Toshiba Samsung Storage Technology Korea Corporationv.LGE Inc.

Patent Trial and Appeal Board

Mar 31, 2015

09443291 (P.T.A.B. Mar. 31, 2015)

Trials@uspto.gov Paper 31
571-272-7822 Entered: March 31, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TOSHIBA SAMSUNG STORAGE
TECHNOLOGY KOREA CORPORATION,
Petitioner,
v.
LG ELECTRONICS, INCORPORATED,
Patent Owner.
____________

Case IPR2014-00204
Patent 6,477,126
____________

Before KARL D. EASTHOM, RAMA G. ELLURU, and
DAVID C. MCKONE, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Petitioner filed a corrected Petition (Paper 4, “Pet.”) requesting an
inter partes review of claims 1–4, 6–11, and 13–19 of U.S. Patent
No. 6,477,126 (Ex. 1001, “the ’126 patent”) pursuant to 35 U.S.C. §§ 311–
319. See Pet. 1. Patent Owner filed a Preliminary Response (Paper 7,
“Prelim. Resp.”) opposing institution of a review. See Prelim. Resp. 1.
In an Institution Decision (Paper 9, “Inst. Dec.”), an inter partes
review of claims 1, 2, 6–11, and 13–19 was instituted, but not of claims 3
and 4. Inst. Dec. 2. After the Institution Decision, Patent Owner filed a
Response (Paper 18, “PO Resp.”) and a contingent Motion to Amend Claims
(Paper 17, “Mot. Amend.”). In response, Petitioner filed a Reply (Paper 19,
“Pet. Reply”) and an Opposition to the Motion to Amend (Paper 20,
“Pet. Opp.”). Patent Owner then filed a Reply to Petitioner’s Opposition.
Paper 21 (“PO Reply”). The parties presented arguments at an oral hearing.
Paper 30 (“Tr.).
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, we determine Petitioner has shown by a preponderance of the
evidence that challenged claims 1, 2, 6–11, and 13–19 are unpatentable.
A. Related Matters
Petitioner indicates that the ’126 patent was asserted against it in LG
Electronics, Inc. v. Toshiba Samsung Storage Technology Corp., Case
No. 1:12-cv-01063 (D. Del.). Pet. 1.
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method, a manufacturer or user can select one of two modes when
formatting a disc. See id. at col. 4, ll. 44–48. According to Figure 5, in the
first mode (mode-1), two spare areas (i.e., a primary spare area (PSA) and a
supplementary spare area (SSA)) are assigned during formatting. See id. at
col. 4, ll. 48–51 (referring to step 503). In a second mode (mode-2), a
primary spare area is assigned during formatting, and a supplementary spare
area may be assigned, if needed, during use of the disc in a recording or
reproduction operation. See id. at col. 4, ll. 51–55 (referring to step 504).
Figure 6 is set forth below:

Figure 6 illustrates examples of first and second modes of assigning
spare areas during formatting. As depicted, the size of the PSA in each
mode is equal, providing a stated benefit of allowing convenient mode
conversion. See Ex. 1001, col. 2, ll. 47–54, col. 3, ll. 15–43. As the arrow
in Figure 6 signifies, “the present invention allows a conversion between the
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first and second mode for further convenience of a user.” Ex. 1001, col. 5,
ll. 1–3.
As Figure 6 illustrates, the first mode involves assigning both a PSA
and a SSA (designated “SA-sup”), and the second mode involves assigning a
primary space area (“PSA”). Id. at col. 4, ll. 56–67. According to Figure 6,
the PSA is assigned to the top of the data area (near the inner rings of a
disc), and the SSA is assigned at the bottom of the data area (at the outer
rings of a disc). Id. at col. 4, ll. 24–26, 48–54.
C. Illustrative Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of assigning a spare area of an optical
recording medium having a data area, the method comprising:
providing a first mode in which both a primary spare area
and a supplementary spare area are assigned;
providing a second mode in which a primary spare area
is assigned; and
assigning the spare area according to one of either the
first mode or the second mode when the optical recording
medium is formatted.
Id. at col. 5, ll. 53–62.
Claim 15, reproduced below, recites a product-by-process, wherein
the process steps track those of claim 1 verbatim:
15. An optical recording medium having a data area in
which a spare area is assigned by:
providing a first mode in which both a primary spare area
and a supplementary spare area are assigned;
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providing a second mode in which a primary spare area is
assigned; and
assigning the spare area according to one of either the first
mode or the second mode when the optical recording medium is
formatted.
D. Instituted Grounds of Unpatentability
Reference(s) Basis Claims Challenged
Kawano1 § 102 1, 7, 8, 15, and 19
Kawano and Ohata2 § 103 2
Kawano and Ozaki3 § 103 6 and 18
Kawano and Kulakowski4 § 103 9 and 16
Kawano, Ohata, and
Kulakowski § 103
10, 11, 13, 14, and
17
E. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable constructions in light of
the specification of the patent in which they appear. See 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL
448667, at *4–8 (Fed. Cir. Feb. 4, 2015). Under the broadest reasonable

1 Japanese Patent App. Pub. No. H8-329610, Dec. 13, 1996 (Ex. 1004; cert.
Eng. trans. Ex. 1003) (“Kawano”).
2 Japanese Patent App. Pub. No. H10-21552, Jan. 23, 1998 (Ex. 1006; cert.
Eng. trans. Ex. 1005) (“Ohata”).
3 Japanese Patent App. Pub. No. H6-96525 (Apr. 8, 1994) (Ex. 1008; cert.
Eng. trans. Ex. 1007) (“Ozaki”).
4 US Patent No. 5,548,572, Aug. 20, 1996 (Ex. 1009) (“Kulakowski”).
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construction standard, claim terms are presumed to be given their ordinary
and customary meaning, as would be understood by one of ordinary skill in
the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may rebut that
presumption by providing a definition of the term in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). Stated differently, a “claim term will not
receive its ordinary meaning if the patentee acted as his own lexicographer
and clearly set forth a definition of the disputed claim term in either the
specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002).
Neither party asserts that the ’126 patent ascribes a special
lexicographic meaning to a claim term. Accordingly, all terms have been
given their ordinary and customary meaning in the context of the ’126 patent
disclosure. The parties’ arguments center on the construction of the
following three claim terms or phrases:
1. “supplementary spare area” (SSA)
Independent claims 1 and 15 each recite “providing a first mode in
which both a primary spare area and a supplementary spare area are
assigned.” Patent Owner maintains that the “broadest reasonable
construction in view of the specification of the ’126 patent, ‘supplementary
spare area’ means ‘spare area that is separate from the primary spare area.’”
PO Resp. 16.
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Petitioner does not dispute Patent Owner’s construction; however,
Petitioner and Patent Owner disagree over the meaning of that construction.
Specifically, Petitioner maintains that “separate” means distinct, but not
necessarily “spaced apart.” Pet. Reply 11; Pet. Opp. 12. Patent Owner’s
arguments imply that “separate” requires “spaced apart” areas. For example,
Patent Owner describes Ohata’s primary and secondary replacement areas as
being merely “adjacent” (PO Resp. 40), and argues that Petitioner’s
interpretation of “separate” is “overly broad and unreasonable” (PO Reply
5).
Figure 4A of the ’126 patent Specification, “an example of . . . the
invention” (Ex. 1001, col. 3, l. 48), shows one contiguous area at the top,
and despite the label “PSA” in Figure 4A, implies that spare areas are
located at the top of Figure 4A and need not be spaced apart. See id. at col.
4, ll. 20–27 (referring to “the total spare area” of 145MB, with a “primary
spare area” and “secondary spare area”); id. at col. 4, ll. 29–33 (“[T]he
primary and supplementary spare areas of the first mode may be assigned . .
. as shown in FIGS. 4(a) and 4(b)”); compare Fig. 4A (spare areas totaling
145MB), with Fig. 4B (spaced apart areas totaling 145MB).5 Patent
Owner’s construction effectively would limit the claims to the embodiment

