“[T]The material in Tsang’s patent that exceeded disclosure in Seagate’s annual report was not relevant to the anticipatory challenge to claims 14 and 17 of the ‘601 patent.
In a precedent-setting decision issued earlier this month, the United States Court of Appeals for the Federal Circuit (CAFC) upheld a decision by the Patent Trial and Appeal Board (PTAB) in an appeal LSI Corporation and Avago Technologies US Inc. merger (LSI) on the PTAB’s finding that the reference cited by LSI in an inter partes review (IPR) did not qualify as prior art. The CAFC said in part that U.S. Patent No. 5,731,768 (“Tsang”) was not “for another” under 35 USC 102(e) for US Pat. 5,859,601 (‘601 patent).
The ‘601 patent involves receiving sequences of input data blocks containing error-prone patterns and then converting each input data block into a corresponding “code word” that circumvents the error-prone pattern. The ‘601 patent works to convert blocks of input data into code words that (1) “impose a limit on the maximum number of consecutive transitions” that are written to the storage device and (2) impose a limit on the number maximum no-transitions. . These two constraints on bit transitions are embodied in the 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 claim 14 of the ‘601 patent is anticipated by US Pat. 5,392,270 (Okada) and US Pat. No. 5,731,768 (Tsang). Okada discloses the conversion of input data blocks using two rules that suppress the occurrence of certain patterns in input data blocks for optical discs. Okada includes Tables 1-9 which include examples of mapping all 8-bit input data blocks to converted 13-bit output data blocks. LSI initially argued that Okada’s disclosure of its second rule preempted claims 14 and 17, but later argued that Tables 8 and 9 were embodiments that preempted claims 14 and 17.
LSI’s second theory held that Tsang anticipated the ‘601 patent and, more specifically, the portions of Tsang disclosed in what is known as Seagate’s Annual Report. Some context about the ‘601 patent is necessary to understand Tsang’s preemption argument. In September 1995, the inventors of the ‘601 patent submitted Seagate’s annual report on their coding to Seagate. Material found in Seagate’s annual report was later incorporated into the ‘601 patent.
In both the ‘601 patent and the Seagate Annual Report, the encoding 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 on a computer storage device. There was no claim that the Seagate Annual Report could be relied upon as prior art for the ‘601 patent, but since the inventors of the ‘601 patent are the sole authors of the Seagate Annual Report, no may be considered “by another” in the Section. 102 even if publicly available before the priority date.
LSI, rather, relied on another available prior art patent, Tsang, to preempt claims 14 and 17 of the ‘601 patent. About four months after receiving Seagate’s annual report, but before the filing date of the ‘601 patent, Dr. Kinhing Tsang, an employee of Seagate, filed a patent application that later became Tsang’s patent. There was no common inventory between the ‘601 patent and Tsang. Tsang revised the encoding process described in Seagate’s annual report that resulted in a higher I/O rate that allowed for more efficient storage.
History of the procedure
In August 2016, the Regents of the University of Minnesota (UMN) filed a lawsuit against LSI for infringement of the ‘601 patent. LSI filed for IPR on the ‘601 patent. When before the PTAB, UMN filed a motion to dismiss LSI’s petition on sovereign immunity grounds. The PTAB denied that motion but stayed proceedings while UMN appealed the PTAB’s decision.
In subsequent proceedings, the UMN dismissed all challenged claims, except claims 13, 14, and 17. The PTAB issued its final decision in April 2021 finding that claim 13 was preempted by Okada. However, the PTAB found that LSI had failed to show that claims 14 and 17 were unpatentable in view of Okada or Tsang.
The PTAB determined that LSI’s argument that the Okada Tables preempt claims 14 and 17 was unavailing because they were not raised on appeal. Moreover, if the arguments were timely, LSI still could not explain how the tables independently comprised the complete realization. Regarding Tsang’s grounds, the PTAB found that LSI had “not met its burden of proving that the parts of Tsang relied upon by anticipation represent the work of another to qualify as prior art under section 102(e)”.
Previous Okada art
The CAFC began its analysis by considering whether the PTAB erred with respect to Okada. LSI argued on appeal that there was no need to challenge the untimeliness determination because the PTAB reached the merits. quoting Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (CAFC, 2016), where the court rejected a similar claim, the CAFC affirmed the PTAB’s finding of untimeliness because LSI waived any challenge to the untimeliness holding after failing to challenge it in its brief ‘opening on appeal and holding the PTAB constitutes an independent entity. reason for his decision.
Earlier art by Tsang
The court then decided whether the PTAB was correct in rejecting LSI’s claim based on Tsang by determining whether the relevant parts of Tsang describe an invention of “another.” Citing a Duncan Parking Techs., Inc. v. IPS Group, Inc. (CAFC, 2019), determining whether a reference is “of another” involves three steps. The PTAB must (1) determine which parts of the reference it relied on as prior status to anticipate the limitations at issue, (2) assess the degree to which those parts were conceived “by another,” and (3) decide whether that other person’s contribution is significant enough to make them a joint inventor.
LSI argued that it relied on Tsang to establish anticipation, thereby satisfying the first prong of the Duncan Parking and because Tsang is a species of the genus described in the ‘601 patent, Tsang preempts claims 14 and 17. The CAFC determined that LSI misconstrued this test, because the inquiry is rather “whether reliance was placed on the invention of Tsang and is relevant to anticipation, or whether it was simply Tsang’s summary of Seagate’s previous annual report that was relied upon and relevant to anticipation.” Tsang’s summary and reliance on Seagate’s annual report do not make Tsang an inventor of the ‘601 patent.
The CAFC continued:
“[T]The petition relied on both portions of Tsang that summarized Seagate’s Annual Report and additional portions of Tsang that were not merely derived from Seagate’s Annual Report, portions that described Tsang’s specific invention. But these additional parts of Tsang are not relevant to anticipation.”
The unique features of Tsang were irrelevant to the anticipation of claims 14 and 17, and the features relevant to anticipation were disclosed in Seagate’s Annual Report and repeated only in the background section of Tsang . The court found that the PTAB did not err in stating that it was satisfied that the petition is based on information disclosed in both Tsang and Seagate’s Annual Report. The CAFC found that the PTAB’s findings that the material in Tsang’s patent exceeding the disclosure in Seagate’s annual report was not relevant to the preemption challenge to claims 14 and 17 of the ‘601 patent and that the presentation of Seagate’s annual report to Tsang was not relevant. make him an inventor of the material.