United States Court of Appeals 

for the Federal Circuit ______________________ 

LSI CORPORATION, AVAGO TECHNOLOGIES U.S. 

INC.,

Appellants

v.

REGENTS OF THE UNIVERSITY OF MINNESOTA,

Appellee

______________________ 

2021-2057

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2017-

01068.

______________________ 

Decided: August 11, 2022

______________________ 

KRISTOPHER L. REED, Kilpatrick Townsend & Stockton 

LLP, Dallas, TX, argued for appellants. Also argued by 

EDWARD JOHN MAYLE, Denver, CO.

 PATRICK JOSEPH MCELHINNY, K&L Gates LLP, Pittsburgh, PA, argued for appellee. Also represented by MARK 

G. KNEDEISEN, ANNA SHABALOV, CHRISTOPHER MICHAEL 

VERDINI; THEODORE J. ANGELIS, Seattle, WA.

 ______________________ 

Before DYK, REYNA, and HUGHES, Circuit Judges.

Case: 21-2057 Document: 40 Page: 1 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

2

DYK, Circuit Judge.

The Regents of the University of Minnesota (“UMN”) 

sued LSI Corporation and Avago Technologies U.S. Inc.

(collectively, “LSI”) for infringement of U.S. Patent No. 

5,859,601 (“’601 patent”) in the District of Minnesota. LSI 

petitioned the Patent Trial and Appeal Board (“Board”) for 

inter partes review of the ’601 patent, and the Board instituted review on claims 13, 14, and 17 on anticipation theories based on two prior-art references, U.S. Patent Nos. 

5,392,270 (“Okada”) and 5,731,768 (“Tsang”). The Board 

concluded that claim 13 was unpatentable in view of Okada 

and that claims 14 and 17 were not shown to be unpatentable in view of either reference. In finding that LSI failed 

to show unpatentability of claims 14 and 17, the Board held 

that 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. As to Tsang, the 

Board held that the reference was not prior art because it 

was not “by another” under 35 U.S.C. § 102(e).1 LSI appeals the Board’s decision as to claims 14 and 17. We affirm. 

BACKGROUND

I 

The ’601 patent addresses error rates related to recording data to computer storage devices. Some input data sequences contain “error-prone binary data patterns.” ’601 

patent, col. 2, ll. 40–46. Dr. Jaekyun Moon, a UMN professor at the time, and Dr. Barrett J. Brickner, a UMN graduate student at the time, developed maximum transitionrun (“MTR”) coding to reduce these error-prone patterns, 

and their work became the basis for the ’601 patent. Id. 

MTR coding as described in the ’601 patent involves 

1 Because the ’601 patent was filed before the America Invents Act (“AIA”), we use the pre-AIA statute.

Case: 21-2057 Document: 40 Page: 2 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

3

receiving sequences of input data blocks with error-prone 

patterns and converting (i.e., encoding) each input data 

block into a corresponding “codeword” that avoids the error-prone patterns. Id. at col. 4, l. 46–col. 5, l. 20. Dr. Moon 

and Dr. Brickner understood that the number of consecutive bit transitions in the input data sequence, i.e., binary 

bit transitions from 0 to 1 or 1 to 0, was an important 

source of error. Thus, MTR coding as described in the ’601 

patent converts input data blocks into codewords that (1) 

“impose[] a limit on the maximum number of consecutive 

transitions” that are written to a computer storage device, 

id. at col. 2, ll. 59–61, and (2) impose a limit on the maximum number of non-transitions, id. at col. 3, ll. 16–17; col. 

10, ll. 47–59. 

These two limitations on bit transitions are embodied 

in the claims with the ‘j’ constraint limiting the number of 

consecutive transitions and the ‘k’ constraint limiting the 

number of consecutive non-transitions. Independent claim 

13 states:

A method for encoding m-bit binary datawords into 

n-bit binary codewords in a recorded waveform, 

where m and n are preselected positive integers 

such that n is greater than m, comprising the steps 

of:

receiving binary datawords; and

producing sequences of n-bit codewords;

imposing a pair of constraints (j;k) on the encoded 

waveform; 

generating no more than j consecutive transitions 

of said sequence in the recorded waveform such 

that j≧2; and

generating no more than k consecutive sample periods of said sequences without a transition in the 

recorded waveform.

