“[T]He held that the material in the Tsang patent that bypassed the Seagate annual report disclosure was not relevant to the anticipation challenge to claims 14 and 17 of the ‘601 patent.
In a preliminary ruling issued earlier this month, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled against LSI Corp. and Avago Technologies US Inc. (LSI) affirmed the decision of the Patent Trial and Appeal Board (PTAB) on appeal. The PTAB found that LSI’s cited reference in inter-party review (IPR) did not qualify as prior art. CAFC held in part that US Patent No. 5,731,768 (“Tsang”) US Patent No. 5,859,601 (the ‘601 patent) is not “by another” under 35 USC 102(e).
The ‘601 patent involves receiving sequences of input data blocks that contain error-prone patterns and then converting each input data block into a “codeword” that blocks the error-prone pattern. The ‘601 patent works to convert input data blocks into codewords that (1) “apply a limit on the maximum number of transitions” transcribed to a storage device and (2) impose a limit on the maximum number of non-transitions. . These two limitations on bit transitions are embodied in assertions with the ‘j’ constraint and the ‘k’ constraint. Claim 13 serves as the most general claim with these limitations while claim 14 narrows the limitations and claim 17 further narrows claim 14.
LSI argued that the claims of the ‘601 patent are anticipated by 14 US Patent No. 5,392,270 (Okada) and US Patent No. 5,731,768 (Tsang). Okada discloses converting input data blocks using two rules that eliminate the occurrence of certain patterns in input data blocks for optical discs. Okada includes Tables 1-9 which contain an example mapping of all 8-bit input data blocks to 13-bit converted output data blocks. LSI originally argued that Okada’s Second Rule disclosure anticipated claims 14 and 17, but later argued that Tables 8 and 9 were embodiments of anticipated claims 14 and 17.
LSI’s second theory argued that Tsang anticipated the ‘601 patent and, in particular, that portions of Tsang were disclosed in what is known as the Seagate Annual Report. Some context regarding the ‘601 patent is necessary to understand the Tsang anticipation argument. In September 1995, the inventors of the ‘601 patent submitted a Seagate Annual Report on their coding to Seagate. The material found in the Seagate annual report was later embodied in the ‘601 patent.
In both the ‘601 patent and the Seagate Annual Report, the coding process takes an input sequence of binary data and encodes it in a way that eliminates error-prone patterns of consecutive bit transitions before saving the encoded sequence to a computer storage device. There was no dispute that the Seagate Annual Report could be relied upon as prior art to the ‘601 patent but because the inventors of the ‘601 patent were the sole authors of the Seagate Annual Report, it could not be considered “by another” under Sec. 102 even if publicly available before the priority date.
LSI, instead, relied on another available prior art patent, Tsang, to predicate claims 14 and 17 of the ‘601 patent. About four months after receiving the Seagate annual report, but before the ‘601 patent filing date, Dr. Kinhing Tsang, an employee at Seagate, filed a patent application that later became the Tsang patent. There was no common inventor between the ‘601 patent and Tsang. Tsang modified the coding process outlined in the Seagate annual report to allow for a higher input-output rate allowing for more efficient storage.
In August 2016, the Regents of the University of Minnesota (UMN) brought suit against LSI for infringement of the ‘601 patent. LSI filed for IPR of the ‘601 patent. When before the PTAB, UMN moved to dismiss LSI’s petition on the grounds of sovereign immunity. The PTAB denied the motion but stayed the proceedings while UMN appealed the PTAB’s decision.
In the ensuing proceedings, UMN rejected all challenged claims except claims 13, 14, and 17. The PTAB issued its final decision in April 2021 on claim 13 as expected by Okada. However, LSI has not shown that the PTAB held that claims 14 and 17 are unmeritorious with respect to Okada or Tsang.
The PTAB determined that LSI’s argument that Okada’s Tables did not raise claims 14 and 17 on appeal was moot because they were not raised on appeal. Moreover, even if the arguments were timely, LSI still fails to explain how the tables independently contain the full embodiment. Regarding the Tsang ground, the PTAB held that LSI “has not satisfied its burden to prove the portions of Tsang relied upon to represent anticipation of another’s work to qualify as prior art under section 102(e).”
Okada prior art
The CAFC began its analysis by considering whether the PTAB erred with respect to Okada. LSI argued on appeal that they did not need to challenge the untimely determination because the PTAB reached the merits. quoting Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (CAFC, 2016), where the Court rejected a similar contention, the CAFC affirmed the PTABs finding of untimeliness because LSI waived any challenge to the untimeliness holding after LSI failed to challenge it in the opening brief on appeal, and the PTAB’s holding is an independent one. Basis for your decision.
The court then turned to whether the PTAB was correct in rejecting LSI’s claim based on Tsang by determining whether the relevant portions of Tsang describe an invention “by another.” quoting Duncan Parking Techs., Inc. v. IPS Group, Inc. (CAFC, 2019), determining whether a reference is “by another” involves three steps. The PTAB must (1) determine which portions of the prior art reference it relied upon to infer the limitations at issue, (2) evaluate the degree to which those portions are contemplated by the “other,” and (3) decide whether that other person’s contribution is . Important enough to award them a joint inventor.
LSI argued that it relied on Tsang to establish anticipation, thus finding the first prong. Duncan Parking Since the test and Tsang were species of the genus described in the ‘601 patent, Tsang assumed claims 14 and 17. The CAFC determined that LSI misunderstood this test, because the inquiry instead “relied on and was relevant to Tsang’s invention. Anticipation, or whether it was Tsang’s summary of an earlier Seagate annual report that relied on and was relevant to the anticipation.” Reliance on Tsang’s summary and Seagate annual report does not make Tsang an inventor on the ‘601 patent.
The CAFC continued:
“[T]He relied not only on Tsang’s passages summarizing the Seagate Annual Report and portions of the Seagate Annual Report describing Tsang’s particular inventions, but also on additional passages from Tsang. But those additional parts of Tsang are not relevant to anticipation.”
Tsang’s unique features were irrelevant to the anticipation of claims 14 and 17, and features relevant to anticipation were disclosed in the Seagate annual report and repeated only in the background section of Tsang. The court held that the PTAB did not err in persuading the petition that it relied on information disclosed in both Tsang’s and Seagate’s annual reports. The CAFC found the PTAB’s findings that material in the Tsang patent that exceeded the disclosures in the Seagate Annual Report were not relevant to the anticipatory challenge to claims 14 and 17 of the ‘601 patent and did not preempt the Seagate Annual Report in Tsang. Make him the inventor of the material.