Regents of the University of Minnesota

Patent Trials and Appeals Board

Apr 14, 2021

IPR2017-01068 (P.T.A.B. Apr. 14, 2021)

Trials@uspto.gov Paper 58
571-272-7822 Entered: April 14, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.,
Petitioner,

v.

REGENTS OF THE UNIVERSITY OF MINNESOTA,
Patent Owner.

____________

IPR2017-01068
Patent 5,859,601 B2
____________

Before JENNIFER S. BISK, ROBERT J. WEINSCHENK, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BISK, Administrative Patent Judge.

FINAL WRITTEN DECISION
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
LSI Corporation and Avago Technologies U.S., Inc. (“Petitioner”)
filed a Petition requesting an inter partes review of claims 1, 2, 8, 10, 12–17,
and 21 of U.S. Patent No. 5,859,601 B2 (Ex. 1001, “the ’601 patent”).
Paper 1 (“Pet.”). Regents of the University of Minnesota (“Patent Owner”),
identified as the owner of and real party in interest to the ’601 patent
(Paper 3, 2), did not file a Preliminary Response. Paper 34 (Patent Owner’s
Waiver of Preliminary Response). On February 14, 2020, Patent Owner
filed a statutory disclaimer of claims 1–12, 15, 16, and 21. Ex. 2004. We
instituted this review of Petitioner’s challenges to claims 13, 14, and 17, the
only remaining challenged claims of the ’601 patent. Paper 35 (“Inst.
Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response. Paper 41 (“PO Resp.”). Petitioner filed a Reply. Paper 48
(“Reply”).1 Patent Owner also filed a Sur-Reply. Paper 51 (“Sur-Reply”).
A transcript of the oral hearing held on January 19, 2021, has been entered
into the record as Paper 57 (“Tr.”).
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, Petitioner has demonstrated by a preponderance
of the evidence that claim 13 of the ’601 patent is unpatentable, but has not
demonstrated by a preponderance of the evidence that claims 14 and 17 are
unpatentable.

1 Petitioner filed two versions of the Reply Brief, a confidential version
(Paper 48), and a redacted version available to the public (Paper 46). For
purposes of this Decision, we refer to the public version of the brief.
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II. BACKGROUND
A. Related Matters
The parties indicate that the ’601 patent is involved in litigation,
Regents of the University of Minnesota v. LSI Corp., No. 0:16-cv-02891-
WMW-SER (D. Minn).2 Pet. 69; Paper 3, 2.
B. The ’601 Patent
The ’601 patent, titled “Method and Apparatus for Implementing
Maximum Transition Run Codes,” issued January 12, 1999. Ex. 1001,
codes (45), (54). The ’601 patent relates generally to “a channel coding
technique to improve data storage devices such as magnetic computer disk
drives and professional and consumer tape recorders.” Id. at 2:40–43. In
particular, the ’601 patent describes using maximum transition-run (“MTR”)
coding to eliminate the storage of certain binary data patterns determined to
be error-prone. Id. at 2:43–47. According to the ’601 patent, using MTR
coding significantly improves the final bit error rate. Id. at 2:47–49.
The ’601 patent describes MTR coding as “impos[ing] a limit on the
maximum number of consecutive transitions that can occur in the written
magnetization pattern in magnetic recording.” Id. at 2:59–61. In particular,
performance is improved most significantly “when the maximum number of
consecutive transitions [referred to as ‘constraint length j’] is limited to
two.” Id. at 2:62–65.
In addition to MTR coding, the ’601 patent describes prior art coding
methods, such as Runlength limited (“RLL”) codes, which “impose a (d,k)

2 On February 7, 2018, the identified case was transferred to the Northern
District of California as No. 5:18-cv-00821-EJD (N.D. Cal.).
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constraint on the recorded data sequence.” Id. at 1:21–24. In describing
RLL codes, the ’601 patent describes two commonly used formats for
recording binary data: (1) Non-Return-to-Zero (“NRZ”), in which “the
binary ‘1’ represents a positive level in the magnetization waveform and the
binary ‘0’ [represents a] negative level in the same waveform”; and
(2) Non-Return-to-Zero-Inversion (“NRZI”), in which a 1 represents a
magnetic transition and a 0 represents no transition. Id. at 1:24–36. For
NRZ formatting, d+1 defines the minimum number of consecutive like
symbols and k+1 defines the maximum number of consecutive like symbols
in the sequence. Id. at 1:24–29. For NRZI formatting, “d and k are the
minimum and maximum number of consecutive 0’s between any two 1’s,
respectively.” Id. at 1:29–36.
According to the ’601 patent, RLL (1,k) codes, which do not allow
any consecutive transitions in an NRZ format, eliminate some patterns
which cause the most errors. Id. at 3:53–4:17. However, this coding allows
for fewer patterns overall, resulting in a lower code rate and increasing
inefficiency. Id. at 4:18–24. MTR coding, on the other hand, “eliminate[s]
all sequences with three or more consecutive transitions, but allow[s] the
dibit pattern to survive,” which eliminates error-prone patterns with less
inefficiency than a RLL (1,k) code. Id. at 4:24–30. MTR parameters are
written as (j;k), where j is the MTR constraint described above and “k is the
usual RLL constraint.” Id. at 4:46–48.
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C. Illustrative Claim
Independent claim 13 is illustrative of the subject matter at issue and
reads as follows:
13. A method for encoding m-bit binary datawords into n-bit
binary codewords in a recorded waveform, where m and n are
preselected positive integers such that n is greater than m,
comprising the steps of:
receiving binary datawords; and
producing sequences of n-bit codewords;
imposing a pair of constraints (j;k) on the encoded
waveform;
generating no more than j consecutive transitions of said
sequence in the recorded waveform such that j≥2; and
generating no more than k consecutive sample periods of
said sequences without a transition in the recorded
waveform.
Ex. 1001, 10:46–61.
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D. Proposed Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability, each based
on 35 U.S.C. § 102:3
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
13, 14, 17 102 Okada4
13, 14, 17 102 Tsang5
Pet. 2. Petitioner also relies on the Declaration of Emina Soljanin, Ph.D.
Ex. 1010 (“Soljanin Decl.”).
Patent Owner disputes each of these grounds of unpatentability and
relies on the Declarations of Jaekyun Moon, Ph.D. (Ex. 2016), the first
named inventor of the ’601 patent, and Steven W. McLaughlin, Ph.D. Ex.
2017 (“McLaughlin Decl.”) as supporting its position. PO Resp. 5.
III. ANALYSIS
A. Level of Skill in the Art
The level of skill in the art is a factual determination. See Al-Site
Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The level of skill in
the art informs the claim construction analysis. See Teva Pharm. USA, Inc.
v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (explaining that claim

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–87 (2011), amended 35 U.S.C. § 102, effective March 16,
2013. Because the application from which the ’601 patent issued was filed
before March 16, 2013, the pre-AIA version of § 102 applies.
4 U.S. 5,392,270 (issued Feb. 21, 1995) (Ex. 1007).
5 U.S. 5,731,768 (filed Jan. 31, 1996; issued March 24, 1998) (Ex. 1009).
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construction seeks the meaning “a skilled artisan would ascribe” to the claim
term “in the context of the specific patent claim” (emphasis omitted)).
Petitioner asserts that a person of ordinary skill in the art “would have
had at least an undergraduate degree in electrical engineering or similar
field, and three years of industry experience in the field of read channel
technology.” Pet. 12 (citing Soljanin Decl. ¶¶ 21–26).
Patent Owner does not address Petitioner’s proposed level of skill but,
similarly, asserts that a person of ordinary skill would have “at least a
bachelor’s degree in electrical engineering” and “several years (three or
more) of work experience in the industry.” PO Resp. 35. Patent Owner
adds that a person of ordinary skill in the art would specialize “in data
coding and detection techniques used in connection with reading data from
various storage media such as hard drives and optical media” and “would
have studied and been familiar with traditional data coding and detection
techniques and devices including RLL codes, peak detectors, and sequence
detectors, such as Viterbi detectors.” Id. (citing McLaughlin Decl. ¶ 41).
Patent Owner does not further address these additional specialization and
knowledge requirements or explain how it differs from Petitioner’s proposal
of “industry experience in the field of read channel technology.” Id.
Moreover, Patent Owner does not contend that Petitioner’s proposed level of
skill, which we adopted in the Institution Decision, is incorrect or
incomplete. Id.
We adopt the definition that a person of ordinary skill in the art would
have had at least an undergraduate degree in electrical engineering or similar
field and at least three years of relevant industry experience in the field of
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read channel technology. This level is consistent with the level reflected by
the references themselves.
B. Dr. Soljanin’s Testimony
Patent Owner did not file any motions to exclude evidence. Tr.
50:10–13. However, Patent Owner makes several arguments asserting that
Dr. Soljanin’s testimony (Exhibit 1010) should not be given any weight. PO
Resp. 2–3; 21.6 First, according to Patent Owner, because Dr. Soljanin
opined, in the related district court proceeding, that several terms in the
challenged claims are indefinite, she “can hardly now find those elements of
the Challenged Claims in any prior art reference.” Id. (citing Ex. 2007
¶¶ 37–59), 30–31.
Petitioner argues that Dr. Soljanin’s testimony in the related case did
not address the indefiniteness of the term “transition” and, therefore that
testimony is not relevant to this proceeding. Reply 11. Moreover,
indefiniteness is not an issue that can be raised in an IPR. Id. We agree with
Petitioner that Dr. Soljanin’s testimony regarding indefiniteness of claim
terms not addressed in the briefing in this case is not relevant to these
proceedings.
Second, Patent Owner argues that Dr. Soljanin is not properly familiar
with optical recording physics, the subject of Okada. PO Resp. 3, 33; see
also PO Resp. 21–24 (discussing Dr. Soljanin’s testimony regarding optical
recording systems).