Case: 21-2057 Document: 40 Page: 3 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

4

Id. at col. 10, ll. 47–59. Dependent claim 14 narrows claim 

13 with the limitation, “wherein the consecutive transition 

limit is defined by the equation 2≦j<10.” Id. at col. 10, ll. 

60–61. Claim 17 narrows claim 14 with limitations directed to an additional format for representing data and 

transitions. Id. at col. 11, ll. 1–6. Both parties treat claim 

17 as standing or falling with claim 14, so we focus only on 

claim 14. 

II

LSI contends that claim 14 in the ’601 patent is anticipated by Okada and Tsang. Okada teaches converting input data blocks using two rules that eliminate the 

occurrence of certain patterns in the input data blocks for 

use with optical disks. Okada, col. 3, ll. 36–68. Okada’s 

Rule 1 provides, “A pattern after conversion consists of at 

least one ‘0’ and an even number of consecutive ‘1’.” Id. at 

col. 3, ll. 64–65. Okada’s Rule 2 provides, “A pattern after 

conversion includes a section consisting of ‘01010’ and a 

section consisting of at least one ‘0’ or an even number of 

consecutive ‘1’.” Id. at col. 3, ll. 66–68. Okada’s Tables 1–9 

include an example mapping of all 8-bit input data blocks 

to 13-bit converted output data blocks based on Okada’s 

two rules. Id. at col. 4, ll. 1–9. LSI originally contended 

that Okada’s disclosure of Rule 2 itself anticipates claims 

14 and 17 of the ’601 patent, but later argued instead that 

Tables 8 and 9 were embodiments that anticipate claims 

14 and 17. 

III 

LSI’s second theory of anticipation relies on Tsang, and 

particularly those portions of Tsang disclosed earlier in 

what is known as the Seagate Annual Report. Some background on the ’601 patent is necessary to understand the 

Tsang anticipation theory. On September 26, 1995, Dr. 

Moon and Dr. Brickner submitted the Seagate Annual Report about MTR coding to Seagate, an industry collaborator 

on their research. The material in the Seagate Annual 

Case: 21-2057 Document: 40 Page: 4 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

5

Report was later embodied in the ’601 patent. It is not clear 

whether the Seagate Annual Report was publicly available 

before the ’601 patent’s priority date.

In both the Seagate Annual Report and the ’601 patent, 

Dr. Moon and Dr. Brickner describe MTR coding that takes 

an input sequence of binary data and encodes or converts 

it in a way that eliminates error-prone patterns of consecutive bit transitions before saving or storing the encoded 

sequence in a computer storage device. See ’601 patent, col. 

1, ll. 16–55; col. 2, l. 40–col. 3, l. 17; J.A. 3550–57. MTR 

coding as described in both the ’601 patent and the Seagate 

Annual Report includes the two limitations on consecutive 

bit transitions and non-transitions. ’601 patent, col. 2, ll. 

59–61; col. 3, ll. 16–17; col. 10, ll. 47–59; J.A. 3553, 3556. 

To accomplish the encoding and achieve the two limitations 

on transitions and non-transitions, the ’601 patent and the 

Seagate Annual Report describe a “fixed-length block 

code[]” that maps every 4-bit input data block to a unique 

5-bit codeword. ’601 patent, col. 4, l. 61–col. 5, l. 18; see 

J.A. 3553, 3556–57. MTR coding that maps 4-bit input 

data blocks to 5-bit codewords is a rate 4/5 code.

