Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 31
`
` Entered: December 3, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJIFILM CORPORATION,
`Petitioner,
`
`v.
`
`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01390
`Patent 7,115,331 B2
`____________
`
`
`
`Before JON B. TORNQUIST, JEFFREY W. ABRAHAM, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`Paper No. 31
`
` Entered: December 3, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJIFILM CORPORATION,
`Petitioner,
`
`v.
`
`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01390
`Patent 7,115,331 B2
`____________
`
`
`
`Before JON B. TORNQUIST, JEFFREY W. ABRAHAM, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`IPR2017-01390
`Patent 7,115,331 B2
`
`
`I. INTRODUCTION
`
`Fujifilm Corporation (“Petitioner”) filed a Petition seeking inter
`
`partes review of claims 1–18 (“challenged claims”) of U.S. Patent No.
`
`7,115,331 B2 (Ex. 1001, “the ’331 patent”). Paper 1 (“Pet.”). Sony
`
`Corporation (“Patent Owner”) filed a Patent Owner Preliminary Response to
`
`the Petition. Paper 8 (“Prelim. Resp.”). On December 8, 2017, we instituted
`
`an inter partes review of all challenged claims, but not all grounds raised in
`
`the Petition. Paper 9 (“Inst. Dec.”).
`
`After institution, Patent Owner filed a Patent Owner Response (Paper
`
`14, “PO Resp.”). On April 27, 2018, we issued an order modifying our
`
`Institution Decision to include all grounds raised in the Petition. Paper 15.
`
`After receiving authorization from the Board, Patent Owner filed a
`
`Supplemental Patent Owner Response addressing the previously non-
`
`instituted grounds, (Paper 18, “Suppl. PO Resp.”)1 and Petitioner filed a
`
`Reply (Paper 24).
`
`An oral hearing was held on September 20, 2018, and a transcript of
`
`the hearing has been entered into the record of the proceeding. Paper 30
`
`(“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has not shown by a
`
`
`1 In the Supplemental Patent Owner Response, Patent Owner indicated
`Petitioner “agreed to drop” two grounds raised in the Petition. Suppl. PO
`Resp. 5 (referring to Grounds 7 and 8 in the Petition). Petitioner agrees. Tr.
`4:8–10 (agreeing that Petitioner dropped Grounds 7 and 8 from the Petition).
`Because Petitioner has withdrawn Grounds 7 and 8 from the Petition, we do
`not address them in this Final Written Decision.
`
`
`
`2
`
`
`
`IPR2017-01390
`Patent 7,115,331 B2
`
`preponderance of the evidence that claims 1–18 of the ’331 patent are
`
`unpatentable.
`
`II. BACKGROUND
`
`A. Related Proceedings
`
`The parties indicate that the ’331 patent is involved in Certain
`
`Magnetic Tape Cartridges and Components Thereof (ITC Investigation No.
`
`337-TA-1036). Pet. 1; Paper 4, 1. Patent Owner further identifies the
`
`following litigation as related: Sony Corporation v. Fujifilm Holdings
`
`Corporation, Civil Action No. 1:16-cv-25210 (S.D. Fla.). Paper 4, 1.
`
`B. The ’331 Patent
`
`The ’331 patent, titled “Magnetic Recording Medium Having Narrow
`
`Pulse Width Characteristics,” issued on October 3, 2006. Ex. 1001, at [54],
`
`[45]. The ’331 patent discloses a dual-layer magnetic recording media
`
`having a magnetic layer that “includes a volume concentration of at least
`
`about 35% of a primary magnetic metallic particulate pigment material
`
`having a coercivity of at least about 2000 Oe, and an average particle size of
`
`less than about 100 nm, and a binder system therefor.” Id. at 2:65–3:4. As a
`
`result, the magnetic recording media “exhibit narrower pulsewidth
`
`characteristics and lowered remanence-thickness product.” Id. at 1:16–18.
