Board IPR decision of no anticipation affirmed (untimely arguments, portions of prior art relied upon not “by another”)

LSI Corporation and Avago Techs. U.S. Inc. v. Regents of the University of Minnesota

Docket No. 2021-2057 (IPR2017-01068) (


August 11, 2022

Brief Summary:   Board decision that LSI did not timely raise arguments or show portions of prior art patent relied upon was “by another” affirmed.

Summary:  UMN sued LSI and Avago (“LSI”) for infringement of US 5,859,601 and LSI petitioned the USPTO (“Board”) for IPR of the ‘601 patent naming inventors J. Moon and B. Brickner relating to computer storage devices using maximum transition run (“MTR”) coding.  The Board instituted IPR of claims 13, 14 and 17 on anticipation theories based on US 5,392,270 (“Okada” (“Ground 1”)) and US 5,731,768 (“Tsang” (“Ground 2”)), and found claim 13 unpatentable in view of Okada but claims 14 and 17 not unpatentable.  The Board held “LSI failed to timely raise its theory that Tables 8 and 9 of Okada anticipate claims 14 and 17 and that, in any event, Tables 8 and 9 did not anticipate” (it first relied on different tables) and that Tsang was not “by another” under 35 USC section 102(e).  The FC panel affirmed the Board’s conclusion that LSI’s arguments based on Okada were not timely raised and therefore forfeited (Intell. Bio-Sys., FC 2016; Gen. Access, FC 2020; SmithKline, FC 2006).  The FC panel opinion explains that the ‘601 patent embodied material in the “Seagate Annual Report” listing only Dr. Moon and Dr. Brickner as authors but also that “[i]t is not clear whether the Seagate Annual Report was publicly available before the ’601 patent’s priority date”, although since both have the same authors “it is not ‘by another’ under § 102 even if it were publicly available before the priority date.”  Thus, LSI relied on Tsang to anticipate claims 14 and 17.  It also explained that “[a]bout four months after receiving the Seagate Annual Report from Dr. Moon and Dr. Brickner and before the earliest filing date of the ’601 patent (April 5, 1996), Dr. Kinhing P. Tsang, an employee at Seagate, filed an application on January 31, 1996, that would later mature into the Tsang patent” that does not list Dr. Moon and Dr. Brickner as inventors.  Therefore, the Tsang patent “is prior art on its face” under section 102(e).  Tsang did revise the MTR coding in a manner “not disclosed or specifically claimed in the ’601 patent” (see FN2 explaining the FC did not “decide whether the claims of the ’601 patent are sufficiently broad to cover Tsang’s specific embodiments”).  During the IPR, “UMN moved to dismiss LSI’s petition on the ground of state sovereign immunity” which the Board denied, after which SCOTUS denied UMN’s certiorari petition.  The Board concluded LSI’s petition based on Tang “relies solely on material disclosed in the Seagate Annual Report for anticipation of the challenged claims” and did not therefore show it was the work “of another” as that report was prepared by Dr. Moon and Dr. Brickner.  The FC panel explained that a patent applicant/patentee may overcome anticipation by “establish[ing] that the relevant disclosure [in the prior-art reference] describes their own invention” (Duncan Parking, FC 2019; Google, FC 2022 (regarding obviousness)).  The FC panel agreed with the Board that the portions of the Tsang patent on which LSI relied were from the Seagate Report (not the work “of another”) and affirmed the Board decision.

This entry was posted in Anticipation (35 USC 102), Inter Parties Review (IPR), Inventorship, IPR, Obviousness. Bookmark the permalink.

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