Trials@uspto.gov
`571-272-7822
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`
`Paper 48
`Entered: December 20, 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 IPR2017-01356
`Patent 7,016,137 B2
`____________
`
`
`
`
`Before JEFFREY S. SMITH, BART A. GERSTENBLITH, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 48
`Entered: December 20, 2018
`
`
`
`
`
`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 B2
`____________
`
`
`
`
`Before JEFFREY S. SMITH, BART A. GERSTENBLITH, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`IPR2017-01356
`Patent 7,016,137 B2
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`I. INTRODUCTION
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision issues pursuant to 35 U.S.C. § 318(a). For the reasons that follow,
`we determine Petitioner has shown by a preponderance of the evidence that
`claims 1–4 of U.S. Patent No. 7,016,137 B2 (Ex. 1001, “the ’137 patent”)
`are unpatentable.
`Petitioner, Fujifilm Corporation, filed a Petition for inter partes
`review of claims 1–4 of the ’137 patent. Paper 1 (“Pet.”). Patent Owner,
`Sony Corporation, filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`In our Decision to Institute, we instituted inter partes review on all claims
`challenged in the Petition, but not on all grounds. Paper 10. After our
`Decision to Institute, the Supreme Court issued its decision in SAS Institute
`Inc. v. Iancu, 138 S. Ct. 1348 (2018). Both parties informed the Board that
`they would not seek institution on all grounds in the Petition. Paper 24.
`Given that neither party seeks SAS-based relief, we did not, and do not, sua
`sponte revive the non-instituted grounds. “Finality and expedition interests
`strongly counsel against such action. And so does the Court’s emphasis on
`the petitioner’s control of the contours of the proceeding.” PGS
`Geophysical AS v. Iancu, 891 F.3d 1354, 1363 (Fed. Cir. 2018).
`Patent Owner filed a Response to the Petition. Paper 19 (“PO
`Resp.”). Petitioner filed a Reply. Paper 26 (“Reply”).
`Patent Owner also filed a contingent Motion to Amend. Paper 20
`(“Mot.”). Petitioner filed an Opposition. Paper 27 (“Opp.”). Patent Owner
`filed a Reply in support of its Motion. Paper 29 (“PO Reply”). Patent
`Owner’s Motion is contingent on any of the challenged claims being found
`unpatentable.
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`Petitioner filed a Motion to Exclude Evidence, namely, Exhibits 2049
`and 2050, Patent Owner filed an Opposition, and Petitioner filed a Reply in
`support of its Motion to Exclude. Papers 34, 38, 42.
`Patent Owner filed a Motion to Seal Exhibits 2018, 2026, 2028, 2030,
`2035, and 2046. Paper 21. Patent Owner’s Motion to Seal includes a
`proposed Protective Order (App. A to the Motion), and indicates that the
`parties agree to entry of the Order. Id. at 2.
`We determine by a preponderance of the evidence that claims 1–4 are
`unpatentable. We deny Petitioner’s Motion to Exclude, deny Patent
`Owner’s Motion to Amend, grant Patent Owner’s Motion to Seal, and enter
`the parties’ proposed Protective Order.
`A. Related Matters
`The ’137 patent is the subject of the following related litigations:
`Sony Corporation, et al. v. Fujifilm Holdings Corporation, et al., Case
`No. 337-TA-1036 (ITC); and
`Sony Corporation, et al. v. Fujifilm Holdings Corporation et al., Case
`No. 1:16-cv-25210 (S.D. Fla.). Pet. 1; Paper 4.
`Claim 5 of the ’137 patent is the subject of IPR2016-01181. Paper 4.
`B. The ’137 Patent
`The ’137 patent relates generally to a tape cassette containing a
`magnetic tape for use in a tape drive apparatus capable of recording and/or
`reproducing information to and/or from the tape cassette. Ex. 1001, 1:7–12.
`In the “Background of the Invention,” the ’137 patent states that
`“management information or the like is needed for the drive [apparatus] to
`manage appropriately its recording and/or reproduction of data to and/or
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`from the magnetic tape. The management information includes information
`about diverse locations on the magnetic tape as well as a use history of the
`tape.” Id. at 1:5, 25–30.