`
`The ’331 patent explains that pulsewidth, “often abbreviated as
`
`‘PW50,’” is one measure of magnetic media performance (id. at 2:36–37),
`
`and
`
`is tested by recording a signal on a magnetic recording medium
`at a sufficiently low density that the transitions are isolated
`from one another; i.e., they do not interact or interfere with one
`another. The amplified, unequalized and unfiltered signal from
`the read head is displayed on an oscilloscope and the width
`along the time axis of the resulting positive and/or negative
`
`
`
`3
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`
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`IPR2017-01390
`Patent 7,115,331 B2
`
`
`pulses halfway from the baseline to their peaks is measured.
`This time interval is multiplied by the tape transport speed to
`obtain the pulsewidth, as a distance.
`
`Id. at 3:39–48. According to the ’331 patent, remanence-thickness
`
`product “is abbreviated Mr*t, and means the product of the remanent
`
`magnetization after saturation in a strong magnetic field (10 kOe)
`
`multiplied by the thickness of the magnetic coating. This value is
`
`measured in memu/cm2.” Id. at 3:49–53.
`
`The ’331 patent discloses that the recording medium preferably
`
`has a PW50 of less than about 500 nm, and a Mr*t of less than about
`
`5.0 memu/cm2. Id. at 3:4–8. The ’331 patent describes the
`
`preparation of several examples, and Table 1 provides physical
`
`attributes and PW50 results for those examples. Id. at 10:1–11:10.
`
`C. Challenged Claims
`
`Petitioner challenges claims 1–18 of the ’331 patent. Claims 1 and 16
`
`are the only independent claims challenged. Claim 1 is representative, and
`
`is reproduced below:
`
`1. A dual-layer magnetic recording medium comprising a
`non-magnetic substrate having a front side and a back
`side, a lower support layer formed over the front side
`and a magnetic upper recording layer formed over said
`lower support layer, the magnetic upper recording layer
`comprising a volume concentration of at least about
`35% of a primary magnetic metallic particulate pigment
`having a coercivity of at least about 2300 Oe, the
`magnetic pigment particles having an average particle
`length of no more than about 80 nm, and a binder for the
`pigment, wherein said medium has a remanence-
`thickness product, Mr*t, of less than or equal to about
`2.84 memu/cm2, an orientation ratio greater than about
`2.0, and a PW50 of less than or equal to about 384 nm.
`
`
`
`4
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`
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`IPR2017-01390
`Patent 7,115,331 B2
`
`Ex. 1001, 11:14–27. Claim 16 is substantially similar to claim 1, but
`
`requires a coercivity of at least about 2500 Oe, a Mr*t of less than or equal
`
`to about 2.12 memu/cm2, and PW50 of less than or equal to about 366 nm.
`
`Id. at 12:25–38.
`
`
`
`D. References
`
`Aonuma, JP 2001-319315A, published Nov. 16, 2001 (“Aonuma,”
`Ex. 1002 (certified translation); Ex. 1018 (original)).
`
`Mori et al., JP 2002-74641A, published Mar. 15, 2002 (“Mori,”
`Ex. 1003 (certified translation); Ex. 1022 (original)).
`
`Sasaki et al., JP 2000-40217A, published Feb. 8, 2000 (“Sasaki,”
`Ex. 1004 (certified translation); Ex. 1019 (original)).
`
`Magnetic Recording, Volume I: Technology (C. Denis Mee & Eric.
`D. Daniel eds., 1987) (“Mee,” Ex. 1005).
`
`
`
`E. Reviewed Grounds of Patentability
`
`Reference(s)
`
`Statutory Basis
`
`Claims Challenged
`
`1–11, 13, and 16–18
`
`1–11 and 13–18
`
`1–18
`
`1–11 and 13–18
`
`12, 14, and 15
`
`14 and 15
`
`1–11, 13, and 16–18
`
`1–11, 13–18
`
`Mori
`
`Sasaki
`
`Aonuma and Mori
`
`Sasaki and Mori
`
`Mori and Aonuma
`
`Mori and Sasaki
`
`Mori and Mee
`
`Sasaki and Mee
`
`
`
`
`
`§ 102
`
`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`5
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`IPR2017-01390
`Patent 7,115,331 B2
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`
`III. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted 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).