5 Figure 4A, representing an embodiment of the invention, appears to be
similar in material respects (e.g., including the label “PSA”) to Figure 3A
(“Background Art”). According to Patent Owner, Figure 3A “show[s] a
conventional first mode/enlarged 145MB spare area including distinct but
not spaced apart 26MB and 119 MB portions.” PO Reply 5 (emphasis
added).
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of Figure 4B. Generally, under a broadest reasonable construction, claims
are not limited to disclosed embodiments. Therefore, a “separate” spare area
includes a distinct spare area that is contiguous to, or spaced from, the
primary spare area.
Based on the foregoing discussion, in light of the ’126 patent
Specification and the claim language, a “supplementary spare area” is a
“distinct spare area that is spaced from, or adjacent to, the primary spare
area.”
2. “a first mode in which both a primary spare area and a
supplementary spare area are assigned” and “a second
mode in which a primary spare area is assigned”
Independent claims 1 and 15 each recite “a first mode in which both a
primary spare area and a supplementary spare area are assigned” and “a
second mode in which a primary spare area is assigned.” Patent Owner
maintains that the broadest reasonable construction of “a first mode in which
both a primary spare area and a supplementary spare area are assigned” is “a
formatting mode that assigns a spare area having a first size that is larger
than a second size and including both a primary spare area and a
supplementary spare area.” Prelim. Resp. 13–16; PO Resp. 16. Patent
Owner further argues that the broadest reasonable construction of “a second
mode in which a primary spare area is assigned” is “a formatting mode that
assigns a spare area having the second size, which is smaller than the first
size, and including only a primary spare area.” PO Resp. 16. Patent Owner
relies on its declarant, Dr. Masud Mansuripur (id. at 2 & n.1 (citing Ex. 2002
¶ 39), 12–13 (citing Ex. 2002 ¶¶ 48, 50)), and also on testimony by
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Petitioner’s declarant, Dr. Lambertus Hesselink (PO Resp. 2 (citing Dr.
Hesselink’s deposition testimony, Ex. 2003, 31:6–12, 33:6–7, 33:11–13,
40:23–41:8, 44:1–2)). Patent Owner characterizes the testimony of each
declarant as showing that the first and second modes described in the ’126
patent Specification relate to relative sizes of the user areas. See PO Resp.
2–5, 12–13.
Essentially, Patent Owner maintains that because embodiments
disclosed in the ’126 patent include the feature that the total size of the spare
area according to the first mode (i.e., the combined primary and
supplementary spare areas––PSA plus SSA) is larger than size of the spare
area assigned according to the second mode (SSA), the claims must be
interpreted as incorporating the relative size feature. See PO Resp. 1–5, 11–
31.
Petitioner argues that claim 1 does not recite or require the proffered
size limitation. See Pet. Reply 3–5. Petitioner asserts that Patent Owner
does not allege that the inventors of the ’126 patent acted as lexicographers
in defining any claim terms, including the first mode and second mode.
Id. at 4.
Patent Owner maintains that not reading a size limitation into the
claimed first mode would be “inconsistent with the specification.” PO Resp.
30. Patent Owner explains that Figure 4A represents an example of the first
mode of the invention, and that the Board, in its Institution Decision,
incorrectly found that Figure 4A represents the second mode of the
invention. See PO Resp. 24–26 (citing Inst. Dec. 4–6). The ’120 patent
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Specification supports Patent Owner’s characterization of Figure 4A,
because it refers to Figure 4A as “an example of assignment of the spare
area in a first mode according to the present invention.” Ex. 1001, col. 3, ll.
48–49 (emphasis added).
Nonetheless, the Institution Decision does not cite or rely upon
Figure 4A in the claim construction at issue here. Rather, the panel accepted
Patent Owner’s argument that embodiments in the ’126 patent Specification,
including Figure 6, employ a first mode with a larger spare area than a
second mode. See Inst. Dec. 10–11 (citing Ex. 1001, Fig. 6). The central
thrust in the Institution Decision and this Decision is that the disclosed
examples in the ’126 patent Specification do not serve to limit the claims in
the manner proposed by Patent Owner. See id.
Figure 4A, upon which Patent Owner relies, merely represents “an
example” (Ex. 1001, col. 3, l. 48) that does not limit the claims. According
further to the ’120 patent Specification, Figure 4B “shows an example in
which primary spare areas of two modes are assigned to have the same size
according to the present invention.” Id. at col. 3, ll. 51–53. As Petitioner
argues, Patent Owner does not use the disclosed example of “two modes . . .
assigned to have the same size” PSA to limit claim 1, or other disclosed
examples, yet arbitrarily chooses the disclosed example of a larger second
mode spare area as compared to the first mode spare area to limit the claims.
See Pet. Reply 4–5 (listing other disclosed examples that Patent Owner
“ignored” as claim limitations, including a “4.7 GB” example).
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Moreover, the ’120 patent Specification explains that “[f]or purposes
of explanation, a disc with a size of 120 mm (hereinafter ‘the disc’) will be
used to explain the present invention. However, the present invention is not
limited to this example.” Ex. 1001, col. 4, ll. 3–6 (emphases added). In the
next paragraph, using “the disc” to explain the invention further, the
Specification states that “[t]he disc will be considered to be in a first mode
when the initial user area is less than 4.7 GB and in a second mode when the
initial user area is equal to 4.7 GB.” Id. at col. 4, ll. 11–13 (emphasis
added).
Patent Owner focuses on this latter sentence as defining the first mode
spare area to be larger than the second mode spare area. See PO Resp. 25
(citing Ex. 2002 ¶ 66). Patent Owner also maintains that the examples
illustrated in Figures 4A and 4B exemplify the size relationship. Id.
Petitioner responds that the reliance on the sentence is “telling,” because
“Patent Owner and its expert . . . fail to read the relative initial user area
sizes [(i.e., 4.7 GB)] into the claims.” Pet. Reply 4.
Patent Owner further explains that, as depicted in Figure 6, the
disclosed examples show that the user area size (e.g., less than 4.7 GB in the
first mode as depicted in Figures 4A and 4B) inherently (based on a finite
size of “the disc”) dictates the spare area size. Therefore, according to
Patent Owner, the first mode spare area (PSA plus SSA) must be larger than
the second mode spare area––because the first mode user area is smaller
than the second mode user area. PO Resp. 25–27; Ex. 1001, Fig. 6. Patent
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Owner’s declarant, Dr. Mansuripur, provides a similar analysis.
See Ex. 2002 ¶¶ 59–71.
Patent Owner and Dr. Mansuripur merely show that examples in the
’126 patent Specification describe a first mode having a larger spare area
size as compared to the second mode spare area size. However, they do not
address the clear disclaimer in the Specification (as quoted above), that “the
disc” “hereinafter” represents a mere example for discussion purposes and
“the present invention is not limited to this [disc] example.” See Ex. 1001,
col. 4, ll. 5–6 (emphasis added).
An example upon which Patent Owner does not rely, Figure 5
(reproduced above), “is a flow chart . . . according to the present invention.”
Id. at col. 3, ll. 53–55. Figure 5 depicts “mode-1” and “mode-2” without any
depiction of relative spare area size or user size. See Ex. 1001, Fig. 5;
see also col. 4, ll. 44–55 (discussing Figure 5). This description is consistent
with not reading a size limitation into the first mode or the second mode.
Finally, the ’126 patent Specification states that assigning a
supplementary spare area (SSA) occurs not only in the first mode (see
Figure 6), but also in the second mode: “if the second mode is selected
when formatting a disc . . . a supplementary spare area may be assigned as
necessary when recording or playing back data from a disc.” Ex. 1001,
col. 4, ll. 61–65; see also id. at col. 5, ll. 36–39 (assigning the SSA and PSA
simultaneously in the first mode, while in the second mode, the SSA is
“assigned as required”).
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By allowing for the assignment of a SSA and a PSA in the second
mode, by broadly disclosing the invention according to Figure 5, and by
expressly stating that the disc example relied upon does not limit the
invention, the Specification does not define clearly a claim limitation
requiring the size of the spare area of the first mode to be larger than the size
of the spare area of the second mode.
Based on the foregoing discussion, in light of the ’126 patent
Specification and the claim language, a “first mode” is one “in which both a
primary spare area and a supplementary spare area are assigned,” and a
second mode is one “in which a primary spare area is assigned.”
3. “formatted”
Claim 1 requires assigning spare areas according to one of the modes
“when the optical recording medium is formatted.” Neither party proposes
an express construction of the term “formatted.” Petitioner maintains that
claim 1 does not specify when the recording medium must be “formatted,”
that assignments of the primary and supplementary PSA and SSA in mode 1
need not be simultaneous, and that “formatted” in claim 1 does not require
“initialization” or “initial formatting.” Pet. Reply 10. In addressing the
prior art challenges, Patent Owner implies that formatting occurs during an
initial step: “The disk formatting or initialization [in Ohata], which
determines the initial setting and provides the primary replacement area,
occurs before the replacement area processing, which increases the initially
provided replacement area by newly providing the secondary replacement
area if the disk has been removed from its cartridge.” PO Resp. 44. In the
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context of Ohata, Patent Owner also maintains that “Petitioner’s expert
admit[s] that ‘replacement area processing would typically happen after the
disk has been formatted.’” PO Resp. 43 (citing Ex. 2003, 113:2–13, 129:13–
16, 19–21; Ex. 2002 ¶ 94 (similar proposition)).
Patent Owner’s position about what occurs in Ohata does not address
squarely what “formatting” means in the context of the ’126 patent. See Pet.
Reply 10–11. The ’126 patent Specification, and claim 1, do not distinguish
clearly between formatting, initial formatting, converting, or adding spare
areas at any time. For example, Figure 6 (reproduced above) represents a
type of formatting that involves a conversion and reconversion process
between the two modes. See Ex. 1001, col. 5, ll. 5–44, col. 4, ll. 53–55, Fig.
6. In other words, Figure 6 of the ’126 patent Specification specifically
describes mode conversion, after any initial formatting, as a type of
formatting. See Ex. 1001, col. 5, ll. 7–8 (equating “formatting as shown in
Fig. 6” as “this conversion”).
Further with respect to Figure 6, “a selection between the modes can
be made through mode conversion when the disc is formatted.” Id. at col. 5,
ll. 38–39 (emphases added). This conversion or re-conversion (formatting)
involves adding and canceling a SSA. See id. at col. 5, ll. 8–9 (canceling),
17–19 (“reverse process of a conversion”). After the creation of a SSA,
during mode conversion, the “supplementary spare area [SSA] can be simply
canceled through a formatting as show in Fig. 6.” Id. at col. 5, ll. 7–8
(emphasis added). In addition, “[o]nce converted, the supplementary spare
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area may be assigned again as necessary when the primary spare area
becomes full.” Id. at col. 5, ll. 14–16 (emphasis added).
Although one example in the background section of the ’126 patent
Specification refers to “formatting” in terms of “initializing and re-
initializing,” id. at col. 1, ll. 53–54, as explained, an SSA for the second
mode can be “assigned” at any time (i.e., after any initializing or re-
initializing): “[I]f the second mode is selected when formatting a disc . . . a
supplementary spare area may be assigned as necessary when recording or
playing back data from a disc.” Ex. 1001, col. 4, ll. 61–65; see also col. 5,
ll. 36–39 (assigning the SSA and PSA simultaneously in the first mode,
while in the second mode, the SSA is “assigned as required”).
Therefore, based on the foregoing discussion, the ’126 patent
Specification blurs any distinction between initializing, re-initializing,
assigning, converting, and formatting, thereby indicating that formatting
generally involves modifications or changes to an optical medium,
including, but not limited to, additions or cancelations of spare areas. Also,
the transition represented by the arrow in Figures 4A and 4B simply
represents shifting the location of the secondary spare area (i.e., 119MB out
of 145MB) from the top to the bottom of the disc. Ex. 1001, col. 4, ll. 14–
27; Figs. 4A, 4B.
During the oral hearing, Patent Owner verified that, with respect to
the disclosure at column 5, lines 54–55, of the ’126 patent Specification,
which adds a SSA “as necessary” (i.e., at any time), “recording/reproduction
refers to formatting”:
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JUDGE EASTHOM: I have one more question
about . . . column 4, . . . lines 54 and 55, it says you’re going to
add a supplementary spare area . . . assigned later as needed
during a recording/reproduction operation.
Now, are you saying that that’s the conversion
process that that’s referring to, and so that
recording/reproduction refers to formatting?
. . .
MR. LIEBERMAN: The answer is yes.
Tr. 66:6–66:18.
In other words, Patent Owner agrees that altering the optical medium
at any time, for example, during “recording/reproduction,” which occurs
after initial formatting, amounts to formatting. Based on the foregoing
discussion, in light of the ’126 patent Specification, and the record
arguments, “formatted” means a change in the structure of an optical
medium by altering, assigning, canceling, shifting, or adding spare areas or
other similar areas.
II. ANALYSIS
A. Anticipation by Kawano
Considering the record, Petitioner shows, by a preponderance of
evidence, that Kawano anticipates claims 1, 7, 8, 15, and 19. See Pet. 11–
20. Petitioner provides explanations and claim charts to support the
showing. Id. Kawano generally describes rewriting a format of an optical
disc, from a format having two separate spare areas 13 to a format having a
single spare area 13. See Ex. 1003, Abstract, ¶¶ 2, 16, Fig. 5.