`In some prior art tape cassettes, management information was stored
`on the magnetic tape itself, for example at the beginning of the tape or at the
`beginning of each of multiple partitions of the tape. Id. at 1:31–33. But,
`when management information must be accessed from such a cassette tape,
`the magnetic tape must be physically advanced to the portion thereof on
`which the relevant management information is stored, which creates time
`delays. Id. at 1:59–67.
`In at least one prior art tape cassette “a nonvolatile memory is
`installed within a tape cassette enclosure so that the memory may
`accommodate management information.” Id. at 2:8–11. Although this
`arrangement avoided having to advance the magnetic tape to access
`management information, it was susceptible to tampering such that “the
`initially installed nonvolatile memory might be removed from within the
`enclosure and replaced by an illicit nonvolatile memory.” Id. at 2:32–35.
`The ’137 patent also stores management information not on the
`magnetic tape but on a separate memory medium within the tape cassette,
`making it accessible regardless of the tape’s position. Figure 1 of the
`’137 patent is reproduced below.
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`Figure 1 illustrates tape streamer drive 10 compatible with tape
`cassette 1 equipped with remote memory chip 4. Ex. 1001, 7:39–41. The
`tape streamer drive operates on the helical scan principle, discussed further
`below, in recording and reproducing data to and from magnetic tape 3 in the
`tape cassette. Id. at 7:42–44. Rotary drum 11 has two write heads 12A and
`12B and three read heads 13A, 13B, and 13C. Ex. 1001, 7:45–50.
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`Figure 3A of the ’137 patent is reproduced below.
`
`
`Figure 3A illustrates tape cassette 1 containing remote memory chip 4
`furnished with antenna 5, which allows the chip to communicate data
`wirelessly with a remote memory interface of a compatible tape streamer
`drive. Ex. 1001, 5:46–50. The memory holds management information for
`managing write and/or read operations to and/or from the magnetic tape. Id.
`at 4:12–14; 5:52–62. “The memory accommodates format state designation
`information designating an unformatted state when the magnetic tape has yet
`to be formatted. The format state designation information further designates
`a formatted state once the magnetic tape is formatted.” Id. at 4:14–19. The
`’137 patent discusses how the format designation information is used to
`reveal whether a tape may have been tampered with. Id. at 4:26–43.
`C. Illustrative Claim
`Independent claim 1 is illustrative of the claimed subject matter:
` A tape drive apparatus comprising:
`1.
`tape-oriented recording and/or reproducing means for
`recording and/or reproducing information to and/or from a
`magnetic tape housed in a tape cassette furnished as a recording
`medium, said tape cassette being loaded in the apparatus;
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`memory accessing means for accessing a memory which
`is incorporated in said tape cassette furnished as said recording
`medium and which holds management information for write
`and/or read operations to and/or from said magnetic tape, said
`memory accessing means writing and/or reading information to
`and/or from said memory following the accessing;
`information acquiring means for acquiring format state
`designation information from said memory by causing said
`memory accessing means to access said memory for information
`retrieval, said format state designation information designating
`an unformatted state when said magnetic tape has yet to be
`formatted, said format state designation information further
`designating a formatted state once said magnetic tape is
`formatted; and
`operation controlling means which, based at least on
`specifics of the acquired format state designation information
`and on a result of a read operation on said magnetic tape by said
`tape-oriented recording and/or reproducing means, controls a
`write and/or a read operation on said recording medium.
`D. Asserted Grounds of Unpatentability
`We instituted inter partes review for the following grounds of
`
`unpatentability:
`References
`Ikeda II1 and Platte2
`Ikeda II and ECMA Standard3
`Takayama4 and ECMA Standard
`
`Basis
`§ 103
`§ 103
`§ 103
`
`Challenged Claims
`1–4
`1–4
`1–4
`
`
`1 Japanese Patent Application Publication No. 2000-113653 published
`Sept. 30, 1998 (Ex. 1006).
`2 U.S. Patent No. 6,128,148 issued Oct. 3, 2000 (Ex. 1005).
`3 “8 mm Wide Magnetic Tape Cartridge for Information Interchange –
`Helical Scan Recording – AIT-3 Format,” 2002 (Ex. 1003).