6 Patent Owner also argues that certain of Petitioner’s filed exhibits are
“inadmissible.” Sur-Reply 9–12 (citing Exs. 1014–1021). Because we do
not rely on those exhibits, we do not address whether they are admissible or
should be given any weight.
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Petitioner explains that Dr. Soljanin “is an accomplished professor
and author, a Bell Labs alumna, and an elected IEEE Fellow for
‘contributions to coding theory and coding themes for transmission and
storage systems’” and is, thus, “eminently qualified to opine” on the
meaning of the claim language at issue here. Reply 10 (citing Soljanin Decl.
¶¶ 5–17). According to Petitioner, it is irrelevant that Dr. Soljanin is
unfamiliar with optical recording physics because the claims, on their face,
are directed to encoding m-bit datawords into n-bit codewords, and do not
mention the specific recording media. Id. at 10–11.
We agree with Petitioner and decline to determine that all of Dr.
Soljanin’s testimony should be disregarded based on any lack of expertise in
optical recording systems. Instead, we evaluate the persuasive value of Dr.
Soljanin’s testimony below in the context of analyzing the arguments and
evidence regarding each limitation in turn.
Third, Patent Owner asserts that Dr. Soljanin “contradicted herself on
whether Okada discloses the required j constraint of the Challenged Claims.”
PO Resp. 3; 33. Dr. Soljanin’s testimony on the recited j-constraint
limitation, and the weight it should be given, is evaluated below in the
context of analyzing the arguments and evidence regarding that limitation.
C. Claim Construction
The ’601 patent is expired (see Pet. 12; PO Resp. 35 n.8), so its claims
are construed in the same manner used in a civil action under 35 U.S.C.
§ 282(b). Thus, the claims are construed in accordance with the ordinary
and customary meaning of such claim as understood by one of ordinary skill
in the art and the prosecution history pertaining to the patent. Phillips v.
AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only
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terms that are in controversy need to be construed, and then only to the
extent necessary to resolve the controversy. Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
Petitioner does not propose explicit constructions for any terms of the
challenged claims, and indicates that “[u]n[l]ess otherwise addressed herein,
no express construction of any additional term is believed to be needed to
resolve the challenges herein.” Pet. 17. In our Institution Decision, we
determined that no express construction of any terms of the challenged
claims is necessary. Inst. Dec. 6–7. At this stage of the proceeding, we
determine that it is necessary to address the parties’ arguments regarding the
term “transition.”
1. “transition”
Claim 13 recites “generating no more than j consecutive transitions of
said sequence in the recorded waveform such that j≥2” (“the j-constraint
limitation”) and “generating no more than k consecutive sample periods of
said sequences without a transition in the record waveform” (“the k-
constraint limitation”). Patent Owner asserts that the Board should construe
the term “transition,” as recited by claim 13, to mean “a reversal in the
magnetic orientation of adjacent bit regions along a recording track of a
magnetic recording medium” (Patent Owner’s “magnetic construction”). PO
Resp. 36. Patent Owner adds that “[e]ven if ‘transitions’ is not construed to
mean magnetic transitions, at a minimum it should be construed to mean ‘a
change from one state or stage to another’” (Patent Owner’s “alternative
construction”). Id. at 39.
Petitioner argues that the record does not support Patent Owner’s
magnetic construction. Reply 2–11. Further, Petitioner asserts that Patent
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Owner’s alternative construction does not provide “any more clarity than the
word ‘transition’ standing alone.” Id. at 12.
a. Patent Owner’s magnetic construction
Patent Owner asserts that the ’601 patent “stress[es] that the [recited]
transitions are magnetic transitions.” PO Resp. 36; Sur-Reply 4–6. In
particular, Patent Owner points to language in the ’601 patent’s summary
that the invention relates to magnetic computer disk drives and that “the
MTR code imposes a limit on the maximum number of consecutive
transitions that can occur in the written magnetization pattern in magnetic
recording.” PO Resp. 36–37 (quoting Ex. 1001, 2:40–42, 2:59–61
(emphasis added by Patent Owner)). Dr. McLaughlin testifies that this
language would lead a person of ordinary skill in the art to conclude that the
claimed transitions are limited to “magnetic transitions in magnetic
recording.” Id. at 37; McLaughlin Decl. ¶ 49.
Patent Owner further argues that the claim language itself supports a
construction limited to magnetic transitions, pointing to the fact that
dependent claims 16 and 17, which indirectly depend from claim 13, recite
both NRZI (claim 16) and NRZ (claim 17) recording formats, and, thus,
claim 13 must cover both formats. Id. at 38. Dr. McLaughlin testifies that
because claim 13 covers both NRZI and NRZ recording formats, the use of
the term “transitions” must not be “limited to particular bit values used to
record a transition in one or both of these recording formats,” but instead a
person skilled in the art would understand “that the important concept is the
effect on the medium, i.e., whether there is a reversal in the magnetic
polarities in adjacent bit regions.” McLaughlin Decl. ¶ 50.
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According to Patent Owner, “a skilled person in the field of digital
data storage would understand the term ‘transitions’ to mean magnetic
polarity changes on the recording medium.” PO Resp. 38 (citing
McLaughlin Decl. ¶¶ 43–48); Ex. 2026, 1344; Ex. 2027, 45, 199; Ex. 2028,
207–208. Patent Owner also asserts that the magnetic construction is
“consistent with the non-technical, ordinary meaning of ‘transition,’ which is
‘a passage from one state, stage, subject or place to another; change.” PO
Resp. 39 (citing Ex. 2029, 1254; Ex. 3031, 1287).
“[A] claim construction analysis must begin and remain centered on
the claim language itself . . . .” Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). The disputed
claim language does not include any reference to the type of media on which
the n-bit binary codewords are recorded. The claim’s focus, instead, is on
how the n-bit codewords are generated. Notably, the patentee could have
included language specifying that the codewords be recorded on magnetic
media—but instead used the very general term “transition.”
Given the broad nature of the claim language, we do not limit further
the scope of the claim merely because the Specification discusses magnetic
media as a type of storage device that may be used with the invention. See
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994) (“Though understanding the claim language may be
aided by the explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the claim. For
example, a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
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embodiment.”)). The language of claims 13, 14, and 17 is broader than the
embodiment Patent Owner proffers as support for its proposed construction.
Moreover, Patent Owner points to nothing in the claim language, including
the dependent claims, which limits the claims to magnetic media.
Moreover, the bulk of the Specification does not refer to magnetic
recording. See Ex. 1001, code (54) (“Method and Apparatus for
Implementing Maximum Transition Run Codes”), code (57) (describing
“storage systems,” but not referring to magnetic devices). We do not agree
with Patent Owner’s assertion that “the intrinsic evidence refers exclusively
to magnetic recording.” Sur-Reply 5. To the contrary, the Specification
makes clear that the invention is not limited to magnetic media. See, e.g.,
Ex. 1001, 2:40–42 (“The present invention relates to a channel coding
technique to improve data storage device such as magnetic computer disk
drives.”), 3:49–52 (“The invention is advantageously used in storage and
similar systems operating at high data densities.”). And the Specification
specifically discusses optical data storage. Ex. 1001, 1:61–66 (“In optical
data storage, a special type of RLL constraint is applied to guarantee the
minimum size of the written mark on the medium.”). The two isolated
sentences pointed to by Patent Owner referring to magnetic recording do not
outweigh the rest of the Specification’s focus on all types of storage devices
such that the claims are limited to magnetic recording devices. PO Resp.
36–37 (citing Ex. 1001, 2:59–61); Sur-Reply 4–5 (citing Ex. 1001, 2:40–62,
2:65–3:1, 4:31–34, 4:1–4, 7:30–40).
Petitioner also points to the language of claim 17, which depends
indirectly from claim 13, as refuting Patent Owner’s magnetic construction.
Reply 3. Claim 17 recites “the binary sequences produced by combining
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codewords have no more than one of j consecutive transitions from 0 to 1
and from 1 to 0 . . . when used in conjunction with the NRZ recording
format.” Ex. 1001, 11:1–6. According to Petitioner, Patent Owner’s
magnetic construction is narrower than the transitions recited in claim 17.
Reply 3. We agree with Petitioner that the language of claim 17 does not
make sense if the term “transition” in claim 13 is given Patent Owner’s
magnetic construction. Patent Owner’s declarants seem to agree. See
Ex. 1035, 104:15–22 (Dr. McLaughlin stating that the word “transition” in
claim 13 cannot mean “transitions from 0 to 1 and from 1 to 0 in a binary
sequence”); Ex. 1034, 87:18–88:4 (Dr. Moon stating that in claim 13 the
term “transition” does not include “a change from 0 to 1 in a binary
sequence”).
Patent Owner argues that Petitioner reads the language of claim 17 in
isolation, without regard to the Specification. Sur-Reply 6. According to
Patent Owner, a transition in a waveform, as recited in claim 13, “is
reflected by a reversal of the magnetic orientation of adjacent bit regions
along [a] recording track, not 0s and 1s.” Id. (citing McLaughlin Decl. ¶¶ 7–
10). We do not find this argument persuasive as it relies on Dr.
McLaughlin’s testimony discussing the basics of hard drive technology (see
McLaughlin Decl. ¶¶ 7–10), which Patent Owner does not tie to any
particular claim language. As explained above, nothing in the claim
language limits the recorded waveform to any particular type of media.
As for claim 17’s recitation of “transitions from 0 to 1 and from 1 to
0,” Patent Owner argues that it “limits the recording format to NRZ, where
the ‘binary “1” represents a positive level in the magnetization waveform
and the binary “0” negative level in the same waveform,’ such that a 01 or
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10 corresponds to a reversal in the magnetic orientation of bit regions on the
recording track.” Id. at 7 (citing McLaughlin Decl. ¶¶ 7–12; Ex. 1001, 1:24–
27. Again, we do not agree that the claim language is so limited. Patent
Owner again points, as support for this assertion, to testimony by Dr.
McLaughlin discussing the basics of hard drive technology (see McLaughlin
Decl. ¶¶ 7–12). Patent Owner also points to a discussion in the background
of the ’601 patent describing the NRZ recording format in the context of
magnetic recording. Id. (citing Ex. 1001, 1:24–27). Importantly, however,
the ’601 patent points out that “modulation codes, are mappings of data bits
into symbols that are either transmitted in a communication system or
recorded onto a medium in a storage device,” not limiting such storage
devices to those using magnetic recording. Ex. 1001, 1:16–19. The fact that
the ’601 patent then goes on to explain RLL codes, including NRZ and
NRZI formats, in the context of magnetic recording systems does not
indicate that the invention is limited to such systems. To the contrary, later
in the same section, the ’601 patent notes that “[i]n optical data storage, a
special type of RLL constraint is applied to guarantee the minimum size of