`
`Absent a special definition for a claim term being set forth in the
`
`specification, claim terms are given their ordinary and customary meaning as
`
`would be understood by a person of ordinary skill in the art at the time of the
`
`invention and in the context of the entire patent disclosure. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Furthermore, “only those
`
`terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Petitioner proposes a specific construction for the following terms:
`
`“volume concentration,” “magnetic metallic particulate pigment,”
`
`“orientation ratio,” “remanence-thickness product,” PW50,” “hard resin
`
`component,” and “soft resin component.” Pet. 13–16. For several terms,
`
`Petitioner simply repeats explicit definitions recited in the ’331 patent. E.g.,
`
`id. at 14–15 (offering proposed constructions for “orientation ratio,”
`
`“remanence-thickness product,” and “PW50”). Patent Owner responds that
`
`“[f]or all terms . . . the plain and ordinary meaning of the claim language as
`
`used in the context of the patent specification is applicable.” PO Resp. 8.
`
`In our Institution Decision, we determined that no express
`
`construction for the noted terms or phrases was needed. Inst. Dec. 6. After
`
`
`
`6
`
`
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`IPR2017-01390
`Patent 7,115,331 B2
`
`reviewing the arguments in the Patent Owner Response and Supplemental
`
`Response, and Petitioner’s Reply, we determine it is necessary at this stage
`
`to construe the term “volume concentration.”
`
`i. The Parties’ Arguments on “Volume Concentration”
`
`Independent claims 1 and 16, the only independent claims of the ’331
`
`patent, both recite “[a] dual layer magnetic recording medium comprising . .
`
`. a magnetic upper recording layer formed over [a] lower support layer, the
`
`magnetic upper recording layer comprising a volume concentration of at
`
`least about 35% of a primary magnetic particulate pigment.” Ex. 1001,
`
`11:14–20, 12:25–31 (emphasis added).
`
`Petitioner states that the Specification “mentions [volume
`
`concentration] briefly,” but acknowledges that it does not expressly define
`
`the term. Pet. 13 (citing Ex. 1001, 2:66). Petitioner asserts “[e]xtrinsic
`
`evidence supports using the recipe of materials used to form the magnetic
`
`layer in order to measure volume concentration,” citing paragraph 84 of the
`
`Wang Declaration (Ex. 1017). Id. In paragraph 84 of his Declaration, Dr.
`
`Wang cites to page 212 of Exhibit 1014,2 which defines “Pigment Volume
`
`Concentration” as “the ratio of the volume (skeleton) of pigment to the
`
`volume of total solids.” Ex. 1014, 212; Ex. 1017 ¶ 84. Dr. Wang relies on
`
`this definition to support his opinion that “one commonly used meaning of
`
`[volume concentration] focuses on the recipe used to form the magnetic
`
`layer.” Ex. 1017 ¶ 84 (citing Ex. 1014, 212). Dr. Wang also states that the
`
`’331 Patent sets forth a recipe-based formulation for the composition of the
`
`magnetic layer. Id. Petitioner and Dr. Wang, therefore, contend that the
`
`
`2 H.F. Huisman & H.J.M Pigmans, Dispersion of Magnetic Pigments III, A
`Kneader Investigation, J. DISPERSION SCI. AND TECH., 7(2), 187–213 (1986).
`
`
`
`7
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`IPR2017-01390
`Patent 7,115,331 B2
`
`broadest reasonable interpretation of volume concentration includes “the
`
`volume of the primary magnetic metallic particulate pigment divided by the
`
`volume of all materials that form the magnetic layer.” Pet. 13 (citing Ex.
`
`1017 ¶ 84).
`
`Patent Owner argues that there is a difference between the volume
`
`fraction of magnetic particles in the formed magnetic layer itself (referred to
`
`as the “packing fraction”), and the volume fraction of the materials that
`
`make up the slurry used to form the magnetic layer (referred to as the
`
`“pigment volume concentration”). PO Resp. 29–30 (citing Ex. 20093).