`4 Japanese Patent Application Publication No. 2000-268443 published
`Sep. 29, 2000 (Ex. 1007).
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`II. DISCUSSION
`A. Claim Construction
`In an inter partes review proceeding based on a petition filed prior to
`November 13, 2018, we construe claim terms in an unexpired patent
`according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard applied
`in inter partes reviews). Consistent with the broadest reasonable
`construction, claim terms are presumed to have their ordinary and customary
`meaning as understood by a person of ordinary skill in the art in the context
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). An inventor may provide a meaning for a term that is
`different from its ordinary meaning by defining the term in the specification
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`“Construing a means-plus-function claim term is a two-step process.
`The court must first identify the claimed function. Then, the court must
`determine what structure, if any, disclosed in the specification corresponds
`to the claimed function.” Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1351 (Fed. Cir. 2015) (en banc) (citation omitted). In cases involving a
`special purpose computer-implemented means-plus-function limitation, the
`Federal Circuit requires “that the specification disclose an algorithm for
`performing the claimed function.” Media Rights Techs., Inc. v. Capital One
`Fin. Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015). “A description of the
`function in words may disclose, at least to the satisfaction of one of ordinary
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`skill in the art, enough of an algorithm to provide the necessary structure
`under § 112, ¶ 6.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
`1386 (Fed. Cir. 2011). Several claim terms explicitly recite that they are
`“means” for performing a function, and the parties do not dispute that § 112,
`¶ 6 governs the construction of these terms. See Pet. 17–20; PO Resp. 23–
`32.
`
`1. “tape-oriented recording and/or reproducing means”
`Claim 1 recites “tape-oriented recording and/or reproducing means”
`with the function of “recording and/or reproducing information to and/or
`from a magnetic tape housed in a tape cassette furnished as a recording
`medium.”
`Petitioner contends the ’137 patent discloses the corresponding
`structure as “a tape streamer drive 10 that operates on the helical scan
`principle . . . [using] a rotary drum 11 with two write heads . . . and three
`read heads.” Pet. 17 (citing Ex. 1001, 7:42–50). Petitioner’s declarant, John
`Koski, testifies that one of ordinary 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 ¶¶ 111–112 (citing Ex. 1001, Fig. 1, 7:11–13, 7:42–50,
`9:15–16).
`In our Decision to Institute, we construed “tape-oriented recording
`and/or reproducing means” as being a means-plus-function limitation with
`the function of recording and/or reproducing information to and/or from a
`magnetic tape housed in a tape cassette furnished as a recording medium,
`and with the corresponding structure encompassing at least a tape streamer
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`drive that operates on the helical scan principle using a rotary drum with two
`write heads and three read heads and equivalents. Paper 10, 8.
`Patent Owner contends that the Board’s construction in the Decision
`to Institute is too narrow. PO Resp. 24. According to Patent Owner, the
`helical scan system and the rotary drum are not necessary to perform the
`function of recording or reproducing information. Id. at 25–26. Patent
`Owner contends the corresponding structure encompasses a linear transport
`system in addition to a helical scan system. Id. at 26. Patent Owner, relying
`on testimony of its declarant, James A. Bain, Ph.D., contends that the
`corresponding structure is a tape streamer drive with write head(s) and/or
`read head(s). Id. at 24 (citing Ex. 2018 ¶¶ 75–77). Dr. Bain testifies that he
`does not understand what components beyond a drum and heads are
`included in a helical scan system. Ex. 2018 ¶ 82. Dr. Bain testifies that the
`rotary drum disclosed in the ’137 patent does not perform the function of
`recording or reproducing information; rather, it operates with the drum
`motor to provide relative motion between the heads and tape to facilitate the
`recording process. Id. ¶ 83.
`Petitioner contends that Patent Owner’s proposed construction, by
`omitting the helical scan principle using a rotary drum, seeks to capture
`structures not disclosed in the specification, such as linear scan systems,
`which use a linear array of heads to write data in linear tracks, instead of a
`rotating drum to write in diagonal data tracks. Reply 7–8 (citing Ex. 1008
`¶¶ 76–78, 82). Petitioner contends that 35 U.S.C. § 112, ¶ 6 requires
`construing a means plus function limitation to “cover the corresponding
`structure . . . described in the specification,” and the only structure disclosed
`in the specification is that of a helical scan system using a rotary drum. Id.