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primary spare area in the first mode. Id. at 13. Petitioner contends that
spare area 9,000,00–1,000,000 in Kawano’s Format 1, shown at the bottom
of Figure 5, corresponds to the recited supplementary spare area in the first
mode. Id.
Petitioner explains that Kawano’s Format 2 in Figure 5 discloses
“providing a second mode in which a primary spare area is assigned,” as
recited in claim 1. Pet. 15. As noted by Petitioner, Kawano’s Format 2 in
Figure 5 only includes one spare area, which, according to Petitioner,
discloses the recited second mode in which a primary spare area is assigned.
Id. Petitioner also shows that Kawano discloses “assigning the spare area
according to one of either the first mode or the second mode when the
optical recording medium is formatted,” as recited in claim 1. See id. at 16
(citing Ex. 1003 ¶ 16).
In response, Patent Owner contends that Kawano does not disclose
“providing a first mode in which both a primary spare area and a
supplementary spare area are assigned,” as recited in claim 1. Patent Owner,
relying on Dr. Mansuripur, argues that Kawano describes shifting the
location of the spare areas and that the sizes of the spare areas remain
constant between modes, so that Kawano does not describe making the
combined spare area in Format 1 larger than the spare area in Format 2.
See PO Resp. 33–37 (citing Ex. 2002 ¶¶ 75, 77, 82, 84). This position
reduces to the claim construction argument addressed above––i.e., the
contention that claim 1 requires the size of the total spare area of the first
mode (PSA plus SSA) to be larger than the size of the total spare area (PSA)
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of the second mode. For example, Patent Owner asserts that shifting of the
spare areas in Kawano proves that Kawano’s combined spare areas 13 in
Format 1 each “has the same size (i.e., 200,000 address units) as the spare
area assigned in ‘Format 2’ of Fig. 5 of Kawano.” PO Resp. 37; accord
Ex. 2002 ¶ 74 (declaring that “the spare area 13 [of Kawano] is not
supplemented/made larger”).
As set forth in the claim construction discussion above (Section I.E.2–
3), claim 1 does not require a relative size limitation between the two recited
modes, and the recited term “formatted” does not preclude shifting of spare
areas. Patent Owner also asserts that spare area 13 of Kawano “wraps
around from the bottom to the top of the format.” PO Resp. 37. Patent
Owner’s point regarding “wrap[] around” is not clear, but perhaps it refers to
logically (as opposed to physically) contiguous PSA and SSA areas.6
Nevertheless, even if claim 1 requires spaced apart PSA and SSA areas
under the narrower claim construction outlined above, Kawano’s two spare
areas 13 in Figure 5, Format 1, are located physically at spaced apart disc
areas, as set forth above. See supra note 6; Ex. 1003, Fig. 5; Ex. 2002