`
`According to Patent Owner, “[t]he pigment-volume concentration is the
`
`volume occupied by the particles as related to the nonvolatile components of
`
`a dispersion, while the packing fraction relates to the ratio of the magnetic
`
`volume to the overall volume of the coating.” Id. at 29 (citing Ex. 2009,
`
`3.46–3.47). Thus, whereas the pigment volume concentration can be
`
`determined from the materials that make up the slurry, packing fraction is
`
`determined after the magnetic layer is formed by dividing the volume of the
`
`primary magnetic particles in the magnetic layer by the total volume of the
`
`finished magnetic layer. See Ex. 2001 (Declaration of Dr. Bain, Patent
`
`Owner’s Declarant) ¶ 123 (explaining the difference between pigment
`
`volume concentration and packing fraction).
`
`According to Patent Owner, “[c]ritically, there is not a one-to-one
`
`correspondence between pigment volume concentration and packing
`
`fraction, and in some cases, attempting to increase packing fraction by
`
`increasing pigment volume concentration in the coating material can result
`
`
`3 Magnetic Recording Technology (C. Denis Mee & Eric. D. Daniel eds., 2nd
`ed. 1996), Chapter 3.
`
`
`
`8
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`IPR2017-01390
`Patent 7,115,331 B2
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`in detrimental effects.” PO Resp. 30–31. Dr. Bain, Patent Owner’s
`
`Declarant, testifies that “when the packing fraction and the pigment-volume
`
`concentration disagree, it is because air filled voids exist within the tape
`
`layer,” and that “it is appropriate to consider these air-filled voids as
`
`additional non-magnetic material within the tape layer.” Ex. 2001 ¶ 123.
`
`Patent Owner asserts that “[s]ince the ’331 patent refers to a
`
`‘magnetic upper recording layer . . . comprising a volume concentration of at
`
`least about 35% of a primary magnetic metallic particulate pigment,’ in this
`
`case we are concerned with the volume fraction that actually occurs in the
`
`tape.” PO Resp. 30. Patent Owner thus argues that the volume fraction of
`
`the materials that make up the slurry, or pigment volume fraction, is not
`
`relevant to the claims of the ’331 patent. Id.
`
`In its Reply, Petitioner argues that the term “volume concentration”
`
`can refer to pigment volume concentration and packing fraction. Reply 2–4.
`
`Petitioner explains that (1) pigment volume concentration is a measurement
`
`taken before a magnetic layer is formed, uses the recipe of materials of the
`
`slurry used to prepare the magnetic layer, and does not consider voids in the
`
`magnetic layer, and (2) packing fraction is determined after a magnetic layer
`
`is formed by dividing the volume of the primary magnetic particles by the
`
`volume of the magnetic layer, and is inclusive of any voids in the magnetic
`
`layer. Id. Petitioner also acknowledges that the two measurements agree up
`
`to about 30% and then begin to diverge. Id. at 3 (citing Ex. 2009, Figure
`
`3.28).
`
`Petitioner, however, argues that Patent Owner improperly attempts to
`
`exclude pigment volume concentration from the meaning of “volume
`
`concentration,” as used in claim 1. Id. at 4. Rather than Patent Owner’s
`
`
`
`9
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`IPR2017-01390
`Patent 7,115,331 B2
`
`narrow construction, Petitioner maintains its position that the broadest
`
`reasonable interpretation of volume concentration should at least include
`
`pigment volume concentration. Id. at 4–7.
`
`Specifically, Petitioner contends the plain meaning of the phrase
`
`“volume concentration” should control, noting that “pigment volume
`
`concentration” “shares vocabulary” with claim 1, which recites “volume
`
`concentration.” Id. at 4. Petitioner also argues that Patent Owner’s narrow
`
`construction, which includes only packing fraction, is incorrect because it
`
`ignores the fact that the term “packing fraction” does not appear in the ’331
`
`patent. Id. at 5. Additionally, Petitioner notes that the ’331 patent does not
`
`set forth instructions for making and testing a physical example necessary to
`
`determine packing fraction, but does provide a recipe for the slurry used to
`
`form the magnetic layer, which a person of ordinary skill in the art could use
`
`to determine pigment volume concentration. Id. at 5–6. This, according to
`
`Petitioner, is further evidence that the proper construction of volume
`
`concentration at least includes pigment volume concentration. Id.; Pet 12–
`
`13; see also Ex. 1017 ¶ 84 (Dr. Wang stating that the ’331 patent sets forth a
`
`recipe-based formulation for the composition of the magnetic layer, which
`
`supports his interpretation).