the written mark on the medium” and the section ends with a reference to an
article on coding in “Proceedings of the International Society for Optical
Engineering.” Ex. 1001, 1:61–65, 2:33–37.
We are also not persuaded by Dr. McLaughlin’s testimony that a
person of ordinary skill in the art would have read the ’601 patent to be
limited to magnetic transitions in magnetic recording. See McLaughlin
Decl. ¶ 49. Dr. McLaughlin bases this conclusion on the previously
discussed language in the ’601 patent describing magnetic media as one type
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of device that may be used with the invention. Id. (citing Ex. 1001, 1:40–42,
2:59–61).
Patent Owner’s reliance on extrinsic evidence is similarly
unpersuasive. Dr. McLaughlin refers to several books and academic papers
that use the term “transition” as limited to magnetic polarity changes on the
recording medium. McLaughlin Decl. ¶¶ 43–48; PO Resp. 38. However, as
pointed out by Petitioner (Reply 8–9), all of these publications are
specifically directed to magnetic storage. See Ex. 2026 (titled “Recording
Codes for Digital Magnetic Storage”); Ex. 2027 (titled “Magnetic Disk
Drive Technology”); Ex. 2028 (titled “Theory of Magnetic Recording”).
These publications, therefore, provide little, if any, evidence of how a person
of ordinary skill in the art would understand the term “transition” in the
context of the ’601 patent, which applies to storage systems generally, and is
not limited to magnetic storage systems. Instead, we agree with Dr. Soljanin
that the term “transition” is very general and may have different meanings
depending on context. See Ex. 2011, 55:21–56:11; see also Ex. 2029, 1254
(dictionary definition “passage from one state, stage, subject, or place to
another”); Ex. 2031, 1287 (dictionary definition “[t]he process or an instance
of changing from one form, state, activity, or place to another”).
Accordingly, we do not adopt Patent Owner’s proposed construction
of transition as recited by claims 13, 14, and 17 to be a reversal in the
magnetic orientation of adjacent bit regions along a recording track of a
magnetic recording medium.
b. Patent Owner’s alternative construction
Patent Owner asserts, as an alternative, that the term “transition” at
least means “a change from one state or stage to another.” PO Resp. 39.
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Although this language is broad and does not explicitly refer to physical
changes of a recording medium, Patent Owner apparently interprets this
definition to be limited to “an actual change in state of the recording
medium.” See id. at 40 (explaining that the Board should reject Petitioner’s
constructions because “the mere label used (a ‘1’ or a ‘0-1’) does not reflect
an actual change in state of the recording medium that the detector
subsequently detects to read the written data”). Patent Owner relies on the
non-technical dictionary definitions discussed above as supporting this
construction. Id. at 39 (citing Ex. 2029, 1254; Ex. 2031, 1287).
Petitioner argues that Patent Owner “fails to explain how its
reformulation of [the dictionary] definition provides any more clarity than
the word ‘transition’ standing alone.” Reply 12. Petitioner adds that there is
no support in either the intrinsic record or the relied upon dictionary
definitions for a construction requiring “an actual change in state of the
recording medium.” Id. Thus, Petitioner states that the Board should reject
this construction and find that “one of ordinary skill in the art would
understand ‘transition’ without formal construction.” Id. Moreover,
Petitioner asserts that “transition” encompasses transitions in any binary
system. Tr. 5:10–14.
We agree with Petitioner that Patent Owner’s articulation of this
alternate construction as “a change from one state or stage to another” does
not illuminate further the plain and ordinary definition of the term
“transition.” See Ex. 2029, 1254; Ex. 2031, 1287. Moreover, without any
supporting intrinsic or extrinsic evidence, we do not adopt Patent Owner’s
implied limitation requiring that the term “transition” requires “an actual
change in state of the recording medium.” See PO Resp. 39 (citing Ex.
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2029, 1254 (broad definition of the term “transition” unrelated to the
recording medium); Ex. 2031, 1287 (same); Soljanin Decl. ¶¶ 63–64 (Dr.
Soljanin stating that she has considered the claim terms, specification, and
prosecution history, and is familiar with the relevant scientific principles and
the state of the art); Ex. 2011, 57:5–6 (Dr. Soljanin stating that “a transition
generally, . . . has to be some kind of a change”).
c. Petitioner’s construction
As mentioned above, the Petition did not propose explicit
constructions for any terms of the challenged claims, including the term
“transition.” Pet. 17.
Patent Owner asserts that Petitioner changed its implied construction
of the term “transition” between the filing of Dr. Soljanin’s declaration and
her deposition. PO Resp. 31–32, 40; Sur-Reply 3–4. According to Patent
Owner, in the declaration, Dr. Soljanin applied a construction of “transition”
as a “1,” but on cross-examination changed to a “0-to-1 and 1-to-0
construction.” PO Resp. 40; see also PO Resp. 31–32 (stating that in her
declaration Dr. Soljanin asserted that “a ‘1’ in a NRZI sequence is a
transition in a recorded waveform”); 32 (stating that on cross-examination,
Dr. Soljanin “testified that ‘transition’ as used in the Challenged Claims
occurs ‘whenever a 0 is followed by a 1”); Sur-Reply 3–4.
We do not agree with Patent Owner’s assertion that Dr. Soljanin made
such a change between her declaration and her cross-examination.
According to Petitioner, at the logical level, where encoding takes place, a
transition can be represented in multiple ways depending on the format used.
Tr. 6:21–7:5. For example, a transition can be a change from 0 to 1 or from
1 to 0 when using NRZ format, and can also be represented by a 1 when
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using NRZI format. Id. We understand this to be Petitioner’s position
throughout the proceeding.
Although the Petition does not explicitly lay out this construction, it is
implied in the analysis. For example, when analyzing anticipation of claim
1 by Okada, Petitioner states that “each of the 13-bit data sequences shown
in Tables 1-7 . . . has a finite number of consecutive transitions (e.g.,
sequences where the data switches consecutively between ‘1’ and ‘0’),” and
“such constraint causes the ‘8-to-13 converter 10 to perform data conversion
before NRZI modulation in such a way that ‘1’ will not appear three or more
times in a row in a train of information data after the NRZi modulation.’”
Pet. 23–24, 26 (emphasis omitted) (citing Ex. 1007, 3:54–60). In her
declaration, Dr. Soljanin makes similar statements. See, e.g., Soljanin Decl.
¶ 87. Thus, we do not agree with Patent Owner that in her declaration, Dr.
Soljanin applied a construction of “transition” as a “1.” See PO Resp. 40.
Instead, Dr. Soljanin, in her declaration, applies a construction that a
transition can be represented by a “1” or by a change from 0 to 1 and 1 to 0,
depending on the format being used. See, e.g., Soljanin Decl. ¶ 87.
This construction is consistent with Petitioner’s and Dr. Soljanin’s
positions post-institution. See Reply 16 (referring to “at most four
transitions from ‘0’-to-‘1’ or ‘1’-to-‘0’ are allowed per NRZ codeword” and
“NRZI data where a ‘1’ represents a transition”); Ex. 2011, 53:8–10 (Dr.
Soljanin stating on cross-examination that “it can be a transition from 0 to 1”
and “from 1 to 0”), 55:21–56:4 (explaining that transitions are different
based on whether NRZ or NRZI is used).
We, therefore, do not agree with Patent Owner’s assertion that
Petitioner and Dr. Soljanin improperly shifted their construction of the term
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“transition” after the Petition. Instead, we determine that Petitioner and Dr.
Soljanin consistently apply a construction of “transition” such that it can be
logically represented in multiple ways depending on the encoding format
used—a change from 0 to 1 or from 1 to 0, when using NRZ format, for
example, or a 1 when using NRZI format.
Moreover, we agree with Petitioner that nothing in the claim
language, Specification, or proffered extrinsic evidence limits the
construction of the term “transition” such that it excludes such logical
transitions in the context of the ’601 patent, which is not limited to a
particular recording technology. In fact, the dictionary definitions relied
upon by Patent Owner are consistent with a broad construction of the term
“transition.” For example, Merriam-Webster defines “transition” as “1 a :
passage from one state, stage, subject, or place to another : CHANGE b : a
movement, development, or evolution from one form, stage, or style to
another.” Ex. 2029, 1254. Similarly, The American Heritage Dictionary
defines “transition” as “1. The process or an instance of changing from one
form, state, activity, or place to another. 2. Passage from one subject to
another, as in discourse.” Ex. 2031, 1287. Both these definitions clearly
include a change from 0 to 1 in a binary sequence using NRZ format and
also include a 1, representing a change from 0 to 1 using NRZI format. See
also Tr. 47:12–48:3 (Patent Owner’s counsel agreeing that going from 0 to 1
or 1 to 0 is a change in state as in the general meaning of “transition” if not
tied to a magnetic recording device).
d. Conclusion
As discussed above, we determine that the term “transition” as used in
claims 13, 14, and 17, should receive its plain and ordinary meaning.
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Moreover, as supported by evidence relied on by both parties, the plain and
ordinary meaning of “transition” does not exclude Petitioner’s position that a
transition can be logically represented in multiple ways depending on the
encoding format used—a change from 0 to 1 or from 1 to 0 when using NRZ
format, for example, or a 1 when using NRZI format. See PO Resp. 39
(citing Ex. 2029, 1254; Ex. 2031, 1287); see also PO Resp. 39 (citing Ex.
2011, 57:5–6 (Dr. Soljanin stating on cross-examination that “a transition
generally, it has to be some kind of a change”)).
D. Anticipation by Okada
Petitioner contends that claims 13, 14, and 17 of the ’601 patent are
anticipated by Okada. Pet. 17–37. For the reasons that follow, we
determine that Petitioner prevails in this assertion for claim 13, but not
claims 14 and 17.
1. Overview of Okada
Okada, titled “Information Recording Reproducing Apparatus Using
Data Conversion to Provide for Accurate Reproduction of High Density
Recording Using an Optical Recording Medium,” was filed June 6, 1994,
and issued February 21, 1995. Ex. 1007, codes (54), (22), (45). Because
Okada issued more than one year before the earliest priority date (April 5,
1996) of the ’601 patent, this reference is prior art to the ’601 patent under
pre-AIA 35 U.S.C. § 102(b).
Okada describes performing data conversion for storage on an optical
recording medium using NRZI recording format such that “‘1’ does not
appear three or more times in a row in a train of information data at the time
of recording information.” Ex. 1007, 3:35–44, 3:54–60. Specifically, an
embodiment of Okada converts 8-bit data into 13-bit data using one of two
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rules. Id. at Figs. 6, 3:61–68. “Rule (1)” requires “at least one ‘0’ and an
even number of consecutive ‘1.’” Id. at 3:64–65. “Rule (2)” requires “a
section consisting of ‘01010’ and a section consisting of at least one ‘0’ or
an even number of consecutive ‘1[s].’” Id. at 3:66–68. Example
applications of these two rules are shown in nine conversion tables. Id. at
4:1–8:64 (demonstrating Rule (1) in Tables 1–7 and Rule (2) in Tables 8 and
9).7
2. Analysis Claim 13
a. preamble
The preamble of claim 13 requires, “A method for encoding m-bit
binary datawords into n-bit binary codewords in a recorded waveform,
where m and n are preselected positive integers such that n is greater than
m.”8 Ex. 1001, 10:46–49. Petitioner relies on Okada’s teaching of encoding