Here, there is no contention that the Seagate Annual 

Report can be relied upon as prior art to the ’601 patent 

since Dr. Moon and Dr. Brickner are both listed as the only

authors of the Seagate Annual Report and as the only inventors of the ’601 patent. Because the Seagate Annual 

Report has the same authors, it is not “by another” under 

§ 102 even if it were publicly available before the priority 

date. Rather, LSI relies on another prior-art patent, 

Tsang, to anticipate claims 14 and 17.

About 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. Dr. Moon and Dr. Brickner were not listed 

Case: 21-2057 Document: 40 Page: 5 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

6

as inventors on the Tsang patent. Under § 102(e), the 

Tsang patent is prior art on its face to the ’601 patent because Dr. Tsang is the only listed inventor on the patent 

and is not a listed inventor on the ’601 patent. The Tsang 

patent described MTR coding as previously existing in the 

Background section of the patent and directly referenced 

the Seagate Annual Report. Tsang, col. 2, ll. 22–44.

Based on the description of MTR coding by Dr. Moon 

and Dr. Brickner in the Seagate Annual Report, Tsang revised the MTR coding to create a specific codeword strategy 

that selects the codeword for a given dataword depending

on the previous dataword-codeword mapping, an invention 

not disclosed or specifically claimed in the ’601 patent.2 

This type of system is known as a state-dependent system, 

and it allowed Tsang to implement MTR coding with higher 

input-output rates, which allows for more efficient use of 

storage. For example, Tsang described and claimed an implementation with 6-bit input data blocks and 7-bit output

codewords, i.e., a 6/7 rate, instead of the 4/5 rate described 

in the Seagate Annual Report and the ’601 patent. Dr. 

Tsang described a specific implementation that built on 

MTR coding that limited consecutive transitions and nontransitions as described by Dr. Moon and Dr. Brickner in 

the Seagate Annual Report. 

IV

On August 25, 2016, UMN sued LSI in the District of

Minnesota for infringement of the ’601 patent. The case 

was later transferred to the Northern District of California 

under 28 U.S.C. § 1406(a). Regents of the Univ. of Minn. v. 

2 Because we affirm the Board’s conclusion that 

Tsang’s specific embodiments are not relevant to claims 14 

and 17 for anticipation, we need not decide whether the 

claims of the ’601 patent are sufficiently broad to cover 

Tsang’s specific embodiments. 

Case: 21-2057 Document: 40 Page: 6 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

7

LSI Corp., No. 16-CV-2891 (WMW/SER), 2018 WL 

6497034, at *4 (D. Minn. Feb. 1, 2018). 

Within one year of the filing of the infringement action, 

on March 10, 2017, LSI petitioned for inter partes review

of the ’601 patent. Before the Board, UMN moved to dismiss LSI’s petition on the ground of state sovereign immunity. The Board denied UMN’s motion to dismiss, but

it stayed proceedings on the merits while UMN appealed. 

This court affirmed the Board’s sovereign-immunity decision, holding that “state sovereign immunity does not apply 

to these proceedings.” Regents of the Univ. of Minn. v. LSI 

Corp., 926 F.3d 1327, 1330 (Fed. Cir. 2019). The Supreme 

Court denied UMN’s certiorari petition, and thereafter the 

Board lifted the stay. 

In the ensuing proceedings before the Board, UMN disclaimed all challenged claims except for method claims 13, 

14, and 17. The Board instituted review on the three 

claims, on LSI’s Ground 1, alleging anticipation under 35 

U.S.C. § 102(b) by Okada, and Ground 2, alleging anticipation under § 102(e) by Tsang.

On April 14, 2021, the Board issued its final written 

decision finding claim 13 anticipated by Okada (a determination that UMN does not contest on appeal). However, 

the Board determined that LSI had not shown that claims 

14 and 17 were unpatentable in view of Okada or Tsang. It 

concluded that Okada’s Rule 2 did not anticipate claims 14 

and 17 because the imposed limit on consecutive transitions (the ‘j’ constraint in the challenged claims) from 

Okada is not less than 10 as required by the limitation in 

claim 14 that ‘j’ satisfy 2≦j<10. The Board determined that 

LSI first raised a new theory—that Okada’s partial mappings in Tables 8 and 9 independently anticipate claims 14 

and 17—at oral argument and that this theory was “improper as untimely.” J.A. 31. The Board then explained 

that, “[e]ven if [LSI]’s argument were timely,” LSI had 

failed to explain “how each of Tables 8 and 9, 

Case: 21-2057 Document: 40 Page: 7 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

8

independently, comprises a complete embodiment such 

that Tables 8 and 9, by themselves, and without any rearrangement, anticipate.” J.A. 31–32.

