UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Sony Corporation,
`Petitioner
`
`v.
`
`Fujifilm Corporation,
`Patent Owner
`
`Inter Partes Review No. IPR2018-01740
`Patent 6,630,256
`
`DECLARATION OF DR. BRUCE CLEMENS
`
`FUJIFILM, Exh. 2001, p. 1
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`TABLE OF CONTENTS
`
`TABLE OF CONTENTS .............................................................................................................. i
`I.
`Introduction ........................................................................................................................... 1
`II. My Experience and Qualifications ....................................................................................... 2
`A. Educational Background ..................................................................................................... 4
`B. Career History ..................................................................................................................... 5
`III. Relevant Legal Principles and Guidelines ........................................................................... 6
`A. Anticipation......................................................................................................................... 6
`B. Obviousness ........................................................................................................................ 7
`C. Level of Ordinary Skill in the Art ....................................................................................... 9
`IV. The ’256 Patent .................................................................................................................... 10
`A. Technology Background ................................................................................................... 10
`B. Summary of the Claims .................................................................................................... 13
`C. Claim Construction ........................................................................................................... 15
`V. Overview of the Cited Art ................................................................................................... 16
`A. U.S. Patent No. 5,804,283 (“Inaba-283”) (Ex. 1005) ....................................................... 16
`B.
`Japanese Pat. App. Pub. H6-150286 (“Honda”) (Ex. 1006) ............................................. 18
`C.
`Japanese Pat. App. Pub. 2000-30244 (“Inaba-244”) (Ex. 1007) ...................................... 22
`D. U.S. Patent No. 5,698,311 (“Masaki”) (Ex. 1008) ........................................................... 23
`E. European Pat. App. Pub. EP1022106A (“Nagasawa”) (Ex. 1009) ................................... 24
`VI. Validity Analysis .................................................................................................................. 25
`A. Ground 1: The Challenged Claims are not invalid over Inaba-283 .................................. 25
`B. Ground 2: The Challenged Claims Are Not Obvious over Inaba-283 in view of Honda . 31
`C. Ground 3: Claims 1-6 Are Not Obvious over Inaba-244 in view of the Nagasawa and
`Masaki ....................................................................................................................................... 47
`D. The Specific Limitations of the Claims are Critical ......................................................... 62
`VII.Conclusion ............................................................................................................................ 73
`VIII.
`Hearing and Exhibits ................................................................................................. 73
`IX. Supplementation of opinions .............................................................................................. 73
`X. Reservation of Rights .......................................................................................................... 75
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`Ex. 2001 - Declaration of Dr. Bruce Clemens
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`i
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`I.
`1.
`
`Introduction
`I, Doctor Bruce Clemens, have been retained as a technical expert by
`
`Baker Botts, LLP, on behalf of Patent Owner FUJIFILM Corporation
`
`(“FUJIFILM” or “Patent Owner”). For my work in connection with this Petition, I
`
`am being compensated at my standard consulting rate of $500 per hour. My
`
`compensation is not dependent upon my opinions, testimony, or outcome of the
`
`Petition.
`
`2.
`
`I have been asked to give expert opinions in rebuttal to the assertions of
`
`invalidity made by Petitioner Sony Corporation (“Sony” or “Petitioner”), regarding
`
`claims 1-6 of U.S. Patent No. 6,630,256 (“Challenged Claims”).
`
`3.
`
`I have been asked to render expert opinions in response to opinions of
`
`Petitioner’s expert regarding the Challenged Claims. In particular, I have been
`
`asked to consider and respond to the opinion of Dilwyn Jones as set forth in the
`
`Declaration of Dilwyn Jones (Ex. 1004).
`
`4.
`
`In preparation for writing this declaration I have studied the Petition and
`
`the Exhibits thereto. Specifically, I have reviewed the Petition, Paper No. 2, U.S.
`
`Patent No. 6,630,256 (“The ’256 Patent”) and the Challenged Claims, Ex. 1001, as
`
`well as the relevant file history, Ex. 1004 the Declaration of Dilwyn Jones, Ex.