`
`ii. Analysis
`
`The parties appear to agree that the phrase “volume concentration,” on
`
`its own, can refer to the concentration of a particle in the magnetic layer
`
`itself (i.e., packing fraction, a final product-based value), or the
`
`concentration of a particle in the slurry used to make the magnetic layer (i.e.,
`
`pigment volume concentration, a recipe-based value). Reply 2–3; PO Resp.
`
`38 (arguing that “[t]he volume concentration of the slurry is not the type of
`
`
`
`10
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`IPR2017-01390
`Patent 7,115,331 B2
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`‘volume concentration’ recited in claim 1”); Ex. 2001 ¶ 122 (Dr. Bain
`
`stating that “Dr. Wang calculates the volume concentration of Mori based on
`
`a recipe describing the nonvolatile constituents in the coating slurry” and
`
`that “[w]hile this is a type of volume concentration, it is not the type of
`
`volume concentration claimed in the ’331 patent, which relates to the
`
`volume concentration that actually occurs in the magnetic layer of the
`
`tape.”); see also Ex. 1014, 212 (providing definitions for “Pigment Volume
`
`Concentration” and “Packing Factor”); Ex. 2009, 3.47 (discussing pigment
`
`volume concentration and packing fraction). There is also no dispute that
`
`the volume concentration of a particle in the magnetic layer (packing
`
`fraction) may be different from the volume concentration of a particle in the
`
`slurry used to create the magnetic layer (pigment volume concentration).
`
`Reply 3–4; PO Resp. 29–31. Dr. Bain explains that differences between the
`
`packing fraction and pigment volume concentration occur due to air-filled
`
`voids present within the tape layer. Ex. 2001 ¶ 123. Petitioner does not
`
`challenge this testimony, and acknowledges that pigment volume
`
`concentration does not consider voids in the magnetic layer, whereas
`
`packing fraction does. Reply 3 (citing Ex. 1014, 27).
`
`Although the extrinsic evidence suggests that “volume concentration”
`
`can have either the recipe-based definition relied upon by Petitioner or the
`
`final product-based definition relied upon by Patent Owner, the intrinsic
`
`evidence shows that only one of these definitions is appropriate in the
`
`context of the ’331 patent.
`
`
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`11
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`IPR2017-01390
`Patent 7,115,331 B2
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`
`We begin by looking at the language of claim 1.4 Translogic, 504
`
`F.3d at 1257–1258; In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
`
`(“[T]he name of the game is the claim.”). Claim 1 recites a magnetic
`
`recording medium having “a magnetic upper recording layer formed over [a]
`
`lower support layer, the magnetic upper recording layer comprising a
`
`volume concentration of at least about 35% of a primary magnetic metallic
`
`particulate pigment.” Ex. 1001, 11:16–20. The language of the claim thus
`
`requires a finished product, a magnetic recording medium, having a formed
`
`magnetic layer with specific properties, namely a specific volume
`
`concentration of the metallic pigment in the magnetic layer. Id.; see also Tr.
`
`36:12–14 (Patent Owner: “[T]he claims are about a tape. . . . It’s about what
`
`the tape looks like when it is finished.”).
`
`The Specification likewise discusses the volume concentration of the
`
`metallic pigment in the context of the formed magnetic layer of a magnetic
`
`recording medium. For example, the ’331 patent states that “[t]he present
`
`invention relates to magnetic recording media such as magnetic tapes, and
`
`more specifically to the magnetic layer of the media which contains
`
`particulate metallic pigments that have . . . a high volume concentration.”
`
`Ex. 1001, 1:12–16. In the Summary of the Invention, the ’331 patent again
`
`describes a magnetic recording medium wherein the “magnetic upper layer
`
`is disposed over the lower support layer on the front side of the substrate and
`
`includes a volume concentration of at least about 35% of a primary magnetic
`
`metallic particulate pigment material.” Id. at 2:60–3:1.