7 Throughout the case, there appears to be some confusion about the
recording format used by the second column of Okada Tables 1–9 and the
second and third columns of Exhibit 1011. See Tr. 7:16–12:13. For clarity,
both parties appear to ultimately agree that the second column of Exhibit
1011, which reproduces the 13-bit data from Okada Tables 1–9, includes
codewords in NRZI format, and the third column of Exhibit 1011 includes
codewords (after NRZI modulation) in NRZ format. Id.; see also Tr. 43:18–
44:1. Thus, although the briefing is somewhat unclear on NRZ/NRZI
formatting (see, e.g., Sur-Reply 17, which appears to label column 3 data as
written in NRZI, not NRZ, format), we treat the 13-bit data in the Okada
Tables and the second column of Exhibit 1011 as written in NRZI format
and the third column of Exhibit 1011 as written in NRZ format.
8 Petitioner asserts that the preamble is not limiting, but nonetheless
addresses how Okada discloses the preamble’s subject matter. Pet. 17–19.
Because Petitioner has shown that the recitation in the preamble is satisfied
by the prior art, there is no need at this time to determine whether the
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8-bit datawords into 13-bit binary codewords as teaching or suggesting such
a method. Pet. 17–19, 33 (citing Soljanin Decl. ¶¶ 76–80; Ex. 1007, Figs. 6,
7, 2:48–3:3, 3:35–8:64, 9:24–10:22).
Based on the record, we are persuaded by Petitioner’s showing that
Okada discloses the preamble of claim 13. Patent Owner does not dispute
Petitioner’s contentions regarding the preamble. See PO Resp. 41–45.
Accordingly, we determine that Petitioner has established by a
preponderance of the evidence that Okada discloses the preamble of claim
13. “receiving binary datawords”
Claim 13 requires, “receiving binary datawords.” Ex. 1001, 10:51.
Petitioner identifies Okada’s 8-bit input record information, which is read
from a digital signal, as equivalent to the claimed dataword. Pet. 19–20, 33–
34 (citing Soljanin Decl. ¶¶ 81–82; Ex. 1007, Fig. 6, 2:57–61, 3:35–4:16,
8:65–10:22, Tables 1–9).
Based on the record, we are persuaded by Petitioner’s showing that
Okada discloses “receiving binary datawords” as recited by claim 13. Patent
Owner does not dispute Petitioner’s contentions regarding this limitation.
See PO Resp. 41–45. Accordingly, we determine that Petitioner has
established by a preponderance of the evidence that Okada “receiving binary
datawords.”
b. “producing sequences of n-bit codewords”
Claim 1 requires, “producing sequences of n-bit codewords.” Ex.
1001, 10:52. Petitioner identifies Okada’s 13-bit data output, produced by