Turning to the Tsang ground, the Board determined 

that Tsang is not “by another” under § 102(e).3 The Board 

found that, despite citing to various portions of Tsang,

LSI’s “[p]etition relies solely on material disclosed in the 

Seagate Annual Report for anticipation of the challenged 

claims.” J.A. 37–38 (emphasis added). For example, the 

petition explained how “Dr. Tsang set forth a key finding 

from Seagate’s research—a finding previously presented in 

the Seagate Annual Report: . . . ‘The upper bound of the 

MTR=2 code rate [imposing a limit of two on consecutive 

bit transitions] in which k=∞ has been found to be 0.8791 

as indicated in the Seagate Annual Report.’” J.A. 132 

(quoting Tsang, col. 2, ll. 36–38). Thus, the Board concluded that LSI had “not satisfied its burden to prove the 

portions of Tsang relied upon for anticipation represent the 

work of another to qualify as prior art under § 102(e).” 

J.A. 44.

LSI appeals. We have jurisdiction under 28 U.S.C.

§ 1295(a)(4).

3 Section 102(e) provides:

A person shall be entitled to a patent unless— 

(e) the invention was described in—(1) an application for patent, published under section 122(b), by 

another filed in the United States before the invention by the applicant for patent or (2) a patent 

granted on an application for patent by another 

filed in the United States before the invention by 

the applicant for patent . . . . 

Case: 21-2057 Document: 40 Page: 8 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

9

DISCUSSION

We review the Board’s legal determinations de novo 

and any underlying factual findings for substantial evidence. Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 

F.3d 1347, 1357 (Fed. Cir. 2019). “[W]hether a reference is 

a work of others . . . is, like that of inventorship, a question 

of law based on underlying facts.” Allergan, Inc. v. Apotex 

Inc., 754 F.3d 952, 969 (Fed. Cir. 2014) (citing Ethicon, Inc. 

v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 

1998)).

I 

First, we consider whether the Board erred with respect to Okada. As noted earlier, LSI originally contended 

that Okada’s disclosure of Rule 2 anticipates claims 14 and 

17, but LSI does not now argue that Rule 2 anticipates. Rather, LSI argues that Tables 8 and 9 of Okada’s example 

mapping of 8-bit input data blocks independently satisfy 

the claimed requirements. The Board concluded that this 

theory was both untimely (because it was raised for the 

first time at the Board hearing) and unpersuasive (because 

Tables 8 and 9 are not complete embodiments separate 

from Tables 1–7).

Before this court, LSI did not challenge the Board’s determination that LSI’s argument about Okada’s Tables 8 

and 9 was “improper as untimely.” J.A. 31. At oral argument, LSI indeed admitted that it did not appeal the 

Board’s untimeliness determination. However, LSI argues 

that it was not necessary to challenge the Board’s untimeliness determination because the Board nevertheless 

reached the merits. 

In Intelligent Bio-Systems, Inc. v. Illumina Cambridge 

Ltd., we rejected a similar contention, holding the Board’s 

rejection of arguments on the ground that they were newly 

raised in a reply brief was not an abuse of discretion even 

Case: 21-2057 Document: 40 Page: 9 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

10

though the Board went on to address the merits. 821 F.3d 

1359, 1369–70 (Fed. Cir. 2016). We explained:

Because we conclude that the reply brief and accompanying declaration exceeded the scope of the 

reply under § 42.23(b), and, therefore, that the 

Board did not abuse its discretion in excluding 

those documents, we need not . . . review the 

Board’s conclusion that, even if proper, the arguments contained in the reply brief are unpersuasive for the same reason it found the arguments in 

the petition unpersuasive. 