`
`
`4 Claim 16 contains the same language as claim 1. Thus, although we refer
`and cite to only claim 1, the same analysis applies to claim 16.
`
`
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`12
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`IPR2017-01390
`Patent 7,115,331 B2
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`Other references to volume concentration in the Specification of the
`
`’331 patent are similarly found in the context of the formed magnetic layer
`
`of a finished magnetic recording medium. E.g., Ex. 1001, 3:9–15 (“Another
`
`aspect of the invention provides a dual-layer magnetic recording medium
`
`comprising . . . [an] upper magnetic layer including a volume concentration
`
`of at least about 40% of a primary magnetic metallic particulate pigment
`
`material . . . .”); 4:33–35 (“The pigment is present in the upper magnetic
`
`layer in a volume concentration of at least about 35% . . . .”).
`
`Therefore, the words of the claim coupled with the Specification help
`
`define the term “volume concentration.” In the context of the ’331 patent,
`
`“volume concentration” refers to the volume concentration of the magnetic
`
`particles in the formed magnetic layer.
`
`Petitioner argues that “volume concentration” in claim 1 should
`
`include “pigment volume concentration” because both phrases contain the
`
`words “volume” and “concentration.” Reply 4. We disagree. Petitioner’s
`
`isolation of the phrase “volume concentration” ignores the other language in
`
`claim 1 and the Specification that refer to volume concentration in the
`
`context of the formed magnetic layer of a magnetic recording medium.
`
`We are also unpersuaded by Petitioner’s argument that its
`
`interpretation is “guided by the intrinsic record, as the words ‘pigment’ and
`
`‘volume concentration’ recited in the claims of the ’331 Patent find support
`
`in the specification.” Reply 5. Petitioner’s own evidence shows that the
`
`term that has the interpretation advocated by Petitioner is the complete
`
`phrase “pigment volume concentration,” which has a specific meaning in the
`
`art, and not the isolated terms, “pigment” and “volume concentration.”
`
`Ex. 1014, 212. This undermines Petitioner’s attempt to support its proposed
`
`
`
`13
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`IPR2017-01390
`Patent 7,115,331 B2
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`construction based on the use of the words “pigment” and “volume
`
`concentration” separately in claim 1 and the Specification. It also
`
`undermines Petitioner’s argument that “packing fraction” is not the broadest
`
`reasonable construction because the phrase “packing fraction” does not
`
`appear in the Specification. Reply 5. As neither “packing fraction” nor
`
`“pigment volume concentration” appears in the ’331 patent, we construe
`
`“volume concentration” according to the plain meaning of the words of the
`
`claim when read in view of the Specification.
`
`The Specification discusses “volume concentration” in the context of
`
`the formed magnetic layer of a finished magnetic recording medium. E.g.,
`
`Ex. 1001, 1:12–16, 2:60–3:1, 3:9–15, 4:33–35. Claim 1 likewise requires
`
`the magnetic layer of a finished magnetic recording medium to comprise a
`
`specific volume concentration of metallic particles. Id. at 11:12–16. By
`
`way of contrast, Petitioner would have us interpret claim 1 to include a
`
`magnetic layer formed from a composition comprising a volume
`
`concentration of at least about 35% of a primary magnetic metallic
`
`particulate pigment. But that language is different from what actually
`
`appears in claim 1 and the Specification.
`
`Petitioner also argues that Patent Owner’s construction is incorrect
`
`because a person of ordinary skill in the art would have to construct a
`
`physical example and then subject it to magnetic testing to determine
`
`packing fraction, and, according to Petitioner, instructions for such
`
`construction and testing are not disclosed in the ’331 patent. Reply 5–6. In
`
`support of its proposed construction, Petitioner argues that a person of
`
`ordinary skill in the art could determine pigment volume concentration
`
`simply by considering a recipe disclosed in a document. Id.