preamble is limiting. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999).
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8-to-13 converter 10, as equivalent to the claimed codewords. Pet. 20–21,
34 (citing Soljanin Decl. ¶¶ 85–86; Ex. 1007, Fig. 6, 3:35–4:16, 8:65–10:22,
Tables 1–9).
Based on the record, we are persuaded by Petitioner’s showing that
Okada discloses “producing sequences of n-bit codewords” as recited by
claim 13. Patent Owner does not dispute Petitioner’s contentions regarding
this limitation. See PO Resp. 41–45. Accordingly, we determine that
Petitioner has established by a preponderance of the evidence that Okada
discloses “producing sequences of n-bit codewords.”
c. “imposing a pair of constraints (j;k) on the encoded waveform”
Claim 1 requires, “imposing a pair of constraints (j;k) on the encoded
waveform.” Ex. 1001, 10:53–54. Petitioner identifies Okada’s two rules,
used to convert the 8-bit dataword to the 13-bit codeword, as equivalent to
the claimed j and k restraints because they constrain the maximum number
of consecutive transitions allowed on consecutive clock periods in the
encoded waveform. Pet. 23–28, 34 (citing Soljanin Decl. ¶¶ 83–93; Ex.
1007, Figs. 1, 6, 7, 1:21–48, 3:35–4:16, 8:65–10:22, Tables 1–9; Ex. 1011).
Based on the record, we are persuaded by Petitioner’s showing that
Okada discloses “imposing a pair of constraints (j;k) on the encoded
waveform” as recited by claim 13. Patent Owner does not dispute
Petitioner’s contentions regarding this limitation. See PO Resp. 41–45.
Accordingly, we determine that Petitioner has established by a
preponderance of the evidence that Okada discloses “imposing a pair of
constraints (j;k) on the encoded waveform.”
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d. the j-constraint limitation
The j-constraint limitation of claim 13 requires, “generating no more
than j consecutive transitions of said sequence in the recorded waveform
such that j≥2.” Ex. 1001, 10:55–56. Petitioner explains that both of
Okada’s rules for encoding result in a maximum of two consecutive
transitions allowed on consecutive clock periods, and, therefore, Okada
discloses the j-constraint limitation. Pet. 28–29, 35 (citing Soljanin Decl.
¶¶ 94–96; Ex. 1007, Fig. 6, 3:35–4:16, 8:65–10:22, Tables 1–9; Ex. 1011).
To show Okada’s Rule 1 results in a maximum of one consecutive
transition as recited by claim 13, Petitioner points to Exhibit 1011, which
reproduces Tables 1–7 (created using Rule 1) and Tables 8 and 9 (created
using Rule 2) of Okada and adds a column with the binary number resulting
from NRZI modulation. See Pet 28 (citing Ex. 1011). Petitioner specifically
points to entry “7a” of Table 4, which indicates that the hexadecimal value
“7a” becomes “0011011000000” after application of Rule 1 in 8-to-13
encoding and “001001000000” after NRZI modulation. Id. According to
Petitioner, this example “illustrates that there are no more than two (2)
consecutive transitions in the recorded waveform following NRZI
modulation.” Id. at 28–29.
Similarly, to show Rule 2 results in a maximum of two consecutive
transitions, Petitioner points to entry “e8” of Table 8 in Exhibit 1011. Pet.
29. According to Petitioner, the fact that the hexadecimal value “e8”
becomes “0010100110000” after Rule 2 application in 8-to-13 encoding and
“0011000100000” after NRZI modulation, “illustrates that there are no more
than exactly two (2) consecutive transitions in the recorded waveform
following NRZI modulation.” Id.
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Patent Owner argues that Okada does not disclose the j-constraint
limitation. PO Resp. 42–44; Sur-Reply 16–18. First, Patent Owner argues
that “Okada does not disclose a magnetic recording medium at all” and,
therefore, cannot disclose the j-constraint limitation. PO Resp. 42. This
argument, however, depends on a narrow construction of the term
“transition,” that, as discussed above, we do not adopt.
Second, Patent Owner argues that “Okada limits the number of
consecutive times that Okada’s optical head is pulsed on,” which “limits the
number of consecutive pits on the master copy and the number of
consecutive lands on the reproduction copy” and “is a limit on the number of
consecutive things that have the same state.” PO Resp. 42–43. Patent
Owner concedes that “Okada’s coding scheme permits up to twenty
consecutive transitions” if transitions include changes from 0 to 1 and 1 to 0.
Id. at 43–44, 45–46 (“Okada permits up to twenty consecutive transitions
under that construction”). We agree with Petitioner that 20 is a finite
number, and, thus, Patent Owner concedes that Okada discloses the j-
constraint limitation, at least where j=20. Reply 16 (citing PO Resp. 44).9
Based on the record, we are persuaded by Petitioner’s showing that
Okada discloses the j-constraint limitation as recited by claim 13.
Accordingly, we determine that Petitioner has established by a
preponderance of the evidence that Okada discloses “generating no more
than j consecutive transitions of said sequence in the recorded waveform
such that j≥2.”