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`at 8 (citing Ex. 1001, 7:38–50; Ex. 1008 ¶¶ 111–112). Petitioner, relying on
`testimony of Mr. Koski, contends that in helical scan systems, the heads are
`mounted on the rotary drum, as illustrated in Figure 1 of the ’137 patent, and
`the drum rotates such that the heads move over the tape in diagonal tracks.
`Id. (citing Ex. 1001, Fig. 1; Ex. 1008 ¶¶ 76–78, 82). Petitioner contends that
`the heads disclosed in the ’137 patent would not be able to read or write data
`without the drum because no other mechanism would allow the heads to
`move relative to the tape. Id.
`The ’137 patent discloses operating the drive “on the helical scan
`principal in recording and reproducing data to and from the magnetic tape 3
`in the tape cassette 1,” using a rotary drum having write heads and read
`heads structured with different angles. Ex. 1001, Fig. 1, 7:38–51. The ’137
`patent does not disclose any other structure for recording or reproducing data
`to or from the magnetic tape. Mr. Koski testifies that a helical scanning
`system mounts heads on a rotating cylindrical drum and writes data on
`magnetic tape as a diagonal stripe. Ex. 1008 ¶ 76.
`We agree with Petitioner, that Patent Owner’s proposed construction
`would encompass structure not described in the specification of the
`’137 patent. Reply 7–8. We rely on Mr. Koski’s testimony in determining
`that the corresponding structure described in the specification of the
`’137 patent, namely, a rotary drum having heads structured with different
`azimuth angles and operating on the helical scan principal in recording and
`reproducing data, describes a helical scanning system that writes data on the
`magnetic tape as a diagonal stripe. Ex. 1001, 7:38–51; Ex. 1008 ¶¶ 76, 111–
`112. Thus, we construe the claimed “tape-oriented recording and/or
`reproducing means” as a means-plus-function limitation with the function of
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`recording and/or reproducing information to and/or from a magnetic tape
`housed in a tape cassette furnished as a recording medium, and with the
`corresponding structure encompassing at least a tape streamer drive that
`operates on the helical scan principle using a rotary drum with two write
`heads and three read heads and equivalents.
`2. “memory accessing means”
`Claim 1 recites “memory accessing means” with the functions of
`“accessing a memory which is incorporated in said tape cassette furnished as
`said recording medium and which holds management information for write
`and/or read operations to and/or from said magnetic tape,” and “writing
`and/or reading information to and/or from said memory following the
`accessing.” In the Decision to Institute, we construed “memory accessing
`means” as a means-plus-function limitation with the functions of accessing a
`memory which is incorporated in said tape cassette furnished as said
`recording medium and which holds management information for write
`and/or read operations to and/or from said magnetic tape, and writing and/or
`reading information to and/or from said memory following the accessing,
`and with the corresponding structure encompassing at least either a remote
`interface or a connector block and equivalents. Paper 10, 9.
`Patent Owner does not contest our preliminary construction; rather,
`relying on testimony of Dr. Bain, Patent Owner contends that the
`corresponding structure should not require additional structure proposed by
`Petitioner. PO Resp. 27 (citing Ex. 2018 ¶ 86). Dr. Bain testifies that he
`agrees with our construction of this limitation from the Decision to Institute.
`Ex. 2018 ¶ 86. In Reply, Petitioner adopts our preliminary construction of
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`this term. Reply 9. Accordingly, we adopt our construction of this term
`from the Decision to Institute, as produced above.
`3. “information acquiring means”
`Claim 1 recites “information acquiring means” with the function of
`“acquiring format state designation information from said memory by
`causing said memory accessing means to access said memory for
`information retrieval.” In our Decision to Institute, we construed
`“information acquiring means” as a means-plus-function limitation with the
`function of acquiring format state designation information from said
`memory by causing said memory accessing means to access said memory
`for information retrieval and with the corresponding structure encompassing
`at least a general purpose processor programmed to perform step S104 of the
`’137 patent to read data from memory and to place data into RAM and
`equivalents. Paper 10, 9–10.