6 Addressing its proposed amendments, Patent Owner also asserts that “each
of Formats 1–3 of Fig. 5 of Kawano would have a PSA and an SSA that are
distinct but not necessarily spaced apart.” PO Reply 5. To the extent that
Patent Owner asserts that Format 1 of Figure 5 of Kawano does not disclose
physically spaced apart areas 13, we find to the contrary. Figure 5 shows
spaced apart areas 13 in Format 1, a label on Figure 5 refers to “[p]hysical
address[es],” and this particular embodiment represents shifting spare areas
13 to different physical addresses between Formats 1–3 to create uniform
usage areas on a recording medium. Ex. 1003, Fig. 5, Abstract, ¶ 16.
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21
¶¶ 77–78 (Patent Owner’s declarant describing different physical addresses
for spare areas 13 in Format 1). In other words, Kawano’s Format 1 of
Figure 5 is similar to Figure 6 of the ’126 patent Specification––both
indicate physically spaced apart spare areas. Because Kawano shows two
physically separated spare areas 13 in Format 1, under either party’s
proposed construction of “supplementary spare area,” Kawano discloses
assigned primary and supplementary spare areas in a first mode as required
by claim 1.
Accordingly, Patent Owner’s arguments are not persuasive. In
summary, as Kawano’s Figure 5 shows, Format 1 includes two spare areas
13, primary and supplementary spare areas, and Format 2 includes a primary
spare area 13, as the disputed elements in claim 1 essentially require.
See Ex. 1003 ¶ 16 (indicating “spare areas” (plural) for format 1 and “spare
area” (singular) for format 2).
Patent Owner relies on its arguments for claim 1 and does not present
separate patentability arguments for claims 7, 8, 15, and 19. PO Resp. 37–
38. Although Patent Owner groups claims 1, 7, 8, 15, and 19 together, and
claim 15, a product-by-process claim, falls with claim 1 for the reasons
discussed above, claim 15 is broader than claim 1. Therefore, in addition to,
or as an alternative to, those reasons, one or the other formatting modes as
depicted in Kawano’s Figure 5 reads on the method of producing a product
as recited by claim 15. In other words, reciting a choice between two modes
in process steps to produce the product recited in claim 15 only requires a
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22
product that either has a PSA and a SSA, as disclosed in Kawano’s
Format 1, or merely a PSA, as disclosed in Kawano’s Formats 2 or 3.
Based on the foregoing discussion and the record, including the
Petition, and Patent Owner’s arguments and evidence, Petitioner shows by a
preponderance of evidence that Kawano anticipates claims 1, 7, 8, 15, and
19.
B. Obviousness over Kawano and Ohata
Considering Patent Owner’s arguments and evidence, Petitioner
shows, by a preponderance of evidence, that claim 2 would have been
obvious over Kawano and Ohata. See Pet. 21–28. Claim 2 depends from
claim 1 and adds the limitation “wherein sizes of the primary spare area
[PSA] of the first and second modes are equivalent.” As discussed above,
Figure 6 of the ’126 patent depicts an embodiment wherein the size of the
PSA in each of the two modes is equal.
Ohata describes techniques for ensuring an adequate replacement area
for optical discs that potentially might be removed from a cartridge and
thereafter degraded by contamination (human fingerprints or dirt, etc.).
See Ex. 1005, Abstract. This additional replacement area compensates for
defective areas caused by such contamination. See id.