9 Patent Owner also concedes that “Rule 2 alone permits up to 12
consecutive transitions,” which “limited to that one embodiment, it probably
would anticipate that—there would be a constraint.” Tr. 52:9–53:12.
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e. the k-constraint limitation
The k-constraint limitation of claim 13 requires, “generating no more
than k consecutive sample periods of said sequences without a transition in
the recorded waveform.” Ex. 1001, 10:57–59. Petitioner explains that both
of Okada’s rules ensure “there can never be a codeword consisting of all 0’s
or all 1’s—thus, k is a finite number” and, therefore, Okada discloses the k-
constraint limitation. Pet. 29–30, 35 (citing Soljanin Decl. ¶¶ 97–98; Ex.
1007, Fig. 6, 3:35–4:16, 8:65–10:22, Tables 1–9; Ex. 1011).
To show Okada’s Rule 1 results in no more than k consecutive sample
periods without a transition, as recited by claim 13, Petitioner asserts that the
rule “ensures that a 13-bit codeword cannot be comprised of all 1s or all 0s
following NRZI modulation” and “even in the scenario where any two 13-bit
codewords are evaluated in succession, there would be no more than 22
consecutive sample periods without a transition.” Pet. 29–30 (citing Ex.
1011, Tables 8 and 9).
Similarly, Petitioner asserts that “[t]here can be even fewer
consecutive sample periods without a transition when Okada’s Rule (2) is
used, because a string of ‘01010’ must be included in each of the 13-bit
codewords.” Pet. 30. According to Petitioner, “[t]he sequences generated
thus have ‘no more than k consecutive sample periods without a transition in
the recorded waveform,’” as recited by claim 13. Id.
Patent Owner argues that Okada does not disclose the k-constraint
limitation. PO Resp. 44–45. As with the j-constraint limitation, Patent
Owner argues that Okada “does not disclose a magnetic recording medium
at all” and, therefore, cannot disclose the k-constraint limitation. Id. at 44.
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This argument, however, depends on a narrow construction of the term
“transition,” that, as discussed above, we do not adopt.
Patent Owner also argues that Okada’s two rules “permit an unlimited
number of consecutive 0s” because only one of the two rules is applicable at
a time and Rule 1 is satisfied by thirteen consecutive 0s. PO Resp. 44–45.
Petitioner responds by stating that none of the tables using Okada’s Rule 1
(Tables 1–7) show thirteen consecutive 0s. Reply 17. Thus, even if Rule 1
theoretically could be applied such that thirteen consecutive 0s are used as
the thirteen-bit codeword, this is immaterial because Okada discloses an
embodiment that does not include such a codeword. Id.
We agree with Petitioner. Claim 13 covers the Okada embodiment
disclosed in Tables 1–9, which discloses a method for encoding 8-bit
datawords into 13-bit codewords that have a finite number of consecutive 0s
or 1s. See Ex. 1007, Tables 1–9; Ex. 1011. Rule 2, by its terms, also
satisfies the k-constraint because it requires a section of “01010,” which
imposes a finite limit on the number of consecutive 0s or 1s. See Ex. 1007,
3:66–68. Thus, Okada discloses the k-constraint limitation. See, e.g., In re
Lukach, 442 F.2d 967, 970 (CCPA 1971) (“[T]he description of a single
embodiment of broadly claimed subject matter constitutes a description of
the invention for anticipation purposes.”).
Based on the record, we are persuaded by Petitioner’s showing that
Okada discloses the k-constraint limitation as recited by claim 13.
Accordingly, we determine that Petitioner has established by a
preponderance of the evidence that Okada discloses “generating no more
than k consecutive sample periods of said sequences without a transition in
the recorded waveform.”
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f. Conclusion
After reviewing the arguments and evidence of record, we find that
Petitioner demonstrates by a preponderance of the evidence that claim 13 is
anticipated by Okada.
3. Analysis Claims 14 and 17
Claim 14 depends from claim 13 and recites “wherein the consecutive
transition limit is defined by the equation 2≤j<10” (claim 14’s “j-constraint
limitation”). The Petition submits that “Okada discloses a constraint length
of j=2, and thus anticipates claim 14.” Pet. 35–36 (citing Soljanin Decl.
¶¶ 112–113; Ex. 1007, Fig. 6, 3:35–4:16, 8:65–10:22, Tables 1–9). Patent
Owner challenges this assertion, stating that Okada Rule 1 “permits up to
twenty consecutive transitions” under a construction of “transition” as a
change from 0 to 1 or 1 to 0 (PO Resp. 45), and Rule 2 allows for up to
twelve consecutive transitions (Sur-Reply 16–17 (showing that the
concatenation of “0010100111111” and “1111110010100” would have 12
consecutive transitions assuming NRZI10 recording format)).
In reply, Petitioner does not dispute Patent Owner’s assertion that
Rule 1 allows for up to 20 consecutive transition, but argues that Okada’s
Rule 2 “independently qualifies as an anticipating method.” Reply 14.
According to Petitioner, “Okada’s Rule (2) method (as seen in the data in the
third column of Tables 8 and 9 of Exhibit 1011) shows a ‘j-constraint’ that is
even lower—at most four transitions from ‘0’-to-‘1’ or ‘1’-to-‘0’ are
allowed per NRZ codeword (e.g., ‘fc’ in Table 9) and at most eight