`Petitioner contends the ’137 patent discloses the corresponding
`structure as system controller 15 executing step S104 of Figure 15. Pet. 18
`(citing Ex. 1001, 18:59–62 (“step S104, the system controller 15 reads data
`from the MIC and places them illustratively into the SRAM 24”)). Patent
`Owner, relying on testimony from both Mr. Koski and Dr. Bain, proposes
`the corresponding structure for the “information acquiring means” is a
`WORM-enabled controller programmed to perform step S104 of the
`’137 Patent. PO Resp. 27–29 (citing Ex. 2008, 41:13–23, 64:19–65:10;
`Ex. 2018 ¶¶ 87–89, 91). Patent Owner’s declarant, Dr. Bain, initially
`testified that a system controller is a well-known type of microprocessor that
`performs basic functions to control the system such as processing, receiving,
`and storing data. Ex. 2001 ¶ 69. Dr. Bain subsequently testified that the
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`system controller is not any kind of general purpose processor, but needs to
`be a WORM-enabled controller, in order to detect the tampering mentioned
`in the background section of the ’137 patent. Ex. 2018 ¶ 91 (citing
`Ex. 1001, 2:61–3:5; Ex. 2008, 41:13–23, 64:19–65:10).
`Petitioner contends that Dr. Bain is now improperly reading
`unclaimed limitations from the specification into the claims, such as
`WORM-enabled controller, and that Dr. Bain does not explain this reversal
`of opinion. Reply 9–10. Petitioner contends that the example provided in
`the background section is not necessarily embodied in the claims. Id.
`(citing Ex. 1022, 130:5–137:4). Petitioner further contends that Patent
`Owner mischaracterizes Mr. Koski’s testimony. Id. at 9.
`Mr. Koski initially testified that the structure corresponding to the
`“information acquiring means” is “system controller 15 and the algorithm
`shown in FIG. 15, Step S104.” Ex. 1008 ¶ 115 (citing Ex. 1001, Fig. 1,
`18:59–62). Mr. Koski’s cross-examination testimony, cited by Patent
`Owner, includes the following exchange:
`Q. Where is the fact that the tape cassette is WORM
`feature equipped detected in flow chart figure 15?
`A. It is detected, for instance, in step S104, read data from
`MIC and hold them.
`Q. And in order for the flow chart to distinguish between
`a WORM and a non-WORM cassette, must the algorithm include
`programming to make that distinction?
`A. For the generation that supports WORM, that’s correct.
`Ex. 2008, 41:13–23. Here, Mr. Koski does not testify that the system
`controller must be a WORM-enabled controller, but rather, that the system
`controller is a WORM-enabled controller for “the generation that supports
`WORM.” Neither the claim language nor step S104, shown in Figure 15
`and described in the detailed description of the ’137 patent, however,
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`requires step S104 (“read data from MIC and hold them”) to be performed
`exclusively by the generation that supports WORM. Ex. 1001, Fig. 15,
`18:59–62.
`Patent Owner also cites to Mr. Koski’s cross-examination testimony
`about the claimed operation controlling means, which includes the following
`exchange:
`
`Q. You said that it's the operation controlling means which
`is controlling step S119, right?
`A. It arrives at step S119.
`Q. Operation controlling means is the system controller
`15, correct?
`A. Correct.
`Q. And in order to perform the function described in this
`paragraph, the last full paragraph of column 19, would you agree
`that the system controller 15 is a WORM-enabled controller?
`MR. KNIERIM: Objection to form.
`A. Yes. I think it -- I would agree that it's a WORM
`controller.
`Q. Because if it were not a WORM controller, it could not
`perform step S119 as described here in the last full paragraph of
`column 19, correct?
`A. Correct.
`Ex. 2008, 64:15–65:10. Here, Mr. Koski testifies that the controller that
`performs step S119 is a WORM-enabled controller. Mr. Koski is not
`testifying to the controller performing step S104. Further, as discussed
`below in our construction of “operation controlling means,” step S119 is not
`required to be performed by the controller. We determine that Mr. Koski’s
`initial testimony is consistent with his cross-examination testimony.