`
`1004, the references asserted as part of the invalidity grounds, Exs. 1005-1009, and
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`the references cited as being considered by Dr. Jones, and all materials cited
`
`therein.
`
`5.
`
`This declaration is based on my study of the information available to me
`
`at the time of this writing. I reserve the right to supplement this declaration should
`
`further relevant information be made available at a later date.
`
`II. My Experience and Qualifications
`6.
`I am currently the Walter B. Reinhold Professor in the School of
`
`Engineering at Stanford University, as well as the Director of the Stanford Nano
`
`Shared Facilities. In addition, I am a Professor in the Department of Materials
`
`Science and Engineering and a Member of the Photon Science Department, SLAC
`
`National Accelerator Laboratory, both at Stanford University. I currently teach
`
`courses on solar cells, fuel cells, and batteries at Stanford University, and have
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`developed and taught courses in thin film growth, kinetics of solid transformations,
`
`solar cells, fuel cells and batteries, x-ray diffraction, and nanomaterials synthesis.
`
`7.
`
`I have approximately 38 years of experience researching and working in
`
`the areas of applied physics and materials science, including work with magnetic
`
`recording media and materials. I have given and/or participated in over 125
`
`presentations and invited talks, published over 250 papers in leading journals
`
`including IEEE Transactions on Magnetics, and am a named inventor on at least
`
`seven U.S. patents.
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`8.
`
`In the area of magnetic materials, my group and I have studied the
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`connection between structure, growth and magnetic properties, and have produced
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`1 edited book, 53 published papers and 3 patents in this area. I used advanced x-ray
`
`diffraction techniques to uncover preferred in-plane crystallographic growth as the
`
`origin of in-plane magnetic anisotropy in surface-textured longitudinal recording
`
`media (AJ35, AJ63, AJ66). I studied the structural origins of perpendicular
`
`magnetic anisotropy in crystalline, multilayered, and amorphous materials (AJ30,
`
`AJ36, AJ38, AJ44, AJ45, AJ46, AJ67, CA19, CA20, CA22, RS16, RS22, RS23,
`
`RS28, RS29, RS30, RS33, RS35, RS40, RS44, RS47, P2, P3). I investigated the
`
`role of structure and composition in multilayers exhibiting giant magnetoresistance
`
`(AJ39, AJ43, RS17, RS26, RS42), and studied the structure and magnetic
`
`properties of magnetic, half-metallic Heusler alloy films and devices (AJ51, AJ57,
`
`AJ79, AJ84, AJ92, AJ94, CA29, CA30, CA31, RS49).
`
`9.
`
`My research focuses on the growth and structure of thin film, and
`
`interface and nanostructured materials for catalytic, electronic, magnetic, and
`
`photovoltaic applications. At Stanford University, my research group investigates
`
`phase transitions and kinetics in nanostructured materials, and we perform
`
`nanoparticle engineering for hydrogen storage and catalysis. Recently we
`
`developed nano-portals for efficient injection of hydrogen into storage media, dual-
`
`phase nanoparticles for catalysis, amorphous metal electrodes for semiconductor
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`devices, and a lift-off process for forming free-standing, single-crystal films of
`
`compound semiconductors. My work has been recognized with numerous honors
`
`and awards including being named a Fellow at the Materials Research Society.
`
`10.
`
`In my position as Director of the Stanford Nano Shared Facilities, I
`
`oversee the operation of extensive fabrication and characterization facilities,
`
`including
`
`three scanning electron microscopes,
`
`two
`
`transmission electron
`
`microscopes, several advanced light microscopes, two focused ion beam machines,
`
`advanced surface characterization including x-ray photoemission spectroscopy and
`
`Auger electron spectroscopy, lithographic techniques, including electron beam
`
`lithography conventional lithography, numerous etching and deposition machines,
`
`as well as a host of characterization approaches for soft materials. The SNSF has
`
`approximately 1000 users each year and has an operational budget of about 3.5
`
`million dollars, mainly derived from user fees.
`
`11.