10 The Sur-reply appears to incorrectly interchange the NRZI and NRZ
recording format labels here.
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transitions when multiple NRZ codewords are combined in a recorded
waveform (e.g., ‘fc’ followed by ‘f8’ in Table 9).” Id. at 16.
Patent Owner argues that this argument—“Rule (2) ‘standing alone’
anticipates” is improper and should not be considered as it was not
articulated in the Petition. Sur-Reply 12–16. We do not agree that this
argument is newly articulated in the Reply Brief. The Petition clearly states
that Rules 1 and 2 of Okada “each impose[]” the j-constraint. Pet. 23–24.
And the Petition separately sets out how Rule 1 and Rule 2 disclose both the
j-constraint (id. at 28–29 (Rule 1), 29 (Rule 2)) and the k-constraint (id. at
29–30 (Rule 1), 30 (Rule 2)).
We agree, however, with Patent Owner that Petitioner has not
sufficiently shown that Okada’s Rule 2 anticipates claim 14. For the j-
constraint, the Petition states that “imposition of Rule (2) results in a
maximum of two consecutive transitions (as seen in Tables 8 and 9).” Pet.
29. Petitioner bases its allegation of anticipation on this assertion—“Okada
discloses a constraint length of j = 2, and thus anticipates claim[] 14.” Id. at
36. In the Reply Brief, Petitioner changes this assertion, without
explanation, to a j-constraint that is at most four per codeword and at most
eight when multiple codewords are combined, again relying for support on
the codewords set forth in Okada’s Tables 8 and 9. Reply 16. Although
Petitioner consistently points to Tables 8 and 9 as evidence that Okada’s
Rule 2 anticipates the j-constraint limitation of claim 14, we understand
Petitioner’s position from the briefing to be that Okada’s Rule 2 anticipates
claim 14. See, e.g., Pet. 29 (“[I]mposition of Rule (2) results in a maximum
of two consecutive transitions allowed on consecutive clock periods.”);
Reply 14 (“Each of Okada’s rules . . . independently qualifies as an
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anticipating method.”), id. at 15 (“Okada’s ‘Rule (2)’ clearly discloses every
limitation of the three challenged claims of the ’601 patent.”).
We understand Petitioner to agree with Patent Owner’s assertion that
Rule 2 allows for up to twelve consecutive transitions. Sur-Reply 16–17
(showing that the concatenation of “0010100111111” and “1111110010100”
would have 12 consecutive transitions assuming NRZI11 recording format).
In fact, we see no reason that the two examples given by Patent Owner
would not be legitimate codewords using Okada’s Rule 2. Thus, there does
not appear to be a dispute that Okada’s Rule 2, by its terms, does not
anticipate claim 14’s j-constraint limitation requiring a value of j that is less
than ten.
At the hearing, however, Petitioner explained that it is relying solely
on Tables 8 and 9 for anticipation of claim 14. Tr. 21:1–22. In other words,
Petitioner argues that each of Tables 8 and 9 is an independent example of
using Okada’s Rule 2 and thus, each of these two tables independently
anticipates claim 14. See Tr. 21:1–7 (“For Rule 2, Okada provides two
examples in tables 8 and 9. Each table reflects the creation of a given set of
arbitrary 13-bit encoded sequences that comply with either Rule 1 or Rule 2,
and then, assigning those code words back to the inputs.”). We see no
language in any of Petitioner’s briefs, however, that sets forth this position.
Thus, we consider this argument to be improper as untimely.
Even if Petitioner’s argument were timely, Petitioner has not
explained how each of Tables 8 and 9, independently, comprises a complete

11 The Sur-reply appears to incorrectly interchange the NRZI and NRZ
recording format labels here.
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embodiment such that Tables 8 and 9, by themselves, and without any
rearrangement, anticipate claim 14. In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009) (stating that to establish anticipation “the reference must disclose
each and every element in a claimed invention,” “arranged or combined in
the same way as in the claim”). For example, Okada discloses that its 8-to-
13 converter “performs data conversion to expand 8-bit input record
information to 13-bit data.” Ex. 1007, 3:61–62. Okada’s Tables 1–9
provide conversions for the 8-bit hexadecimal inputs, i.e., 00 to ff. Id. at
4:17–8:64. Petitioner does not explain specifically why a person of ordinary
skill in the art would understand Okada as disclosing an 8-to-13 converter
that operates solely on the 8-bit hexadecimal inputs (d8 to ff) in Tables 8 and
9.
After reviewing the arguments and evidence of record, we find that
Petitioner does not demonstrate by a preponderance of the evidence that
claim 14 is anticipated by Okada. Claim 17 depends directly from claim 14,
and Petitioner’s case against it suffers from the same problems as its case
against claim 14. See Pet. 37 (relying on the analysis for claim 14 for
anticipation of the overlapping limitations in claim 17).
E. Anticipation by Tsang
Petitioner asserts that claims 13, 14, and 17 of the ’601 patent are
anticipated by Tsang. Pet. 37–56. Patent Owner opposes Petitioner’s
assertion. PO Resp. 46–66. Having considered the arguments and evidence
presented during trial, we determine that Petitioner has not established by a
preponderance of the evidence that the challenged claims are anticipated by
Tsang. In particular, Petitioner has not shown that Tsang qualifies as prior
art under pre-AIA 35 U.S.C. § 102(e) because it does not disclose an
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invention “by another,” as required by § 102(e). Integral to this Decision is
the Seagate Annual Report (Ex. 2025), authored by Moon and Brickner, and
provided to Tsang prior to the filing of Tsang.
1. Overview of Tsang
Tsang, titled “Method and Apparatus for Implementing Codes with
Maximum Transition Run Length,” was filed January 31, 1996, and issued
March 24, 1998. Ex. 1009, codes (54), (22), (45). Tsang identifies Kinhing
P. Tsang as the sole inventor and identifies Seagate Technology, Inc., as
assignee. Id., codes (73), (75).
Tsang acknowledges the existence of “[a] class of block codes that
limits the number of consecutive symbol transition, typically representing
binary ‘1’s’, are known as maximum transition run (MTR) codes. Ex. 1009,
2:22–25. Further, Tsang states that “[a]t densities considerably greater than
those in currently commercially available products, the most likely error
sequence has been demonstrated to consist of write patterns that contain
three or more unspaced consecutive transitions.” Id. at 2:18–22. To avoid
such patterns, Tsang discloses that “codes with MTR values (no more than
two successive binary ‘1’s’ in the coding result) equal to two are desirable.”
Id. at 2:25–28.
Tsang also explains that “[t]o design a MTR code with MTR=2
having a rate of m/n . . . an exhaustive search of the possible n bit blocks is
used to find 2m different n-bit words which satisfy the MTR=2 constraint,”
but there is “a desire to provide an encoding algorithm which satisfies the
MTR=2 constraint that is each to implement using Boolean logic and is not
limited by invalid patterns beginning or ending with ‘11’.” Id. at 2:45–3:8.
To address this desire, Tsang uses “a finite state machine represented by a
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two-state trellis diagram” to choose a set of codewords from the list of all
possible n-bit codewords that satisfy the MTR constraints. Id. at 4:3–16.
2. The Seagate Annual Report
The Seagate Annual Report, authored by Drs. Moon and Brickner, the
inventors of the ’601 patent, is dated September 26, 1995. Ex. 2025. It
describes research focused on “the use of fixed-delay tree search with
decision feedback (FDTS/DF) with (0,k) run length limited (RLL) codes.”
Id. at 2. Section 4.2 describes “a new class of codes, designated maximum
transition run (MTR) codes,” which “limit the number of consecutive
transitions that can occur in a recorded sequence.” Id. at 5. The Report
proposes “the use of MTR=2;k codes . . . for use in magnetic recording.” Id.
The Report also describes “an example of a MTR block code, the rate 4/5,
MTR=2;k=8 block code” is shown in Table IV. Id. at 8–9.
Petitioner has not challenged the status or contents of the Seagate
Annual Report. In fact, the Petition itself refers to the Report as setting forth
a “key finding from Seagate’s research.” Pet. 6 (citing Ex. 1009),12 44–45.
Tsang, itself, refers to the Seagate Annual Report, as does the ’601 patent.
Ex. 1009, 2:36–38 (“The upper bound of the MTR=2 code rate in which
k=∞ has been found to be 0.8791 as indicated in the Seagate Annual
Report.”); Ex. 1001, 2:47–58 (“This improvement in the bit error rate can be
traded for an increase in storage density if the error rate performance is
already satisfactory.” (citing an additional related Seagate document and
presentation by Brickner and Moon).