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Therefore, in view of Ohata’s teaching, Petitioner reasons that it
would have been obvious to modify Kawano to have equal primary
replacement areas in two modes. Petitioner further reasons that a simple size
modification in Kawano would decrease the complexity of switching
between modes, and would yield a predictable result of equally sized
primary spare areas. See Pet. 24–25. Petitioner supports these contentions
with testimony by Dr. Hesselink. Id. (citing Ex. 1010 ¶¶ 32–33).
Patent Owner, relying on Dr. Mansuripur’s testimony, essentially
agrees with Petitioner’s characterization of Ohata’s disclosure. See PO
Resp. 38–40 (citing Ex. 2002 ¶¶ 86–87). Patent Owner emphasizes that
Ohata only provides the secondary replacement area “some time after
formatting/initialization,” id. at 39, in response to a determination that “the
disk has been removed from the cartridge,” id. at 42. Patent Owner also
points out that the primary replacement area in Ohata “has already been
assigned during an initial formatting/initialization of the disk.” See id.
(citing Ex. 1005 ¶ 20).
Countering Petitioner’s assertion of simplicity, Patent Owner
maintains that modifying Kawano in the manner proposed would increase
complexity and “fundamentally change[]” Kawano’s “principle of
operation,” “from a simple shift [of spare areas between two modes] to
something much more complex and undefined.” PO Resp. 46 (citing
Ex. 2002 ¶ 98). According to Patent Owner, under Petitioner’s proposed
modification of Kawano, “the operation of Kawano would be greatly
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Patent 6,477,126

25
complicated because it could no longer rely on a simple change of an offset
value to switch between formats.” Id. at 47 (citing Ex. 2002 ¶ 100).
Patent Owner also points out that Ohata’s primary and replacement
spare areas are “adjacent” to one another, or “contiguous,” similar to the
embodiment represented in prior art Figure 3A of the ’126 patent
Specification. PO Resp. 40. Patent Owner also maintains that reducing the
primary spare area in Kawano’s second mode would “result in loss of spare
area information when reformatting from ‘Format 1’ to ‘Format 2.’” Id. at
48. Finally, Patent Owner maintains that Ohata teaches away from assigning
equal primary spare areas during formatting of a disk, because Ohata teaches
that assigning a secondary spare area (to create a larger total replacement
area) reduces recording area, which would be wasteful for users who use the
disk without removing it from the cartridge. Id. at 49.
Addressing the formatting/initialization argument, Petitioner asserts
that the proposed ground seeks to modify the formatting steps of Kawano
based on the equal spare area teachings in Ohata. Petitioner further explains
that
it is undisputed that Ohata discloses two disc formats, one in
which both a PSA and an SSA are assigned (Fig. 2) and a
second in which just a PSA is assigned, where the PSAs in both
formats are equal in size. . . . The specifics of how Ohata
formats its disks with the disclosed spare area assignments are
not specifically relied upon and therefore are irrelevant.
Pet. Reply 10.
Petitioner’s showing and response are persuasive. Ordinarily skilled
artisans would not have viewed the equal primary spare area teachings in
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Ohata as limited to initial formatting steps. For example, creating various
sizes for spare areas at any time was within the skill level of ordinary
artisans, as inspection of the relative spare area sizes shown in the
background art, Figures 3A and 3B of the ’126 patent Specification, implies.
See Ex. 1001, Figs. 3A, 3B.
Further addressing the formatting/initialization argument, Petitioner
also points out that claims 1 and 2 do not specify when the optical medium
must be “formatted,” that assignments of the PSA and SSA in mode 1 need
not be simultaneous, and that “formatted” in claim 1 does not require
“initialization” or “initial formatting.” Pet. Reply 10. Petitioner reasons that
Ohata’s replacement area formatting is similar to disk alterations as
disclosed in the ’126 patent Specification. See id. at 10–11 (arguing that the
SSA “‘can be simply canceled through a formatting as show in Fig. 6’”
(quoting Ex. 1001, col. 5, ll. 7–8)). The record supports Petitioner. As
discussed above in the claim construction of “formatted” (Section I.E.3),
formatting, as described in the ’126 patent Specification, and as Patent
Owner conceded during the oral hearing, involves altering the spare area
locations or sizes in an optical media. As discussed further above, the ’126
patent Specification essentially describes formatting as including converting
or re-converting between modes, or adding, canceling, or shifting, spare
areas, at any time, including by adding a SSA for a second mode during
playback, recording, or as otherwise necessary. See supra Section I.E.3;
Tr. 66:6–66:18.
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Regarding the shifting and teaching away arguments, Petitioner
presents an annotated version of Kawano’s Figure 5, modified to include
equal primary spare areas in formats 1, 2, and 3 that retain the shifting
principle, while “resulting in even better wear performance with no overlap
of the high use management areas.” Pet. Reply. 12 (producing annotated
version of Kawano’s Fig. 5, right-hand side, showing equal sized spare
(PSA) areas 13). Petitioner’s proposed and annotated modification involves
reducing the total spare area 13 in formats 2 and 3, thereby preserving the
recording area, in line with Ohata’s teaching to preserve such area in at least
one format or condition. See id. Therefore, Petitioner’s presentation
establishes persuasively that Ohata does not teach away from Petitioner’s
proposed ground regarding claim 2. In addition, as Petitioner argues,
keeping the sizes of the PSA equal across the modes reduces complexity by
allowing the same information to be placed in each equally sized area.
See id.
Given a fixed disc size, trading recording size for spare area size
would have represented an obvious trade-off of providing either recording
area or “adequate replacement sectors to compensate for defective sectors
occurring due to severe fouling caused by human fingerprints or dirt.”
Ex. 1005, Abstract. Although, as Patent Owner contends, Ohata describes
this fouling as occurring “when the disk is removed from the cartridge” (id.),
Kawano’s optical recording mediums do not specifically involve cartridges.
Ohata does not teach away from providing replacement areas generally in
disks that are fouled (i.e., fouled without a cartridge), while maintaining the
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same size primary spare area. Based on the combined teachings, the record
shows that it would have been obvious to add a replacement spare area at
any time as a trade-off between data recovery and recording area, including
when a manufacturer or user predicts fouling may occur on a cartridge-less
optical recording medium, maintaining the original size of a primary spare
area, in order to overcome “severe fouling caused by human fingerprints or
dirt.” See id.
Regarding Patent Owner’s assertion that Ohata’s primary and
replacement spare areas are “adjacent” to one another, or “contiguous,” and
similar to prior art Figure 3A of the ’126 patent (PO Resp. 40), Petitioner
asserts that claim 2 does not require a spaced apart PSA and SSA
(Pet. Reply 11). Petitioner also relies on Kawano, as explained above in
connection with claim 1, which shows spaced apart spare areas 13.
See Pet. 12 (Format 1 showing spaced apart PSA 13 and SSA 13).
Petitioner’s argument has merit. Under a broader claim construction
as outlined above, claim 2 does not require the supplementary and primary
spare areas necessarily to be spaced apart from one another. Moreover, even
under the narrower claim construction, Kawano teaches spaced apart
primary and supplementary spare areas 13 in Format 1. See Ex. 1003, Fig.
5; supra note 6. Ohata suggests equal-sized primary spare areas regardless
of any spacing relationship to a supplementary spare area. Petitioner’s
rationale that a simple size modification would decrease the complexity of
switching between modes and yield predicable results of equal sizes also
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29
applies regardless of such spacing. See Pet. 24–25 (citing Ex. 1010 ¶¶ 32–
33); Pet. Reply 10–13.
Petitioner concludes by “not[ing] there are only three possibilities for
the first mode PSA size relative to the second mode PSA size: equal, greater,
or less. Choosing one knowing another is an obvious design choice with
very predictable results.” Pet. Reply 13. Petitioner’s showing persuasively
supports the conclusion. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (“When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp.”). Keeping the PSA the same size across two
modes, while adding a SSA to overcome fouling, represents a simple and
predictable manufacturing choice.
Based on the foregoing discussion, Petitioner shows by a
preponderance of evidence that modifying the primary spare area sizes of
Kawano to be equal in first and second modes, as set forth in claim 2, would
have been obvious. Note that Petitioner’s analysis of claim 2 also shows
that the combination of Kawano and Ohata renders obvious a size limitation
wherein the total spare area of the first mode is larger than the second mode
spare area: By making the PSA in each mode equal, Petitioner’s annotated
version of Figure 5 from Kawano shows that the total size of the spare area,
PSA 13 plus SSA 13 in Format 1 (the first mode), is larger than PSA 13 in
Formats 2 and 3 (the second mode). See Pet. Reply 12.
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Petitioner’s articulated reasoning is supported by rational
underpinnings. See KSR, 550 U.S. at 416 (to be nonobvious, a patent claim
to “a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result”). Accordingly, Petitioner
shows by a preponderance of evidence that the combination of Kawano and
Ohata renders claim 2 obvious.
C. Obviousness over Kawano and Ozaki
Considering Patent Owner’s arguments and evidence, Petitioner
shows by a preponderance of evidence that claims 6 and 18 would have been
obvious over Kawano and Ozaki. See Pet. 29–33. Claims 6 and 18, which
depend from independent claims 1 and 15, respectively, recite “the primary
spare area in the first and second mode is assigned at the top of the data area
of the optical recording medium.” Petitioner asserts that the additional
limitations recited in claims 6 and 18 are described by Ozaki. See id.
As noted by Petitioner, Ozaki describes a magnetic disc divided into
tracks having a concentric shape in which alternative track 20b includes
tracks of the innermost circumference of the disc, as compared with normal
usage area 20a. Ex. 1007, Abstract, ¶ 6, Fig. 5; Pet. 29–33. Ozaki indicates
that an alternative track is used “when a bad track occurs.” Ex. 1007 ¶ 45.