`Dr. Bain’s second declaration testimony, that requires system
`controller 15 to be a WORM-enabled controller, conflicts with his first
`declaration testimony that a “system controller is a well known type of
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`microprocessor that performs basic functions to control the system . . . in
`which it is used” and that the “process of acquiring information (i.e., data) is
`a basic function that can be achieved without any special programming
`needed in the system controller.” Ex. 2001 ¶¶ 69–71; Ex. 2018 ¶¶ 88–91.
`Further, Dr. Bain, when asked on cross-examination whether a tape drive
`with a system controller that was not WORM enabled could read the
`contents of a MIC, testifies that “it certainly could.” Ex. 1022, 135:16–20.
`The Federal Circuit has held that “the specification is always highly
`relevant to the claim construction analysis. Usually, it is dispositive; it is the
`single best guide to the meaning of a disputed term.” Phillips v. AWH
`Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). We resolve the conflict
`between Mr. Koski and Dr. Bain, and between Dr. Bain’s different
`testimonies, by relying on the disclosure of the specification of the ’137
`patent, which describes step S104 as “read data from MIC and hold them,”
`but does not describe step S104 to include detecting a WORM feature of the
`cassette. Ex. 1001, Fig. 15, 18:59–62. Accordingly, we adopt our
`preliminary construction of the claimed “information acquiring means” from
`our Decision to Institute, reproduced above.
`4. “operation controlling means”
`Claim 1 recites “operation controlling means” with the function of
`“control[ling] a write and/or a read operation on said recording medium”
`based on “specifics of the acquired format state designation information and
`on a result of a read operation on said magnetic tape by said tape-oriented
`recording and/or reproducing means.” In our Decision to Institute, we
`construed “operation controlling means” recited in claim 1 as a means-plus-
`function limitation with the function of controlling either a write operation,
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`or a read operation, or both, based on specifics of the acquired format state
`designation information and on a result of a read operation on said magnetic
`tape, with the corresponding structure encompassing at least a general
`purpose processor programmed to perform at least one of steps S119–122 of
`Figure 15 of the ’137 patent and equivalents. Paper 10, 11.
`Petitioner contends the ’137 patent discloses the corresponding
`structure as system controller 15 carrying out an algorithm described with
`reference to Figure 15, which controls a write and/or read operation.
`Pet. 18–19 (citing Ex. 1001, 10:48–51; Ex. 1008 ¶¶ 117–121). Petitioner’s
`declarant, Mr. Koski, testifies that the algorithm of Figure 15 of the
`’137 patent is described in column 17, line 60 through column 23, line 56,
`and includes step S122 to write data once to unrecorded areas on the
`magnetic tape and to read data from the recorded areas of the tape. Ex. 1008
`¶ 118 (citing Ex. 1001, 20:9–23).
`Patent Owner contends that the corresponding structure is a WORM-
`enabled controller programmed to perform at least step S119 of Figure 15 of
`the ’137 patent. PO Resp. 29–30 (citing Ex. 2018 ¶ 96). According to
`Patent Owner, both experts agree that system controller 15 must be a
`WORM-enabled controller. Id. at 30. We disagree with Patent Owner that
`both experts agree that system controller must be a WORM-enabled
`controller, as discussed in our construction of “information acquiring
`means” above.
`Patent Owner contends that performing at least one of steps S119–
`S122 would encompass “only . . . step S122 to be programmed,” and would
`conceivably permit an illegitimate cartridge to undergo normal read and
`write operations, thereby defeating the anti-tampering functionality of the
`
`17
`
`
`
`IPR2017-01356
`Patent 7,016,137 B2
`
`’137 patent. Id. (citing Ex. 2018 ¶ 96). According to Patent Owner, the
`corresponding structure should be construed as system controller 15
`programmed to perform the anti-tampering step S119. Id.
`Petitioner contends that Dr. Bain’s original declaration illustrates why
`requiring step S119 is improper. Reply 10 (citing Ex. 2001 ¶ 73). Dr. Bain
`initially testified that each one of steps S119 to S122 “individually controls a
`given write and/or read operation (for S122, if the tape is WORM, the drive
`will cancel any command to overwrite the recorded areas).” Ex. 2001 ¶ 73.