`
`
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`14
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`Patent 7,115,331 B2
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`The ’331 patent, however, does disclose information regarding the
`
`preparation of the magnetic layer of the magnetic recording media. See, e.g.,
`
`Ex. 1001, 4:20–6:52, 10:1–54. Additionally, evidence of record suggests a
`
`person of ordinary skill in the art would have known how to determine the
`
`packing fraction of metallic particles in the magnetic layer of a magnetic
`
`recording medium based on porosity measurements. See Ex. 1008, 41
`
`(showing a table that includes a porosity value); Tr. 36:4–21 (discussing the
`
`porosity measurement in Ex. 1008). Further, Petitioner’s argument is
`
`inconsistent with the ’331 patent, which describes the ingredients of the
`
`magnetic layer and discloses ranges of amounts by weight (Ex. 1001, 3:22–
`
`12, 4:36–53, 5:3–6:52, 10:14–28), but does not disclose any specific recipes
`
`or formulations from which pigment volume concentration could be
`
`calculated. Moreover, although Dr. Wang testifies that the ’331 patent sets
`
`forth a “recipe based formulation,” he does not cite to any specific recipe or
`
`otherwise explain how a person of ordinary skill in the art could have
`
`determined pigment volume concentration based on the information
`
`presented in the’331 patent. And Petitioner acknowledges that the ’331
`
`patent does not contain any additional information regarding calculating
`
`pigment volume concentration. Tr. 9:19–23.
`
`iii. Conclusion
`
`In view of the foregoing, we assign the plain and ordinary meaning to
`
`the phrase “volume concentration” in the context of the ’331 patent. In the
`
`context of the claims and Specification, the plain and ordinary meaning of
`
`“volume concentration” refers to the volume concentration of metallic
`
`particulate pigment in the magnetic layer itself, i.e., a final product-based
`
`value as opposed to a recipe-based value.
`
`
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`15
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`B. Person Of Ordinary Skill in the Art
`
`Petitioner defines a person of ordinary skill in the art as having at least
`
`one of the following qualifications:
`
`(1) a bachelor’s degree in materials science, physics, electrical
`engineering, mechanical engineering, chemistry, or a closely
`related field, and at least five years of experience in the field of
`magnetic recording, or (2) a Master’s degree or higher in
`materials science, physics, electrical engineering, mechanical
`engineering, chemistry, or a closely related field, with an
`emphasis in magnetic recording, and at least three years of
`experience in the field of magnetic recording.
`
`Pet. 12; Ex. 1017 ¶ 60. Although Patent Owner does not expressly define
`
`the appropriate level of skill in the art in the Patent Owner Response or its
`
`Supplemental Response, Patent Owner’s declarant, Dr. Bain, presents a
`
`definition of a person of ordinary skill in the art in his declaration that is
`
`nearly identical to Petitioner’s definition. Ex. 2001 ¶ 44. In view of this, for
`
`purposes of this Decision, we adopt Petitioner’s definition of a person of
`
`ordinary skill in the art.
`
`C. Prior Art References
`
`i. Mori (Ex. 1003)
`
`Mori is directed to providing “a particulate magnetic recording
`
`medium exhibiting a high [carrier to noise (C/N)] ratio in high-density
`
`magnetic recording (particularly when employing an MR head for
`
`reproduction) as well as good durability.” Ex. 1003 ¶ 3. Mori discloses a
`
`dual-layer magnetic recording medium having a lower layer containing a
`
`non-magnetic powder and a magnetic layer containing a strongly magnetic
`
`powder. Id. ¶ 4. Mori further discloses embodiments of its invention,
`
`setting forth the “detailed contents” of the lower layer and magnetic layer in
`
`each. Id. ¶¶ 45–46.
`
`
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`16
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`Mori teaches that limiting the thickness of the magnetic upper layer
`
`and using a magnetic powder with a mean long axis length less than or equal
`
`to 0.1 µm and a saturation magnetization equal to or less than 120 A*m2/kg
`
`can increase the C/N ratio. Id. ¶¶ 5–6. Mori further teaches using a
`
`coercivity equal to or greater than 167 kA/m (2,100 Oe) to maintain stable
`
`recording magnetization. Id. ¶ 8. Mori teaches that the “level of residual
`
`magnetization” of the magnetic layer preferably ranges from 5–50 mT*µm
`
`(id. ¶ 10) and the magnetic recording medium has a squareness in the tape
`
`running direction equal to or higher than 0.70 (id. ¶ 42).