`
`I have briefly summarized in this section my educational background,
`
`career history, publications, and other relevant qualifications. My curriculum
`
`vitae and resume addendum are attached as Exhibit 2002.
`
`A. Educational Background
`I graduated from the Colorado School of Mines in 1978 with a Bachelor
`
`12.
`
`of Science in Mineral Engineering Physics. I received a Master’s degree in
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`Applied Physics in 1979, and a Ph.D. in Applied Physics in 1983, both from the
`
`California Institute of Technology.
`
`B. Career History
`Upon completion of my Ph.D., I served as a Senior Research Scientist at
`
`13.
`
`General Motors Research Laboratories in Warren, Michigan.
`
` This role
`
`transitioned to that of a Staff Research Scientist in 1987, and I continued with
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`General Motors Research Laboratories until January 1989. In 1988, I also
`
`concurrently served as an Exchange Scientist at Hughes Research in Malibu,
`
`California. From 1989 to 1999, I was an Assistant Professor at Stanford University
`
`in the Department of Materials Science and Engineering. From 1993 to 1999, I
`
`also served as an Assistant Professor by Courtesy in the Department of Applied
`
`Physics at Stanford University. In 1995, I was also a Visiting Professor at the
`
`Max-Planck Institute in Stuttgart, Germany. From 1999 to 2004, I was the Chair
`
`of, and a Professor within, the Department of Materials Science and Engineering.
`
`In addition, since 2000, I have been a member of the Photon Science Department
`
`at the SLAC National Accelerator Laboratory. In 2006, I was a Visiting Professor
`
`at Chalmers University in Gothenburg, Sweden, and in 2015 at the Okinawa
`
`Institute of Science and Technology in Okinawa, Japan. As of 2011, I’ve been the
`
`Walter B. Reinhold Professor in the School of Engineering at Stanford. I’ve also
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`served as the Director of the Stanford Nano Shared Facilities since 2016, and
`
`continue in this role at present.
`
`14.
`
`Further detail on my education, work experience, and the cases in
`
`which I have previously given testimony in the past four years is contained in my
`
`CV and Resume Addendum attached as Exhibit 2002.
`
`15.
`
`In view of the foregoing, I believe I am qualified to provide expert
`
`opinions on the technology at issue in this investigation.
`
`III. Relevant Legal Principles and Guidelines
`16.
`I am not an attorney and will not offer opinions on the law. I do have,
`
`however, an understanding of various principles concerning validity that I have
`
`relied on to arrive at my stated conclusions in this report and its Appendices.
`
`17.
`
`I understand that in an inter partes review (IPR) proceeding, a petitioner
`
`has the burden of proving that any challenged claims are unpatentable by “a
`
`preponderance of the evidence.” I understand that under a preponderance of the
`
`evidence standard, a petitioner must show that a fact is more likely true than not.
`
`A. Anticipation
`It is my understanding that invalidation by “anticipation” only exists if
`
`18.
`
`a single prior art reference discloses each and every limitation of a claim at issue,
`
`either expressly or inherently. In other words, every limitation of a claim must be
`
`found in a single prior art reference for the reference to anticipate that claim. I also
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`understand that all elements of the claim must be disclosed in the single prior art
`
`reference as they are arranged in the claim. I further understand that to be
`
`considered anticipatory, the prior art reference must be enabling and must describe
`
`the patentee’s claimed invention sufficiently to have placed it in the possession of a
`
`person of ordinary skill in the field of invention.
`
`B. Obviousness
`I understand that to prove that a claimed invention is “obvious” based on
`
`19.
`
`an alleged prior art reference or a combination of such references, it must be shown
`
`that the combination was obvious to a person of ordinary skill in the art at the time
`
`the invention was made. It is my further understanding that the question of
`
`obviousness is to be determined based on the following factors:
`
`a. The scope and content of the prior art;
`
`b. The difference or differences between the subject matter of the
`
`claim and the prior art;
`
`c. The level of ordinary skill in the art (at the time of the invention)
`
`of the subject matter of the claim; and
`
`d. Any relevant objective factors (the “objective indicia”) indicating
`
`non-obviousness, as I discuss further below.