12 Although the Petition refers to the Seagate Annual Report, the Report
itself was not entered into the record until Patent Owner filed it with its
Patent Owner Response. See Ex. 2025.
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3. Whether Tsang is Prior Art Under 35 U.S.C. § 102(e)
Because Tsang was filed prior to the earliest priority date of the ’601
patent, Petitioner asserts that this reference is prior art to the ’601 patent
under pre-AIA 35 U.S.C. § 102(e). Pet. 3. Patent Owner argues that Tsang
does not qualify as prior art because it does not disclose an invention “by
another,” as required by § 102(e). PO Resp. 29, 46, 61–65. Patent Owner
also argues that Drs. Moon and Brickner completed their invention prior to
the January 1996 filing date of Tsang. See id. at 29, 46, 56–61.
For the reasons that follow, we agree with Patent Owner that Tsang is
not prior art to the ’601 patent under § 102(e).
a. Legal Background
Under § 102(e), a claim is anticipated if “the invention was described
in . . . an application for patent, published under section 122(b), by another
filed in the United States before the invention by the applicant for patent.”
Thus, “there are two conditions expressed in section 102(e): (1) the
application for the reference patent must have been by one who is legally
‘another’ and (2) the filing date must be ‘before the invention . . . by the
applicant.’” In re Land, 368 F.2d 866, 879 (CCPA 1966). To overcome a
prior art reference under §102(e), the applicant or patentee may antedate the
invention by establishing prior conception and reduction to practice relative
to the filing date of the prior application. In re Costello, 717 F.2d 1346,
1351 (Fed. Cir. 1983). Alternatively, the applicant or patentee may
“establish that the relevant disclosure [in the prior application] describes
their own invention.” Id.
As an initial matter, as mentioned above, Tsang lists Kinhing P. Tsang
as its sole inventor. Ex. 1009, code [75]. The ’601 patent lists Jaekyun
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Moon and Barrett J. Brickner as the inventors. Ex. 1001, code [75]. Thus,
we agree with Petitioner that, on its face, Tsang has a different inventive
entity than the ’601 patent. See Reply 23. Nonetheless, determining
whether the prior application has a different inventive entity on its face than
the challenged patent does not end the inquiry. We must also determine
“whether the portions of the reference relied on as prior art, and the subject
matter of the claims in question, represent the work of a common inventive
entity.” EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859
F.3d 1341, 1345 (Fed. Cir. 2017) (quoting Riverwood Int’l Corp. v. R.A.
Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2003)).
[T]o decide whether a reference patent is ‘by another’ for the
purposes of 35 U.S.C. § 102(e), the Board must (1) determine
what portions of the reference patent were relied on as prior art
to anticipate the claim limitations at issue, (2) evaluate the
degree to which those portions were conceived ‘by another,’
and (3) decide whether that other person’s contribution is
significant enough, when measured against the full anticipating
disclosure, to render him a joint inventor of the applied portions
of the reference patent.
Duncan Parking Techs. v. IPR Grp., 914 F.3d 1347, 1358 (Fed. Cir. 2019).
In Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d
1375 (Fed. Cir. 2015), the Federal Circuit explained the shifting burden of
production in an inter partes review with respect to showing whether a
reference is prior art. Id. at 1379–80. Here, although the burden of
persuasion never shifts to Patent Owner, Petitioner satisfied its initial burden
of production by arguing that Tsang anticipates the challenged claims under
§ 102(e). See id. at 1379 (stating the petitioner satisfied its initial burden of
production by arguing that the prior art anticipated the claims under
§ 102(e)(2)). The burden of production then shifted to Patent Owner to
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argue or produce evidence that Tsang does not anticipate the challenged
claims or that Tsang is not prior art. As we explain below, we conclude that
Patent Owner sufficiently argued and produced evidence that Tsang is not
prior art because it is not work “by another,” thereby shifting the burden of
production back to Petitioner to prove that Tsang constitutes prior art under
§ 102(e). See id. at 1380.
b. The Scope of the Petition
Patent Owner contends that Petitioner relies solely “on general
descriptions in the Tsang Patent about values for m, n, j, and k for MTR
codes to allege anticipation.” PO Resp. 63; Sur-Reply 21; Tr. 54:4–7 (“the
portions that [the Petition relies] on of [Tsang] are drawn from the Seagate
Annual Report and disclosed in the Seagate Annual Report.”). According to
Patent Owner, “the Petition does not rely on the Tsang Patent’s particular
trellis-based, codeword block concatenation strategy for an MTR code to
allege anticipation of the Challenged Claims.” PO Resp. 63 (citing Pet. 44–
45, 52–54); see also Sur-Reply 22 (listing citations to the Seagate Annual
Report relied upon in the Petition). Petitioner argues that “Tsang invented
and claimed specific MTR codes not disclosed to him by either Moon or
Brickner” and, therefore, “[t]he inventions in Tsang are ‘by another’ under
Section 102(e).” Reply 25; see also Reply 23 (stating that “[t]he ’601 patent
and Seagate Annual Report disclose a single MTR code type, namely a rate
4/5 MTR code,” but “Tsang invented different rate 5/6 and rate 6/7 MTR
codes”).
Although we recognize the Petition relies on various portions of
Tsang for background and context, when considering the Petition as a whole,
we agree with Patent Owner that the Petition relies solely on material
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disclosed in the Seagate Annual Report for anticipation of the challenged
claims. Throughout the Petition, Petitioner focuses on Tsang’s disclosure of
two embodiments “for encoding ‘data words . . . having “m” successive bits’
into ‘code words . . . having “n” bits where “n” is greater than “m”’” as
anticipating. Pet. 38 (citing Ex. 1009, 2:28–44, 4:1–6, 10:17–19, 19:34–38),
Pet. 39–43 (citing Ex. 1009, Figs. 4A, 9A), Pet. 44–46 (citing Ex. 1009,
2:14–28, 2:36–38, 5:25–6:24, 11:27–56). Petitioner also emphasizes that
“Dr. Tsang set forth a key finding from Seagate’s research—a finding
previously presented in the Seagate Annual Report,” that “[t]he upper bound
of the MTR=2 code rate in which k=∞ has been found to be 0.8791.” Pet. 6
(quoting Ex. 1009, 2:36–38); 45.
To the extent the Petition refers to specific MTR rates, such as
Tsang’s 5/6 and 6/7 MTR rates, these examples do not refer to the values of
constraints j and k, but instead refer to the values of m and n, the number of
bits in the claimed dataword and codeword—values which are not limited by
the challenged claims. Pet. 38 (noting that Tsang discloses examples with
“m=5 and n=6” and “m=6 and n=7”), 44 (“Encoder (65) converts 6-bit input
data to 7-bit codewords, and is a state-dependent encoder.”), 45 (discussing
the values of j and k used with Tsang’s two embodiments); Ex. 1009, 4:1–6,
10:17–19. In other words, the challenged claims cover any positive integer
value of m and n that satisfy the recited MTR constraints. See Ex. 1001,
10:46–49 (“A method for encoding m-bit binary datawords into n-bit binary
codewords in a recorded waveform, where m and n are preselected positive
integers such that n is greater than m”). Because the challenged claims are
not limited to the specific m/n MTR rates disclosed by Tsang, we are not
persuaded that the Petition relies on these rates for its assertion that Tsang
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anticipates the claims. Cf. Duncan Parking, 914 F.3d at 1358–59
(determining that because the claims of the challenged patent “clearly
include elements previously disclosed” by the putative prior art, “the
question is whether [the same inventive entity] conceived those elements as
they were disclosed in the [putative prior art]”).
Thus, when considering whether the “relied-upon portions” of Tsang
are the work of another, we focus—as Petitioner has—on the disclosure of
MTR constraints j and k.
c. Work of Another
To satisfy its burden of production to show Tsang’s disclosure of
MTA constraints j and k is not the work of another, Patent Owner submits
declarations from one of the ’601 patent inventors, Dr. Moon (Ex. 2016), a
report authored by Brickner and Moon and dated May 1995 (Ex. 2033 (“the
May 1995 Report”)), and the Seagate Annual Report (Ex. 2025). See PO
Resp. 61–62. Relying on this evidence, Patent Owner asserts that the
portions of Tsang disclosing MTR constraints j and k are solely the work of
the ’601 patent inventors. Id. at 61–65.
Dr. Moon testifies that he and Dr. Brickner performed research at the
University of Minnesota under two grants, one from Seagate. Ex. 2016
¶¶ 40–43. During the research, Dr. Moon’s main contact at Seagate was Mr.
Robert Kost, “who was then the boss of Kinhing (‘Paul’) Tsang, the listed
inventor for Tsang.” Id. ¶ 45. The purpose of the research was “to develop
coding schemes to improve sequence detection performance for HDDs.” Id.
¶ 44. Dr. Moon testifies that “[i]n the course of our research and by the
spring of 1995, we developed, invented, conceived, and reduced to practice
the MTR codes claimed in the ’601 patent.” Id. According to Dr. Moon,
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between 1995 and 1997, he attended many in-person and telephonic calls
with both Mr. Kost and Mr. Tsang in which “we discussed the subject of my
research, including the MTR codes, in significant detail.” Id. at 46. In
addition, Dr. Moon testifies that “Brickner and I disclosed our inventive
MTR codes to Seagate in around May 1995” in the May 1995 Report. Id. at
47 (citing Ex. 2033).
To corroborate the Dr. Moon’s testimony, Patent Owner submits
contemporaneous notes of Mr. Kost (Ex. 2034), an invention disclosure form
dated September 8, 1995 (Ex. 2035), the May 1995 Report (Ex. 2033), the
Seagate Annual Report (Ex. 2025), a 1998 paper co-authored by Mr. Kost
(Ex. 2018), table of contents for a 1996 Intermag conference (Ex. 2020), and
a paper authored by Drs. Moon and Brickner published in IEEE in 1996 (Ex.
1012). Ex. 1009 ¶¶ 46–67. In particular, Patent Owner points to the Seagate
Annual Report as disclosing, in May of 1995, MTR codes with constraints j
and k consistent with the subject matter recited by the challenged claims and
emphasizes that Tsang, itself, refers to the Seagate Annual Report. PO
Resp. 57–58 (citing Ex. 2025, 5–6), 49 (citing Ex. 1009, 2:36–38), 60.
Patent Owner also points to the May 1995 Report as corroborating that date
as well as 1995 notes of Mr. Kost, which according to Patent Owner,
“corroborates that Moon and Brickner were working on a ‘new coding
concept . . . [b]y examining the distance properties,’ which is the essence of
their MTR codes.” Id. at 60 (citing Ex. 2033, Fig. 2; Ex. 2034; Ex. 2016
¶ 52).
Having considered the evidence presented by Patent Owner, we find
Patent Owner has satisfied its burden of production to show Tsang is not
§ 102(e) prior art. We find the testimony of Dr. Moon—as corroborated by
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the Seagate Annual Report, which is explicitly relied upon by both Tsang
and the Petition—to be persuasive evidence that the relied-upon portions of
Tsang represent the work of the ’601 patent inventors.
The burden, therefore, shifts back to Petitioner to rebut Patent
Owner’s evidence and show Tsang qualifies as § 102(e) prior art. In
response, Petitioner challenges the sufficiency of Patent Owner’s evidence
and asserts that Dr. Tsang was a necessary contributor of the invention
disclosed in Tsang, thereby making Tsang’s disclosure “by another.”
Reply 19–20, 23–25. We are not persuaded by Petitioner’s arguments.
d. Dr. Moon’s Credibility
Regarding the sufficiency of the evidence, Petitioner argues the
testimony of Dr. Moon is not reliable. Reply 19–20. First, Petitioner argues
Dr. Moon lacks credibility because he “has a substantial financial stake in
the outcome of the litigation between UMN and LSI.” Reply 19 (citing
Ex. 2016 ¶ 76; Ex. 1034, 10:15–11:13). Second, Petitioner asserts that “Dr.
Moon advocated for many years that the challenged claims are not limited to
magnetic systems,” but has changed his opinion in this proceeding. Id. at 20
(citing Ex. 2016 ¶ 33).
In response, Patent Owner argues that Petitioner “does not come close
to undercutting Moon’s detailed testimony, especially as corroborated by
numerous contemporaneous documents that LSI does not challenge.” Sur-
Reply 19 (citing Exs. 2012–2015, 2025, 2030, 2032–2035).
We are not persuaded that Dr. Moon’s testimony lacks credibility.
Even taking into consideration Dr. Moon’s interest in the outcome of this
case, the pertinent parts of his testimony, detailing the dates when he and Dr.
Brickner conceived of the invention, are not actually challenged by
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Petitioner. Moreover, Petitioner has not challenged any of Patent Owner’s
corroborating evidence or even asserted that it is insufficient. See Reply 19–
20, 23–25. In fact, Petitioner admits that at least portions of Dr. Moon’s
testimony are correct. See Pet. 6 (stating that the work of Drs. Moon and
Brickner “was admittedly ‘supported’ by Seagate Technology” and that a
“key finding from Seagate’s research” is set forth in the Seagate Annual
Report).
Moreover, the purpose of corroboration is to negate any self-interest
that may taint an inventor’s testimony. See Price v. Symsek, 988 F.2d 1187,
1195 (Fed. Cir. 1993) (describing an inventor’s testimony as “attempting to
remember specifically what was conceived and when it was conceived, a
situation where, over time, honest witnesses can convince themselves that
they conceived the invention of a valuable patent”). The sufficiency of
corroborative evidence is determined by a rule of reason analysis where
“[a]n evaluation of all pertinent evidence must be made so that a sound
determination of the credibility of the inventor’s story may be reached.” Id.
at 1195. Applying the rule of reason, we find Patent Owner’s proffered
evidence sufficient for corroboration purposes, particularly in light of the
Seagate Annual Report and the reliance on that document by both the
Petition and Tsang itself.
e. Dr. Tsang’s Contribution
Regarding whether Dr. Tsang was a necessary contributor to the
subject matter of Tsang relied upon by the Petition, Petitioner argues that “as
to Tsang’s rate 5/6 and rate 6/7 MTR codes, there is no evidence that Tsang
derived his inventions from anyone,” and “[a]t a minimum, Tsang’s
‘contribution is significant enough’ to at least ‘render him a joint inventor on
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the applied portions of the [Tsang] patent.’” Reply 24–25. Petitioner notes
that Dr. Moon testified at his deposition that he should not have been
included as an inventor on the Tsang patent because “[t]his is about specific
embodiment, specific implementation of MTR code.” Id. at 24 (quoting
Ex. 1034, 75:16–76:2). Petitioner, thus, concludes that “Tsang invented and
claimed specific MTR codes not disclosed to him by either Moon or
Brickner” and “[t]he inventions in Tsang are thus ‘by another’ under Section
102(e).” Id.
However, as discussed above, the relevant question is not whether Dr.
Moon contributed to the inventions claimed in Tsang (for example, Tsang’s
algorithm for choosing codewords using a finite state machine represented
by a two-state trellis diagram) such that he should be a named inventor on
that patent. The question is whether the portions of Tsang relied upon by the
Petition to anticipate the claims of the ’601 patent represent the work of
someone other than the inventors of the ’601 patent. As discussed above, we
are persuaded that the Petition relies on the portions of Tsang describing
MTR constraints j and k, which are also described in the Seagate Annual
Report. Tsang’s exemplary choice of m equal to 6 or 7 and n equal to 7 or 8
does “no more than merely explain . . . the current state of the art” as set
forth by Drs. Moon and Brickner. Duncan Parking, 914 F.3d at 1358; See
Ex. 1009, 2:42–44 (explaining that in the context of the Seagate Annual
Report, “[f]or practical implementation, m and n are usually chosen to be
small integers and the ration m/n is as close to the code capacity as
possible”). Thus, Dr. Tsang’s contribution to the subject matter relied upon
for anticipation by the Petition is not “significant enough, when measured
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against the full anticipating disclosure, to render him a joint inventor of the
applied portions” of Tsang. Duncan Parking, 914 F.3d at 1358.
Based on the arguments and evidence presented during trial, we
determine that Petitioner has not satisfied its burden to prove the portions of
Tsang relied upon for anticipation represent the work of another to qualify as
prior art under § 102(e). Accordingly, we find that Petitioner has not
established by a preponderance of the evidence that any challenged claim of
the ’601 patent is unpatentable as anticipated by Tsang.
IV. CONCLUSION13
Based on the full record, we determine that Petitioner shows by a
preponderance of the evidence that claim 13 of the ’601 patent is
unpatentable under 35 U.S.C. § 102 as anticipated by Okada, but Petitioner
has not shown that claims 14 and 17 are unpatentable.
Claim(s) 35 U.S.C. § Reference(s)
/Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
13, 14, 17 102 Okada 13 14, 17
13, 14, 17 102 Tsang 13, 14, 17
Overall
Outcome
13 14, 17

13 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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V. ORDER
For the reasons given, it is:
ORDERED that, pursuant to 35 U.S.C. § 314(a), Petitioner has shown
by a preponderance of the evidence that claim 13 of the ’601 patent is
unpatentable;
ORDERED that, pursuant to 35 U.S.C. § 314(a), Petitioner has not
shown by a preponderance of the evidence that claims 14 and 17 of the ’601
patent are unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

For PETITIONER:

Kristopher Reed
Edward Mayle
KILPATRICK TOWNSEND & STOCKTON LLP
kreed@kilpatricktownsend.com
tmayle@kilpatricktownsend.com

For PATENT OWNER:

Patrick McElhinny
Mark Knedeisen
K&L GATES LLP
patrick.mcelhinny@klgates.com
mark.knedeisen@klgates.com