Id. at 1370 (emphasis added); see also Gen. Access Sols., 

Ltd. v. Sprint Spectrum L.P., 811 F. App’x 654, 659 n.3

(Fed. Cir. 2020) (“Because we find that the Board did not 

abuse its discretion in declining to address the improperly 

incorporated documents, we do not reach the question of 

whether the Board erred in its alternative holding that 

evaluated those materials . . . .”). 

We affirm the Board’s conclusion of untimeliness because LSI forfeited any challenge to the untimeliness holding by failing to challenge it in its opening brief on appeal, 

and the Board’s timeliness holding constitutes an independent ground for its decision. E.g., SmithKline Beecham 

Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006) 

(“Our law is well established that arguments not raised in 

the opening brief are waived.”).

II

We next consider whether the Board erred in rejecting 

LSI’s anticipation theory based on Tsang. This requires us 

to determine whether the relevant portions in Tsang relied 

upon by LSI describe an invention “by another.” A claimed 

invention is anticipated if “the invention was described in 

. . . an application for patent, published under section 

122(b), by another filed in the United States before the invention by the applicant for patent.” § 102(e) (emphasis 

Case: 21-2057 Document: 40 Page: 10 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

11

added). A patent applicant or owner may overcome anticipation under § 102(e) by “establish[ing] that the relevant 

disclosure [in the prior-art reference] describes their own 

invention,” In re Costello, 717 F.2d 1346, 1351 (Fed. Cir. 

1983), i.e., that it is not “by another,” § 102(e). Determining whether a reference is “by another” involves three 

steps:

[T]he Board must (1) determine what portions of 

the reference patent were relied on as prior art to 

anticipate the claim limitations at issue, (2) evaluate the degree to which those portions were conceived “by another,” and (3) decide whether that 

other person’s contribution is significant enough, 

when measured against the full anticipating disclosure, to render him a joint inventor of the applied 

portions of the reference patent.

Duncan Parking, 914 F.3d at 1358.

LSI argues that it relied on Tsang to establish anticipation (and not the Seagate Annual Report), thus satisfying the first prong of the Duncan Parking test, and that 

since (allegedly) Tsang is a species of the genus described 

in the ’601 patent, it anticipates claims 14 and 17. LSI misunderstands the relevant test. The inquiry is not simply 

whether LSI relied on Tsang and whether Tsang’s disclosures anticipate. The question is whether the invention of 

Tsang was relied upon and relevant to anticipation, or 

whether it was simply Tsang’s summary of the earlier 

Seagate Annual Report that was relied upon and relevant 

to anticipation. Tsang’s summary of, and reliance on, the 

earlier work of Dr. Moon and Dr. Brickner does not make 

Tsang an inventor of the earlier work. 

In the related context of obviousness, we recently explained that “[t]he portions of the reference being considered must be relied upon and relevant to establishing 

obviousness.” Google LLC v. IPA Techs. Inc., 34 F.4th 

1081, 1086 n.3 (Fed. Cir. 2022). “Otherwise, a party 

Case: 21-2057 Document: 40 Page: 11 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

12

challenging a patent could artificially alter the inventive 

entity for comparison by citing extraneous portions of a 

multi-inventor prior art reference, thereby making it ‘by 

others’ even if the portions of the reference necessary for 

establishing obviousness had the same inventive entity as 

the challenged patent.” Id.