`
`20.
`
`I further understand that it is impermissible to use a hindsight
`
`reconstruction of references to reach the claimed invention without any reasonable
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`explanation as to how or why the references would be combined to produce the
`
`claimed invention.
`
`21.
`
`Moreover, I understand that a patent composed of several elements is not
`
`proved obvious merely by demonstrating that each of its elements was,
`
`independently, known in the prior art.
`
`22.
`
`I understand that certain objective indicia of non-obviousness or
`
`“secondary considerations” are relevant in determining whether or not an invention
`
`would have been obvious, and that evidence of such objective indicia can be the
`
`most probative evidence in the record. These objective indicia may include
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`commercial success enjoyed by products practicing the invention; licensing of the
`
`invention; long-felt but unsatisfied need for the invention; evidence of copying of
`
`the claimed invention; and/or industry praise.
`
`23.
`
`I understand that when a patentee can demonstrate industry praise of the
`
`invention, such praise weighs against an opinion that the same claimed invention
`
`would have been obvious because industry participants would not likely praise
`
`obvious advances in the art. I further understand that when a patentee can
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`demonstrate commercial success, usually shown by significant or escalating sales,
`
`and that the successful product embodies the invention disclosed and claimed in
`
`the patent, it is presumed that the commercial success is due to the patented
`
`invention. It is also my understanding that long-felt but unresolved need can weigh
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`in favor of the non-obviousness of an invention because the need would not have
`
`remained unresolved if the claimed solution had been obvious.
`
`24.
`
`I further understand that where patent claims recite a range, a patent
`
`holder can rebut a case of obviousness by showing the criticality of that range.
`
`This can be done, for example by showing that the claimed range is critical, yields
`
`some special or critical outcome, produces a difference in kind rather than degree,
`
`or achieves unexpected results.
`
`C. Level of Ordinary Skill in the Art
`When interpreting a patent, I understand that it is important to view the
`
`25.
`
`disclosure and claims of that patent from the level of ordinary skill in the relevant
`
`art at the time of the invention.
`
`26.
`
`I understand that Sony asserts that a Person of Ordinary Skill in the Art
`
`(“POSA”) as of the priority date of the ’256 Patent (August 3, 2000), would have
`
`had “(1) a bachelor’s degree in electrical engineering, mechanical engineering,
`
`physics, materials science, or chemistry (or a related field) plus two years of
`
`experience working with magnetic storage systems, magnetic recording media,
`
`magnetic materials and/or magnetic properties; (2) an advanced degree in one of the
`
`disciplines identified above (or a related field), either with emphasis in magnetic
`
`storage systems, magnetic recording media, magnetic materials and/or magnetic
`
`properties or equivalent experience working with magnetic storage systems,
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`magnetic recording media, magnetic materials and/or magnetic properties; or (3)
`
`equivalent work experience.” See Paper No. 2 (“Pet.”) at 11.
`
`27.
`
`Based on this description, I possessed at least ordinary skill in the art
`
`around the time of the invention of the ’256 Patent. By that date, I had a Ph.D. in
`
`Applied Physics awarded in 1983 and had worked as a scientist at General Motors
`
`(5 years), Hughes Research Laboratory (1 year) and Stanford University 11 years).
`
`I had published dozens of research papers, including many on the subject of
`
`magnetic materials. Further, I was involved in magnetic recording research
`
`consortium and collaborated with researchers working in the magnetic recording
`
`industry.
`
`28.
`
`Although I reserve the right to propose an alternative level of skill in the
`
`art, for the purposes of this declaration, I have applied Sony’s proposed level of
`
`skill. Under Sony’s definition I possessed at least ordinary skill in the art by
`
`August 2000, the time of the inventions of the ’256 Patent.
`
`29.
`
`Even under Petitioner’s definition, Petitioner has failed to demonstrate
`
`that the Challenged Claims of the ’256 Patent are invalid.
`
`IV. The ’256 Patent
`A. Technology Background
`“Magnetic recording media are widely employed as recording tapes,
`
`30.