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Dr. Hesselink (Ex. 1010), an ordinarily skilled artisan would have combined
Kawano and Ozaki to place spare data areas in tracks with the lowest
reliability, thereby allowing data to be placed in higher reliability areas.
See Pet. 32–33 (citing Ex. 1010 ¶¶ 42–44). Ozaki corroborates
Dr. Hesselink, who quotes Ozaki’s teaching that the innermost tracks are
where the “‘linear recording density is highest (reliability is lowest).’”
Ex. 1010 ¶ 42 (quoting Ex. 1007 ¶ 6).
Patent Owner, relying on Dr. Mansuripur, responds by noting that
PSA 13 in Kawano’s “Format 1” is at the top of the data area, but PSA 13 in
“Format 2” is not at the top of the data area, as claims 6 and 18 require.
See PO Resp. 51 (citing Ex. 2002 ¶ 108). Addressing the proposed
modification, similar to arguments regarding claim 2, Patent Owner asserts
that the modification would change the principle of operation of Kawano,
because it would preclude the integral shifting, between modes, of spare
areas 13 and management areas 14 into infrequently used data areas 15,
which Kawano exemplifies in relation to Figure 5. See id. at 52–53.
In its Reply, Petitioner responds that Kawano teaches three different
modes. According to Petitioner, modifying Format 3 to allow a shift relative
to Formats 1 and 2, and modifying the primary areas of Formats 1 and 2 to
be at the top of the data area (i.e., without a relative shift between those two
formats), satisfies claims 6 and 18. See Pet. Reply 13–14. Therefore,
providing for the shift according to Format 3 would correspond to, and not
change, the alleged principle of operation of Kawano that Patent Owner
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alleges. See id. Petitioner supplies an annotated version of Kawano’s
Figure 5 to explain its position. See id. at 14.
Based on the arguments and evidence presented, Petitioner’s position
is more persuasive than Patent Owner’s. The record does not support Patent
Owner’s contention that Kawano’s principle of operation involves shifting
the spare areas in each available mode or format. Employing Format 3, as
Petitioner contends, would satisfy the shifting principle––which involves
shifting management areas to areas of lower rewrite frequency. See Ex.
1003 ¶ 14.
In addition, Figure 4 represents an embodiment in which management
and user areas are shifted, but not the spare areas: “The spare areas
[depicted in Figure 4] are made to be the same physical address areas in each
format.” Id. ¶ 15. Patent Owner agrees: “In fact moving the spare area 13
‘integrally with the management area 14’ is the distinguishing feature of the
embodiment of Fig. 5 relative to the embodiment of Fig. 4, where ‘[t]he
spare areas are made to be the same physical address areas in each format.’”
PO Resp. 46–47 (quoting Ex. 1003 ¶¶ 15–16, citing id. at Figs. 4–5,
emphasis added). Notwithstanding Patent Owner’s argument, Kawano’s
“embodiment of Fig. 5” does not define Kawano’s principle of operation,
and Kawano’s Figure 4 contradicts Patent Owner’s assertion that Kawano’s
principle of operation requires, or is limited to, shifting spare areas between
modes.
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Based on the foregoing discussion, considering the arguments and
record evidence, Petitioner shows by a preponderance of evidence that the
combination of Kawano and Ozaki renders claims 6 and 18 obvious.
D. Obviousness over Kawano and Kulakowski
Considering Patent Owner’s arguments and evidence, Petitioner
shows by a preponderance of evidence that claims 9 and 16 would have been
obvious over Kawano and Kulakowski. See Pet. 33–39. Claims 9 and 16,
which depend from independent claims 1 and 15, respectively, recite “in the
assigning step, the spare area is assigned according to one of either the first
mode or the second mode based upon a selection by a user or a
manufacturer.”
Kulakowski describes a disk in which “[a] portion of each band on the
disk includes a user data area and a reserved area.” Ex. 1009, Abstract.
“Sectors in the reserved area are usable . . . as spare sectors, replacing
defective sectors in the user area.” Id. Kulakowski also describes a
“common overflow reserved area” for use if all the sectors in the primary
reserved areas have been exhausted. Id. Kulakowski further describes using
common overflow reserved area 118 when reserved area 170 has been filled,
and “the size of each reserved area 170 can be established by the media
manufacturer if the manufacturer initializes the media or can be established
by the user.” Ex. 1009, col. 7, ll. 8–11.
Petitioner relies on these teachings. See, e.g., Pet. 35–37 (citing
Ex. 1009, col. 6, l. 49–col. 7, l. 27, Fig. 4A). Petitioner contends that an
ordinarily skilled artisan would have modified Kawano in view of
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Kulakowski to enable a user or manufacturer to assign modes, because, for
example, “it would be useful and valuable for the manufacturer and user to
be able to determine whether to use the first mode or second mode. The
manufacturer is in a unique position of knowing how reliable the disc that it
manufactured is.” Id. at 37.
Patent Owner contends that Kulakowski does not teach selecting from
two modes, because, although Kulakowski teaches selecting the size of a
reserve area 170 (first mode), Kulakowski does not teach selecting a reserve
area size of zero (second mode). See PO Resp. 58 (citing Ex. 2002
¶¶ 125–126; Ex. 2003, 149:2–6 (pointing out that Dr. Hesselink testifies that
Kulakowski does not employ the word “zero”).
Notwithstanding the lack of an explicit recitation of the word “zero”
as choice of size for a replacement area, Kulakowski generally suggests
selecting any size, including a size of zero. In other words, Kulakowski and
the record support Petitioner’s argument that zero is “the obvious number
selection to maximize recording capacity” (Pet. Reply 14–15), and Patent
Owner has not introduced credible evidence or persuasive argument to the
contrary. See also Ex. 2003, 148:18–21 (Dr. Hesselink asserting that
Kulakowski teaches that “the size of each reserved area can be established
by the media manufacturer . . . or . . . the user”). For example, in addition to
the teachings described above, Kulakowski also teaches selecting “how
many spare sectors . . . will be needed . . . based upon the particular
operating environment and conditions.” Ex. 1009, col. 7, ll. 1–13. A user or
manufacture may decide that no sector will be needed. In essence,
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Kulakowski suggests that a user or manufacturer may decide not to create an
unneeded supplemental spare area in some disks and may decide to create
one or more needed spare areas in others. See id. at col. 7, ll. 8–27.
Based on the foregoing discussion, the record evidence, and the
arguments presented, Petitioner has shown by a preponderance of evidence
that the combination of Kawano and Kulakowski renders obvious claims 9
and 16.
E. Obviousness over Kawano, Ohata, and Kulakowski
Petitioner asserts that claims 10, 11, 13, 14, and 17 would have been
obvious over Kawano, Ohata, and Kulakowski. See Pet. 39–49. Claims 10,
11, 13, and 14 depend, directly or indirectly, from independent claim 1, and
claim 17 indirectly depends from independent claim 15.
Petitioner’s explanations and claim charts demonstrate by a
preponderance of evidence that the combination of Kawano, Ohata, and
Kulakowski renders obvious claims 10, 11, 13, 14, and 17. Patent Owner
does not present separate patentability arguments for claims 10, 11, 13, 14,
and 17, and, instead, relies on asserted deficiencies in Petitioner’s showing
regarding unpatentability of claims 1, 9, 15, and 16. See PO Resp. 59–60.
Based on the foregoing discussion, record evidence, and arguments
presented, Petitioner has shown by a preponderance of evidence that the
combination of Kawano, Ohata, and Kulakowski renders obvious claims 10,
11, 13, 14, and 17.

