PTAB

IPR2016-01183

Fujifilm Corp v. Sony Corp

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Data Recording Medium and Apparatus and Method for Managing the Same
  • Brief Description: The ’596 patent discloses a magnetic tape recording system that includes a separate solid-state memory (e.g., a memory chip) attached to the tape cassette. This memory stores "use-recognition information" which a tape drive reads to control write/read operations on the magnetic tape, for instance, by designating the tape as read-only or Write-Once-Read-Many (WORM).

3. Grounds for Unpatentability

Ground 1: Anticipation by Platte - Claims 14-19 are anticipated under 35 U.S.C. §102 by Platte.

  • Prior Art Relied Upon: Platte (International Publication No. WO 93/08568).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Platte discloses every limitation of independent claims 14 and 17. Platte teaches a magnetic tape cassette with an attached memory device that stores management information, including "use-recognition information" that designates a use for the cassette (e.g., blank, prerecorded). Critically, Petitioner asserted that Platte’s disclosure of use information that "can be changed one time... after that, this information is also unalterable" constitutes a "read-only area" as claimed, because it functions as a WORM memory. For dependent claims, Petitioner argued Platte discloses a memory with both rewritable areas (for a user-settable locking bit) and read-only areas (the use-recognition info), as well as an inherent "interface means" for data transmission.
    • Key Aspects: The core of this ground rested on construing the claimed "read-only area" to encompass the WORM-type memory described in Platte, where use-designation information is written once and cannot be subsequently altered by the user.

Ground 2: Anticipation by Sugiyama - Claims 14 and 16 are anticipated under 35 U.S.C. §102 by Sugiyama.

  • Prior Art Relied Upon: Sugiyama (European Patent Publication No. EP 0718840 A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Sugiyama discloses a tape cassette with a built-in memory device, explicitly including a ROM ("Read Only Memory"), which meets the "read-only area" limitation of claim 14. This ROM stores copyright protection information that indicates whether reproduction (copying) is permitted or inhibited, which Petitioner argued constitutes the claimed "use-recognition information." For dependent claim 16, Petitioner asserted that Sugiyama’s disclosure of a condition judgment logic circuit that controls a recording circuit based on the information in the ROM inherently discloses an "interface means" for transmitting that management information.

Ground 3: Obviousness over Sugiyama and Schroeder - Claims 14-16 are obvious over Sugiyama in view of Schroeder.

  • Prior Art Relied Upon: Sugiyama (EP 0718840 A2) and Schroeder (an IEEE publication titled “Improvement of the User Interface for Video Cassette Recorders by ‘Memory-in-Cassette’”).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Sugiyama teaches a tape cassette with a memory storing use-restriction information (e.g., copy-inhibit flags). To the extent Sugiyama was found not to teach "management information for managing writing/reading," Schroeder was argued to supply this element by disclosing a table of contents stored in a memory attached to a cassette for content management. Schroeder also explicitly teaches using an EEPROM, which has both read-only and rewritable characteristics, to store this updatable table of contents, rendering the combination of a read-only area (from Sugiyama) and a rewritable area (from Schroeder) obvious for claim 15. For claim 16, Schroeder explicitly discloses using electrical contacts to access the memory, supplying the "interface means."
    • Motivation to Combine: A POSITA would combine Schroeder’s table of contents with Sugiyama's system to enhance usability. Schroeder explained that storing a table of contents in a separate memory makes using a VCR "much easier and much more comfortable for consumers" by allowing instant access to tape contents without winding the tape.
    • Expectation of Success: The combination involved applying a known data management technique (Schroeder's table of contents) to a known type of media (Sugiyama's tape cassette) to gain a predictable improvement in user convenience.

  • Additional Grounds: Petitioner asserted additional challenges, including: claims 14-19 being obvious over Platte alone; claims 16 and 19 being obvious over Platte in view of Goken (Patent 5,708,545); claims 17-19 being obvious over Sugiyama in view of Platte (with or without Schroeder); and claims 14-19 being obvious over combinations involving Solhjell (Patent 7,123,444). These grounds relied on similar arguments about combining known memory features and interfaces to achieve predictable results.

4. Key Claim Construction Positions

  • "read-only area in said memory" (claims 14, 17): Petitioner proposed this term means "an area of memory which the user can only read from or can write to only once (for example, a WORM memory), or which is treated as such." This construction was critical to the anticipation argument over Platte, which disclosed making use-information "unalterable" after a one-time change, effectively creating a WORM area.
  • "interface means for transmitting data of the management information" (claims 16, 19): Petitioner argued this is a means-plus-function limitation under pre-AIA 35 U.S.C. §112, ¶6. The corresponding structure in the ’596 patent’s specification was identified as an electrical contact or an antenna (and their equivalents). This construction was important for mapping references like Goken and Schroeder, which explicitly disclose using such contacts or antennas with memory-in-cassette systems.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 14-19 of the ’596 patent as unpatentable.