITH: And we know that Takayama does not
`have a one-step process even though we don't know exactly what the process
`is?
`MR. KNIERIM: I supposed we do not know whether Takayama has a
`
`one-step process or not.
`
`JUDGE GERSTENBLITH: So, we don't really know if it speeds it up
`or not?
`
`MR. KNIERIM: It is possible that Takayama had in mind that it's a
`one-step process; we just don't know that. Takayama's disclosure doesn't tell
`us that. The implication though, or the understanding, that one of skill in the
`art would have reading it is that this is an efficiency because you get it from
`one (inaudible).
`
`Now, I fully appreciate the Board's question there; but even if
`Takayama or even if the Board were to find that there's no obvious
`performance increase in speeding up the loading process here, there are
`plenty of other reasons why one of skill in the art would be motivated to
`combine this (inaudible).
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`JUDGE SMITH: Before you discuss those, are there other one-step
`
`ways of determining whether the tape is formatted or unformatted; or is this
`the only known way of determining in one step whether the tape is formatted
`or unformatted?
`
`MR. KNIERIM: Sir, if I understood the question; if I heard the
`question correctly, there are only really two ways to get this information.
`You can get it from the tape or you can get it from the MIC; and if you get it
`from the MIC, you can get it from a variety of the fields, but Takayama
`doesn't provide that disclosure that you can get it from a single field.
`
`JUDGE SMITH: So, I guess, in terms of doing it in the one-step way,
`this is the only known one-step way of doing it?
`
`MR. KNIERIM: On this record, Your Honor, I believe that's correct.
`
`JUDGE SMITH: Okay.
`
`MR. KNIERIM: I would hesitate to make a blanket statement.
`
`JUDGE SMITH: Okay. Thanks. Okay, and then you were going to
`tell us other reasons for combining (inaudible).
`
`MR. KNIERIM: Sure. So, another reason is because ECMA-329
`tells you that you can use format type information to enable backwards
`compatibility. If we can take a look at slide 77 again. Here's the excerpt
`from ECMA-329. You can see the highlighted portion at the bottom -- the
`sentence before that starts with for backwards compatibility. So, the idea
`here is that one of skill in the art reading this, recognizing that ECMA-329
`can have a dedicated field with this information -- which, again, is not
`required under a proper construction; but even if it were, they would know
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`or they would be motivated to use this field in Takayama for the purpose of
`enabling the backwards compatibility.
`
`And I want to address one point about Takayama and its MIC Logical
`Format Type field.
`
`JUDGE GERSTENBLITH: Before you do that -- so this backwards -
`- I'm going to say it wrong; what was the way you just said it?
`
`MR. KNIERIM: Backwards compatibility.
`
`JUDGE GERSTENBLITH: Okay -- backwards compatibility. Where
`is that discussed in the petition?
`
`MR. KNIERIM: It's not; and I can tell you why; and that's because in
`the petition, we applied the proper claim construction for this term which
`does not require format-type information; and in Patent Owner's response,
`they advocated for a construction that does require that information. So, this
`argument is in reply saying that if that information is required by the claims,
`one of skill in the art would be motivated to (inaudible).
`
`JUDGE BOUCHER: So, let me ask my same question in a slightly
`different way then. Under your construction, is there any difference between
`the format state information and the Format State-Designation
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