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F. Summary
Based on the foregoing discussion, record evidence, and arguments
presented, Petitioner has shown by a preponderance of evidence that the
asserted prior art renders claims 1, 2, 6–11, and 13–19 unpatentable.
G. Motion to Amend
Patent Owner filed a Motion to Amend the claims of the ’126 patent,
requesting to substitute, respectively, newly proposed claims 20–24 for
issued ’126 patent claims 1, 7, 8, 15 and 19. Mot. Amend 1. The Motion to
Amend is contingent on the panel’s determination that claims 1 and 15 are
unpatentable. Id. As discussed above, the panel has determined, by a
preponderance of evidence, that claims 1, 2, 6–11, and 13–19 are
unpatentable, thereby manifesting the contingency.
As the movant, Patent Owner bears the burden of proof in
demonstrating patentability of the proposed substitute claims over the prior
art in its motion. See 37 C.F.R. § 42.20(c). Proposed amendments also must
be responsive to a ground of unpatentability involved in the trial. 37 C.F.R.
§ 42.121(a)(2)(i).
Patent Owner proposes the following claim 20 as a substitution for
claim 1:
Claim 20 (substitute for original claim 1): A method of
assigning a spare area of an optical recording medium having a
data area, the method comprising:
providing a first mode that assigns a spare area having a
first size and including in which both a primary spare area and a
supplementary spare area are assigned;
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38
providing a second mode that assigns a spare area having
a second size, which is smaller than the first size, and including
only in which a primary spare area is assigned; and
assigning the spare area according to one of either the
first mode or the second mode when the optical recording
medium is formatted.
Mot Amend. 1 (all underlining signifies proposed additions relative to issued
claim 1).7
Proposed substitute method claim 20, and substitute product claim 23
(reproduced below), each essentially recite first and second modes wherein
the first mode assigns a spare area size that is greater than a spare area size
assigned during the second mode. See Mot Amend 2 (claim 23, tracking
claim 20 as a product-by-process claim).
Issued claim 2 depends from claim 1, and in showing that claim 2
would have been obvious, as explained above, Petitioner’s version of
Kawano’s Figure 5, as annotated based on Ohata’s teaching, depicts how the
combination satisfies the required size limitation that Patent Owner argued
was implicit in independent claims 1 and 15. See Pet. Reply 12 (right-hand
side annotated version of Fig. 5 depicts the size of PSA 13 plus SSA 13 in
Format 1 as being larger than either PSA 13 in Formats 2 or 3). Tracking
the analysis of claim 2, Petitioner applies the same prior art combination of
Kawano and Ohata, and a similar analysis, to rebut Patent Owner’s Motion
to Amend regarding patentability of proposed substitute claims 20 and 23.
See Pet. Opp. 6–12. For example, Petitioner provides the same annotated