`
`video tapes, floppy disks, and the like.” ’256 Patent 1:20-22. Magnetic recording
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`media are divided into tape and disk media, wherein both have a multilayered
`
`configuration in which a magnetic layer is formed over a nonmagnetic support. Id.
`
`at 1:23-25.
`
`31.
`
`The ’256 Patent explains that in recent years (leading up to the time of
`
`the invention of the ’256 Patent, i.e., August 3, 2000), “the magnetic layer has
`
`become increasingly thinner to enhance the output of the magnetic layer. Thus,
`
`magnetic recording media have been developed in which an intermediate layer
`
`(lower layer) is provided between the nonmagnetic support and magnetic layer.”
`
`’256, 1:37-41.
`
`32.
`
`Magnetic recording media, at the time of the invention, had to satisfy
`
`many performance related demands. For example, according to the ‘256 Patent,
`
`higher sound production was required of audio tapes, good original image
`
`reproduction was required from video tapes, and high durability without data loss
`
`was required of back up tapes. Id. at 1:50-55. The ’256 Patent further explains
`
`that recording capacity was increased through shortening of the wavelength and
`
`narrowing of the track width, which increases recording density. Id. at 1:64-67.
`
`Cartridge capacity was also increased by thinning the tape, which allowed more
`
`tape to be packed into a single cartridge. Id. at 2:1-4. However, as track width
`
`narrowed and recording density increased, the importance of precisely positioning
`
`the recording and reproducing head over the media increased. Id. at 2:15-20.
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`Guides and guide flanges were added to drives to ensure stable running of the tape.
`
`Id. at 2:19-27.
`
`33.
`
`But the ’256 Patent teaches that “when the tape running position is
`
`regulated at a position where the edge of the tape rubs heavily, the contact pressure
`
`during running between the edge of the tape and the guide flange increases,” and
`
`scratches are imparted on the guide flange. Id. at 2:28-33. The scratches, in turn,
`
`damage the tape edge and scrape off the magnetic layer, intermediate layer, and/or
`
`the backcoat, causing them to fall off into the drive. Id. at 2:33-35.
`
`34.
`
`The inventors of the ’256 Patent found that “deformation of the tape edge
`
`was caused by repeat contact between the tape guide flange and the tape edge
`
`during repeat running, with the edge of the magnetic layer, support, and backcoat
`
`layer being scraped a large number of times, resulting in plastic deformation”. Id.
`
`4:10-15. In particular, the plastic deformation of the support depended on the
`
`number of filler particles that were added to the medium. Id. 4:15-21. Sliding
`
`contact of the tape edge with the guide flange subjected the filler particles to a
`
`force in the running direction of the medium, moving the particles on the support
`
`and causing plastic deformation. Id. Counterintuitively, the inventors of the ’256
`
`Patent found that the fewer filler particles that are added to the nonmagnetic
`
`support, the more deformation of the edge of the nonmagnetic support could be
`
`prevented. Id. at 4:25-28. However, when the quantity of filler added was
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`excessively small, the nonmagnetic support and the magnetic recording medium
`
`were compromised. Id. at 4:28-31.
`
`35.
`
`The ’256 Patent claims, among other things, a magnetic recording
`
`medium comprising a nonmagnetic support having inorganic powder particles of a
`
`limited size and quantity, such as having a mean primary particle diameter in the
`
`range of 40 to 200 nm and wherein the quantity of such particles in the cross-
`
`section of the nonmagnetic support is in the range of 10 to 200 per 100 μm2. Id. at
`
`claim 1. The ’256 Patent further claims an overall thickness of the magnetic
`
`recording medium that is 8 μm or less, and a coercivity of the magnetic layer is in
`
`the range from 159-239 kA/m. Id.
`
`B. Summary of the Claims
`I understand the Challenged Claims are claims 1-6 of the ’256 Patent.
`
`36.
`
`Pet. at 4. The claims are copied below.
`
`37.