`Dr. Bain’s original testimony is consistent with the claim language
`and the specification of the ’137 patent. The claim language recites
`controlling only a write operation, or controlling only a read operation, or
`controlling both. Step S119 of Figure 15 performs a sequence
`corresponding to a corrupted tape cassette to disable the tape stream driver
`in both read and write operations. Ex. 1001, 19:43–48. Step S120 performs
`a sequence corresponding to a blank, or unformatted, magnetic tape, to cause
`the tape to be formatted. Id. at 20:61–21:6. Step S121 performs a sequence
`corresponding to a tape cassette with its magnetic tape formatted defectively,
`similar to that of the blank tape in step S120. Id. at 21:33–38. Step S122
`performs a sequence corresponding to the format of the tape, to write data to
`unrecorded areas and to read data from recorded areas. Id. at 20:10–23.
`In light of the explicit claim language, the disclosures in the
`specification, and Dr. Bain’s original testimony that each of steps S119 to
`S122 “individually controls a given write and/or read operation,” and in the
`same sentence, testifying that step S122 alone controls such an operation, we
`do not agree with Patent Owner that step S119 is required. Accordingly, we
`adopt our preliminary construction of this term, reproduced above.
`
`18
`
`
`
`IPR2017-01356
`Patent 7,016,137 B2
`
`
`Claim 2 recites “said operation controlling means” performs the
`function of “determin[ing] whether there exists a predetermined logical
`structure in said management information retrieved as a result of said read
`operation on said magnetic tape by said tape-oriented recording and/or
`reproducing means for write and/or read operations to and/or from said
`magnetic tape.” Ex. 1001, 24:55–60.
`Patent Owner contends that the corresponding structure for the
`“operation control means” recited in claim 2 includes a WORM-enabled
`controller. PO Resp. 31–32. We disagree, as discussed in our construction
`of claim 1 above.
`Mr. Koski testifies that the ’137 patent discloses the corresponding
`structure in Figure 15 step S106, and column 19 lines 7–13. Ex. 1008 ¶ 119.
`Dr. Bain testifies that step S106 is one way to carry out the function, as the
`system controller “checks the currently held system log data from the
`magnetic tape to determine whether the system log has a logical data
`structure based on a stipulated format.” Ex. 2001 ¶ 78 (citing Ex. 1001,
`19:10–13).
`We construe the structure corresponding to the function of
`determining whether there exists a predetermined logical structure in said
`management information as encompassing at least a general purpose
`processor programmed to perform step S106 of Figure 15 of the ’137 patent
`and equivalents.
`Claim 3 recites “said operation controlling means” performs the
`function of “determin[ing] whether a reproduced signal is obtained as a
`result of said read operation on said magnetic tape by said tape-oriented
`
`19
`
`
`
`IPR2017-01356
`Patent 7,016,137 B2
`
`recording and/or reproducing means, said read operation retrieving data
`from a predetermined area of said magnetic tape.” Ex. 1001, 24:62–67.
`Patent Owner contends that the corresponding structure for the
`“operation control means” recited in claim 3 includes a WORM-enabled
`controller. PO Resp. 31–32. We disagree as discussed in our construction
`of claim 1 above.
`Mr. Koski testifies that the ’137 patent discloses the corresponding
`structure in step S109 of Figure 15 and column 20 lines 24–39. Ex. 1008
`¶ 120. Dr. Bain testifies that the ’137 patent discloses corresponding
`structure as either step S109 or step S105 of Figure 15. Ex. 2001 ¶ 82
`(citing Ex. 1001, 20:27–37).
`We construe the structure corresponding to the function of
`determining whether a reproduced signal is obtained as a result of said read
`operation on said magnetic tape as encompassing at least a general purpose
`processor programmed to perform either step S105 or step S109 of Figure 15
`of the ’137 patent and equivalents.
`5. “formatted”
`Petitioner contends that the term “formatted” recited in claims 1 and 4
`should be construed to mean “a signal has been recorded on the magnetic
`tape making it ready to accept user data.” Pet. 19–20. Patent Owner does
`not address this term in the Patent Owner Response.
`Absent a material dispute, the Board need not construe claim terms.
`Vivid Techs., Inc. v. American Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999). We determine this term does not require an express construction
`to resolve the partie
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