PTAB

IPR2019-00622

Huawei Technologies Co., Ltd. v. Maxell Ltd.

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1. Case Identification

2. Patent Overview

  • Title: INFORMATION RECORDING MEDIUM, ENCLOSING CASING OF INFORMATION RECORDING MEDIUM, AND INFORMATION RECORDING APPARATUS USING THE SAME
  • Brief Description: The ’068 patent describes techniques for recording data on an optical disc. The invention addresses problems that occur when a recording session ends prematurely (e.g., due to power loss from a battery), which can prevent necessary file management information from being written. The patent proposes writing "intermediate information" to the disc when a power decrease is detected, allowing final file management information to be derived later and preserving access to the recorded data.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-2 under §102 over Obata

  • Prior Art Relied Upon: Obata (English Translation of Japanese Patent Publication No. H05-054517A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Obata discloses every element of claims 1 and 2. Obata describes a battery-powered optical disc recording device that addresses data loss from premature power failure. It teaches monitoring the battery's voltage and, when the voltage drops below a predetermined threshold, "forcibly" recording Table of Contents (TOC) information to the disc. Petitioner contended that this TOC information is the claimed "managing information" and that detecting a voltage drop in a battery-powered device is equivalent to detecting a decrease in "electric power" as recited in the claims. The recorded TOC in Obata serves to manage the recorded audio tracks, enabling their playback even if the recording session was not properly completed.

Ground 2: Obviousness of Claims 1-2 under §103 over Obata in view of Clegg

  • Prior Art Relied Upon: Obata (English Translation of Japanese Patent Publication No. H05-054517A) and Clegg (Patent 5,394,089).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Obata taught nearly all claim elements by disclosing a system that writes managing information (TOC) to a disc upon detecting a low battery voltage. To the extent that detecting a voltage drop was not considered identical to detecting a power decrease, Clegg was introduced. Clegg taught a sophisticated battery monitoring system that explicitly computed the "instantaneous power delivered by the battery" by measuring both voltage and current.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine Clegg's power monitoring system with Obata's recording device for several reasons. First, it would provide a more accurate and reliable method for determining when to write the TOC data, improving on Obata's simpler voltage-only detection. This would better predict impending power loss and reduce false positives caused by temporary voltage sags (e.g., at the start of a recording operation), a known issue. Second, it represented the application of a known technique (Clegg's advanced monitoring) to a known system (Obata's recorder) to achieve the predictable result of improved battery management.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining the two systems involved substituting one known type of battery monitoring circuit for another to improve performance without altering the fundamental operation of Obata's device.

Ground 3: Anticipation of Claims 1-2 under §102 over Katai

  • Prior Art Relied Upon: Katai (English Translation of Japanese Patent Publication No. H08-249789A).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Katai, like Obata, independently anticipates claims 1 and 2. Katai discloses a battery-powered recording/playback device for a magneto-optical disc. To prevent data loss from battery depletion while avoiding false alarms from temporary voltage drops, Katai's system samples the battery voltage at regular intervals. If two consecutive voltage samples fall below a predetermined threshold (Vth), the device determines the battery capacity is insufficient, accesses user table of contents ("U-TOC") information from RAM, and writes it to a dedicated area on the disc before stopping the recording operation. Petitioner asserted that Katai’s U-TOC is the claimed "managing information" and its method of detecting a sustained voltage drop is a direct disclosure of detecting a decrease in electric power supplied by the battery.

  • Additional Grounds: Petitioner asserted alternative obviousness challenges based on Obata alone (Ground 2), Katai alone (Ground 5), and Katai in view of Clegg (Ground 6). These grounds relied on similar arguments that detecting a voltage drop inherently teaches or suggests detecting a power drop for a POSITA, or that combining with Clegg was a predictable design choice for improved performance.

4. Key Technical Contentions (Beyond Claim Construction)

  • Voltage Drop vs. Power Decrease: A central technical argument underpinning all grounds was that, for a POSITA in the relevant timeframe, detecting a decrease in battery voltage below a threshold would have been understood as being directly indicative of a decrease in the power supplied by that battery. Petitioner argued that the relationship between voltage and power is a fundamental principle of electrical engineering. Therefore, a prior art reference teaching the monitoring of battery voltage to trigger an action (like writing a TOC file) inherently teaches the substance of the claims, which recite detecting a decrease in power to trigger a similar action.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1 and 2 of the '068 patent as unpatentable.