`
`Claim 1 recites:
`
`A magnetic recording medium having on
`one surface of a nonmagnetic support a lower layer
`comprising an inorganic powder and a binder and
`an
`upper magnetic
`layer
`comprising
`a
`ferromagnetic powder and a binder in that order,
`and having on the other surface thereof a backcoat
`layer, wherein:
`
`comprises
`support
`nonmagnetic
`said
`inorganic powder particles with a mean primary
`particle diameter in a range of from 40 to 200 nm;
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`the number of particles of said inorganic
`powder in the cross-section of said nonmagnetic
`support is in a range of from 10 to 200/100 μm2,
`
`said magnetic layer exhibits a coercivity in a
`range of from 159 to 239 kA/m; and
`
`the overall thickness is equal to or less than
`
`8 μm.
`
`38.
`
`Claim 2 recites:
`
`The magnetic recording medium of claim 1,
`wherein said nonmagnetic support comprises
`inorganic powder particles with a mean primary
`particle diameter in a range of from 40 to 180 nm.
`
`39.
`
`Claim 3 recites:
`
`The magnetic recording medium of claim 1,
`wherein the number of particles of said inorganic
`powder in the cross-section of said nonmagnetic
`support is in a range of from 10 to 180/100 μm2.
`
`40.
`
`Claim 4 recites:
`
`The magnetic recording medium of claim 1,
`wherein said magnetic layer exhibits a coercivity
`in a range of from 191 to 239 kA/m.
`
`41.
`
`Claim 5 recites:
`
`The magnetic recording medium of claim 1,
`wherein the number of particles of said inorganic
`powder in the cross-section of said nonmagnetic
`support is in a range of from 20 to 200/100 μm2.
`
`42.
`
`Claim 6 recites:
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`The magnetic recording medium of claim 1,
`wherein the number of particles of said inorganic
`powder in the cross-section of said nonmagnetic
`support is in a range of from 30 to 180/100 μm2.
`
`43.
`
`The Challenged Claims recite a specific combination of features that was
`
`new and non-obvious at the time of the invention.
`
`C. Claim Construction
`I have been informed and understand that “claim construction” is the
`
`44.
`
`process of determining a patent claim’s meaning. I also have been informed and
`
`understand that during inter partes review proceedings, a claim term is given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`it appears. Claim terms are given their ordinary and customary meaning as would
`
`be understood by a person having ordinary skill in the art at the time of the
`
`invention and in the context of the entire patent disclosure.
`
`45.
`
`Strictly for the purposes of this preliminary response, I agree with and
`
`have applied Petitioner’s proposed claim constructions. I reserve the right to offer
`
`constructions for additional terms, should those terms become relevant to either
`
`this or other proceedings. I also reserve the right to offer claim constructions in
`
`other proceedings, including district court litigation, which may differ from those
`
`presented in this Declaration. Even under its proposed constructions, Petitioner
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`and Dr. Jones have failed to demonstrate a reasonable likelihood that any of the
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`challenged claims are unpatentable.
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`V.
`
`46.
`
`Overview of the Cited Art
`A.
`U.S. Patent No. 5,804,283 (“Inaba-283”) (Ex. 1005)
`Inaba-283 was considered by
`the Patent Office during original
`
`prosecution of the ’265 Patent. See Ex. 1001 (’256 Patent).
`
`47.
`
`Inaba-283 discloses a magnetic recording medium having certain
`
`characteristics for a specific goal: the development of a metal particle (MP) tape
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`that can be used with equipment designed for a metal evaporated (ME) tape. See
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`Inaba-283 at 4:28-41.
`
`48.
`
`Inaba-283 explains that for an MP tape to work with ME read heads, the
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`MP tape must satisfy certain criteria, for example, it should have a magnetic layer
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`surface that is softer than conventional MP tapes. Id. at 4:38-41. This is to avoid
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`damaging the ME head by smoothening. Id. at 4:31-37. ME heads must remain
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`rough because they are designed to make contact with the relatively stiff surface of
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`ME tapes during reading and writing. Id. at 4:28-31. Therefore, if the MP tape
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`were too hard, it could permanently damage the ME heads.
`
`49.