7 Patent Owner provided incomplete underlining for its proposed additions.
We added double underlining to show the remaining proposed additions.
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version of Figure 5 of Kawano, which shows the proposed modification
based on Ohata, to address issued claim 2 and contingently proposed claims
20 and 23. Compare Pet. Reply 12, with Pet. Opp. 10; see also Pet. Opp. 3
(asserting that “Patent Owner does not amend the claims with any new
limitations not already disclosed in the prior art relied upon for [original]
Challenge #2”), 6–12 (discussing why the proposed size limitations would
have been obvious).
Patent Owner verified during the oral hearing that the issues raised
with respect to its proposed substitute claims 20 and 23 already had been
briefed during the trial of claim 2. For example, Patent Owner’s counsel
noted that Petitioner’s counsel essentially agreed that the issue had been
“fully briefed,” as follows:
MR. LIEBERMAN: Mr. Limbach[, Petitioner’s counsel,] when
he talked about what wasn’t in the motion for leave to amend
admitted in response to the panel’s questioning that at least one
critical issue, which is the focus of their opposition to the
motion for leave to amend, the Ohata/Kawano combination,
was identical or virtually identical to the issues that were fully
briefed in the underlying substantive papers, and I don’t think
Mr. Limbach is trying to ask this panel to set a precedent that
Patent Owner should repeat in 15 pages all of the arguments
that they had in their underlying substantive papers.
If the issue was wholly addressed, as it was, with respect
to claim 2, then there’s no reason to repeat that. We’ve got a
lot of work to do in 15 pages, and what we did was we took
each and every one of the references that they cited and what
happened to be the most important references from the
prosecution history, and I believe that’s exactly what the rules
contemplate, and we dealt with those in 15 pages. To the extent
there are identical issues, it doesn’t really make sense to repeat
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those arguments, and counsel has admitted that they were the
same.
Tr. 107:23–108:15 (emphases added).
There is no dispute, according to characterizations of the issue by the
parties at the oral hearing and in the briefing, that the proposed substitute
claims, as argued in the Motion to Amend, present the same issue as the
ground of unpatentability regarding claim 2.
Patent Owner has the burden of demonstrating that its proposed
claims are patentable. See 37 C.F.R. § 42.20(c). Patent Owner has not
shown a patentable distinction between proposed substitute claims 20 and 23
and original patent claim 2, which we determined to be unpatentable over
the combination of Kawano and Ohata. Therefore, based on the reasons
discussed above with respect to claim 2, Patent Owner has failed to satisfy
its burden of showing that proposed amended claims 20 and 23, which
present the same issue as claim 2, are patentable. See 37 C.F.R. §42.20(c).
Tracking its analysis for claim 2, but specifically addressing the
Motion to Amend, Petitioner explains how modifying Kawano to have equal
sized PSAs in each mode, as set forth in claim 2, while only having a PSA in
the second mode, and a SSA and PSA in the first mode, as set forth in claims
20 and 23, implicitly creates, and renders obvious, a larger spare area in the
first mode (because the total size of PSA and SSA is larger than the size of a
PSA). See Pet. Opp. 9–10. The analysis of claims 2 and 15, applied to
claims 20 and 23, in light of the additional briefing by the parties regarding
the latter claims, reveals that Patent Owner has not shown by a
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41
preponderance of evidence that the proposed claims in the Motion to Amend
are patentable. See generally Pet. Opp.; Mot. Amend.; PO Reply.
Proposed claim 23 follows:
Claim 23 (substitute for original claim 15): An optical
recording medium having a data area in which a spare area is
assigned by:

providing a first mode that assigns a spare area having a
first size and including in which both a primary spare area and a
supplementary spare area are assigned;

providing a second mode that assigns a spare area having
a second size, which is smaller than the first size, and including
only in which a primary spare area is assigned; and

assigning the spare area according to one of either the
first mode or the second mode when the optical recording
medium is formatted.
Mot. Amend 2 (underlining by Patent Owner to signify additions relative to
issued claim 15).
As amended, proposed claim 23, like issued claim 15, is a product-by-
process claim. It requires a recording medium that has a single spare area
assigned––produced according to either a first mode or a second mode
assignment step. In other words, an “optical recording medium” produced
according to a first mode only “assigns . . . both a primary spare area and a
supplementary spare area”––without regard to any size implicated by a
second mode assignment step (which is not employed given that claim 23
requires “assigning the spare area according to one of either the first mode or
the second mode”). Therefore, in addition to the obviousness rationale that
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42
applies to claim 23 based on the discussion of claims 2 and 15 (i.e., the
Kawano/Ohata ground), Kawano’s Format 1 in Figure 5, which includes a
PSA 13 and separate SSA 13, anticipates the product produced according to
the first mode as recited in claim 23. See Ex. 1003, Fig. 5; see also supra
Section II.A (showing and discussing annotated version of Kawano’s Fig. 5).
Patent Owner does not present separate patentability arguments for its
proposed claims 21–22 and 24, which “recit[e] the limitations originally
recited in claims 7 and 8,” and “claim 19.” Mot. Amend. 3. Accordingly,
these proposed amendments are denied for the same reasons that claims 20
and 23 are denied.
For the foregoing reasons, Patent Owner’s Motion to Amend is
denied. See 37 C.F.R. §§ 42.121(a)(2)(i); 37 C.F.R. § 42.20(c).
III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
the claims instituted for inter partes review are unpatentable as follows:
A. Claims 1, 7, 8, 15, and 19 as anticipated by Kawano under
35 U.S.C. § 102;
B. Claim 2 as obvious under 35 U.S.C. § 103 over Kawano and
Ohata;
C. Claims 6 and 18 as obvious under 35 U.S.C. § 103 over Kawano
and Ozaki;
D. Claims 9 and 16 as obvious under 35 U.S.C. § 103 over Kawano
and Kulakowski; and
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E. Claims 10, 11, 13, 14, and 17 as obvious under 35 U.S.C. § 103
over Kawano, Ohata, and Kulakowski.
In addition, Patent Owner failed to meet its burden on its Motion to
Amend.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that, based on a preponderance of the evidence, claims 1,
2, 6–11, and 13–19 of the ’126 patent are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Alan A. Limbach
Brent Yamashita
DLA PIPER LLP (US)
alan.limbach@dlapiper.com
brent.yamashita@dlapiper.com
PATENT OWNER:
Martin Zoltick
Nancy Linck
Jason Shapiro
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
mzoltick@rfem.com
nlinck@rfem.com
jshapiro@rfem.com