Here, the petition relied both on portions of Tsang that 

summarized the Seagate Annual Report and on additional 

portions of Tsang that were not merely derivative of the 

Seagate Annual Report—portions describing Tsang’s specific invention. But those additional portions of Tsang are

not relevant to anticipation. The Board properly concluded 

that the two Tsang embodiments, which included the specific 5/6 and 6/7 rates that were different from the 4/5 rate 

disclosed by Dr. Moon and Dr. Brickner in the Seagate Annual Report, were not relevant to the scope of the challenged claims because “Tsang’s 5/6 and 6/7 MTR rates . . . 

do not refer to the values of constraints j and k,” which impose limits on the number of consecutive transitions and 

non-transitions in the challenged claims. J.A. 38. Thus, 

Tsang’s 5/6 and 6/7 rates address characteristics that “are 

not limited by the challenged claims” and are not relevant 

to the limitations in the challenged claims. Id. Indeed, 

LSI’s briefs on appeal take pains to repeatedly remind us 

that the invention of Tsang is quite different from the ’601 

patent. Appellant’s Br. 36 (Tsang’s state-dependent 

method results “in efficiencies and higher rates that could 

not be realized using the block-code approach disclosed in 

the ’601 patent specification.”); id. at 37 (Tsang disclosed 

“two encoding methods that are impossible to implement 

using the block-code approach disclosed in the ’601 patent 

specification,” and Tsang’s methods “make available additional ‘valid’ codewords that are not available with the 

block-code method.”); id. at 38 (“Tsang’s invention represents a significant advance over the simple block-code 

method disclosed in the specification of the ’601 patent.”); 

id. at 42 (“Tsang expressly explains that [Tsang’s] 

Case: 21-2057 Document: 40 Page: 12 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

13

inventions were not made—and could not have been 

made—using a ‘one-to-one block mapping’ method like that 

disclosed in Figure 6 of the ’601 Patent. . . . Tsang’s method 

is more efficient than the block-code method because it 

stores data more densely on a disk.”); id. at 42–43 (Tsang’s 

“inventions were not made using a block-code method like 

the one disclosed in the specification of the ’601 Patent,” 

and “do not utilize a block code method like the 4/5 code 

disclosed in the ’601 specification.”). 

It is thus undisputed that these unique features of 

Tsang were irrelevant to anticipation of the invention of 

claims 14 and 17, and that the concept of limitations on the 

number of consecutive transitions and non-transitions (the 

j and k constraints in the challenged claims) was disclosed 

in the Seagate Annual Report and merely repeated in 

Tsang’s Background section. Tsang, col. 1, l. 41–col. 2, l. 

63. In view of this, the Board did not err in holding that it 

was “persuaded that the [p]etition relies on the portions of 

Tsang describing MTR constraints j and k, which are also 

described in the Seagate Annual Report,” J.A. 43, such that 

Tsang did not qualify as “the work of another,” J.A. 44.4

4 The Board stated: 

Although we recognize the [p]etition relies on various portions of Tsang for background and context, 

when considering the [p]etition as a whole, we 

agree with Patent Owner that the [p]etition relies 

solely on material disclosed in the Seagate Annual 

Report for anticipation of the challenged claims. 

Throughout the [p]etition, [p]etitioner focuses on 

Tsang’s disclosure of two embodiments “for encoding ‘data words . . . having “m” successive bits’ into 

‘code words . . . having “n” bits where “n” is greater 

than “m”’” as anticipating.

J.A. 37–38 (quoting J.A. 164) (emphasis added).

Case: 21-2057 Document: 40 Page: 13 Filed: 08/11/2022
LSI CORPORATION v.

REGENTS OF THE UNIVERSITY OF MINNESOTA

14

Contrary to LSI’s contention, the Board did not find 

that Dr. Tsang’s contribution in his patent was uninventive 

or that Dr. Tsang was not the inventor of his own patent. 

Rather, the Board properly found that the material in the 

Tsang patent that exceeded the disclosure of the Seagate 

Annual Report was not relevant to the anticipation challenge to claims 14 and 17 of the ’601 patent and that summarizing the Seagate Annual Report in Tsang did not 

make Tsang an inventor of the material.

CONCLUSION

We affirm the Board’s holdings that arguments as to 

Okada were untimely and that relevant teachings in Tsang 

were not “by another.”

AFFIRMED

COSTS

Costs to UMN. 

Case: 21-2057 Document: 40 Page: 14 Filed: 08/11/2022