`
`ii.
`
`Sasaki (Ex. 1004)
`
`Sasaki is directed to a “magnetic recording medium suitable for high-
`
`density recording.” Ex. 1004 ¶ 1. To achieve this, Sasaki teaches
`
`providing a magnetic recording medium furnished with a lower
`layer on a support and an upper magnetic layer thereupon
`formed by dispersing ferromagnetic powder and nonmagnetic
`powder in binder, which magnetic recording medium uses an
`aforesaid upper magnetic layer wherein the thickness is no
`greater than 0.2 µm, the product of remanent flux density of
`said upper magnetic layer and the thickness of said upper
`magnetic layer is 0.005~0.045 Tµm, the coercivity of said
`upper magnetic layer is 170~280 kA/m, the average particle
`size of the aforesaid magnetic powder is 0.01~0.12 µm, and the
`average particle size of the aforesaid nonmagnetic powder is no
`less than 1/10 the thickness of the aforesaid upper magnetic
`layer but no greater than 0.1 µm.
`
`Id. ¶ 7. Sasaki discloses several examples, and lists the ingredients and
`
`procedures used to form each “embodiment” and “comparative” example.
`
`Id. ¶¶ 26–40, Table 1. Sasaki also provides information regarding physical
`
`properties of the upper magnetic layer of each example, signal-to-noise ratio
`
`
`
`17
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`(S/N) values for the magnetic tape formed using each example, and storage
`
`properties for each example. Id. ¶¶ 39–40, Tables 1 and 2.
`
`iii. Aonuma (Ex. 1002)
`
`Aonuma relates to a magnetic recording medium for recording
`
`computer data, and particularly a medium that can be used in a playback
`
`system that uses a magnetoresistive (MR) playback head. Ex. 1002 ¶ 1.
`
`Aonuma aims to provide a magnetic recording medium that has good
`
`electromagnetic conversion characteristics, durability, and storage stability,
`
`yields a high S/N ratio, achieves high-density recording, and is capable of
`
`rapid data transfer. Id. ¶¶ 9–10. Aonuma teaches that it is possible to
`
`manufacture the desired magnetic recording medium by “setting the
`
`thickness of the magnetic layer to a specific range relative to the prior art
`
`and specifying the remanent flux and [orientation ratio] of the magnetic
`
`layer of the magnetic recording medium.” Id. ¶ 10. In particular, Aonuma
`
`discloses
`
`the average thickness of the magnetic layer is within the range
`of 0.15~0.25 μm, the remanent flux of the magnetic layer is
`within the range of 50~60mT*μm, the reduction in remanent
`flux of the magnetic layer after one week of storage at 60ºC,
`90% RH is less than 1%, and the OR (squareness ratio in the
`tape length direction/squareness ratio in the tape width
`direction) of the magnetic layer is 2.0 or greater.
`
`Id. ¶ 11.
`
`
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`18
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`Aonuma discloses several examples, and lists the ingredients and
`
`procedures used to form each “embodiment” and “comparative” example.
`
`Id. ¶¶ 105–122, Tables 1 and 2. Aonuma also provides information
`
`regarding physical properties of the upper magnetic layer and overall
`
`magnetic tape for each example. Id. ¶¶ 118–122, Tables 1 and 2.
`
`iv. Mee (Ex. 1005)
`
`Mee is directed to “establishing the underlying technologies that are
`
`common to all forms of magnetic recording.” Ex. 1005, viii. Mee includes
`
`several chapters that address different aspects of magnetic recording,
`
`including the processes by which recording and reproduction take place, and
`
`materials, design, and fabrication of magnetic media. Id.
`
`D. Claims 1–11, 13, and 16–18: Anticipation by Mori
`
`Petitioner contends that claims 1–11, 13, and 16–18 are unpatentable
`
`under 35 U.S.C. § 102 as anticipated by Mori. Pet. 16–34. Petitioner relies
`
`on the Wang Declaration in support of its contentions. Id.
`
`Claim 1 requires, inter alia, a “magnetic upper recording layer
`
`comprising a volume concentration of at least about 35% of a primary
`
`magnetic metallic particulate pi
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