`
`Unlike Inaba-283, the ’256 Patent is directed to a particulate magnetic
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`recording medium, without concern for the various issues associated with MP tape
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`compatibility with ME systems. See ’256 Patent at 1:8-13. Thus, the design and
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`development considerations of Inaba-283, including any limitations on roughness
`
`of the substrate, differ from those of the ’256 Patent. A POSA, when designing a
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`Page 16
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`FUJIFILM, Exh. 2001, p. 18
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`magnetic recording medium often has to balance competing requirements, would
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`not account for or attempt to include features not applicable to the current design
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`goals.
`
`50.
`
`Inaba-283 sets a surface roughness value for the nonmagnetic support of
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`0.5 to 7.0 nm for the side on which the lower non-magnetic layer is provided.
`
`Inaba-283 at 8:36-40. Although Inaba-283 states that “[t]he shape of the surface
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`roughness may be freely controlled by the size and amount of filler to be
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`incorporated in the support as necessary,” id. at 22:33-35, Inaba-283 does not
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`disclose the amount or size of filler necessary to realize a surface roughness in this
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`range.
`
`51.
`
`By contrast, the ’256 Patent seeks to realize a certain mean particle
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`diameter and density (or amount per unit area) in the cross section of the
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`nonmagnetic support, not for the purpose of controlling surface roughness, but
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`rather to, among other things, prevent edge damage and plastic deformation of the
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`support—a problem and solution uniquely connected by the discovery of Fujifilm
`
`engineers, as described in the ’256 Patent. See e.g., ’256 Patent at 3:45-56.
`
`52.
`
`Inaba-283 does not disclose or suggest any features of particles in the
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`support layer, let alone “said nonmagnetic support comprises inorganic powder
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`particles with a mean primary particle diameter in a range of from 40 to 200 nm,”
`
`or “the number of particles of said inorganic powder in the cross-section of said
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`Page 17
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`FUJIFILM, Exh. 2001, p. 19
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`nonmagnetic support is in a range of from 10 to 200/100 µm2” as recited in claim
`
`1.
`
`53.
`
`B.
`
`Japanese Pat. App. Pub. H6-150286 (“Honda”) (Ex. 1006)
`Honda is directed to vapor-deposition thin film tapes that avoid
`
`manufacturing defects and record drop out. See Honda [0004]-[0007]. Vapor
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`deposition films differ from particulate tapes in multiple ways. Vapor deposition
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`films are made by vaporizing material in a vacuum and having it deposit on a
`
`substrate, forming a film, whereas particulate tapes are made by dispersing a slurry
`
`onto a tape. See Honda at [0002]. Vapor deposition films have different physical
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`characteristics from particulate media because of the different manufacturing
`
`methods.
`
`54.
`
`Honda discloses that in vapor deposition films, the surface roughness of
`
`the substrate affects the roughness of the vapor-deposited magnetic layer. See
`
`Honda at [0002]. For this reason, Honda discloses that the base film desirably had
`
`a relative roughness of 0.0045 µm (or 4.5 nm). Id. Roughness of the magnetic
`
`layer can impact the recording capabilities of the medium, by affecting bit dropout
`
`and noise, for example.
`
`55.
`
`Honda discloses that it was desirable that the back surface be relatively
`
`rough, in particular that the roughness of the back surface should be between 7nm
`
`– 200nm. Id. at [0009]. The roughness of the back layer can affect the medium as
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`it winds into a roll, with the back of one part of the medium wrapping over the top
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`of another part. To achieve roughness that differs on the front surface from the
`
`back surface, Honda discloses the use of a dual-layer substrate, where the front
`
`surface uses smaller size particles at a lower density and the back surface makes
`
`use of larger particles at a higher density. Id. at [0022]–[0023]. Thus, Honda
`
`discloses a dual layer substrate specifically to achieve a smoother front surface of
`
`the substrate (the surface on which the magnetic layer will be applied) and a
`
`rougher back surface.
`
`56.
`
`Honda discusses the use of particles to affect the surface roughness of the
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`front and back layers. Honda at [0010]-[0011]. Honda describes impar