LSI v. UMN: Binary Conversion, Eligibility, and “By Another”

by Dennis Crouch

UMN’s U.S. Patent No. 5,859,601 is super interesting because it is so similar to the patent rejected by the Supreme Court in Gottschalk v. Benson, 409 U.S. 63 (1972). Benson’s claims were directed toward a method of converting binary-coded decimal numbers into pure binary numbers.  Similarly UMN’s claims are directed also to a method for converting binary numbers–this time from “m-bit binary datawords into n-bit binary codewords” by applying “maximum transition run (MTR) codes.”  UMN’s basic idea is that researchers were finding long binaries with lots of transitions were more likely to lead to read-errors.  Example, 010101010101 has lots of transitions while 111111000000 has only one transition.  If the algorithm finds a long sequence of consecutive transitions then it does something (like adding a pause or transition code) to reduce the probability of error detection. The algorithm also adds an additional transition code at a regular interval.

UMN sued LSI for patent infringement in 2016 in the N.D. Cal.; LSI responded with its petition for inter partes review.  The IPR proceedings were initially delayed by UMN’s claim of sovereign immunity. In 2019, the Federal Circuit held that “state sovereign immunity does not apply to [IPR] proceedings.” Regents of the Univ. of Minnesota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. June 14, 2019), cert. denied, 140 S. Ct. 908, 205 L. Ed. 2d 458 (2020).  Back on remand, the PTAB issued a split decision–finding independent claim 13 unpatentable but concluding that LSI failed to show that claims 14 and 17 were obvious.  These claims add the allegedly unique limitation that the maximum transition run size is somewhere between 1 and 10.

LSI appealed its loss on the dependent claims and the Federal Circuit has now affirmed.  LSI Corp. v. Regents of U. of Minnesota, 2021-2057, — F.4th — (Fed. Cir. Aug. 11, 2022).  The original 2019 decision was authored by Judge Dyk and joined by Judges Hughes and Wallach.  The Federal Circuit has an Internal Operating Procedure involving appeals following remand to attempt to reconstitute the same panel or one with at least two of the same judges.  Judge Wallach took senior status in 2021 and so Judge Reyna was added to the new 2022 panel. Judge Dyk again wrote the opinion.

Prior Art By Another: Seagate was a collaborator with the UMN inventors (Moon and Brickner). And, back in September 1995, the inventors submitted a report to Seagate about their work.  They filed their patent application April 1996–well within the 1-year statutory grace period.  But, in January 1996 Seagate filed a patent application (Tsang) that does not list the UMN inventors.  Tsang describes MTR coding in its background section and references the Seagate Report.  Tsang also provided further improvements on the MTR methodology.

Once Tsang published/issued, it became prior art as of its filing date. Pre-AIA Section 102(e).   Section 102(e) refers to “an application for patent . . . by another.”  Here, Tsang is clearly another, but the particular portion of Tsang referenced was clearly derived from the UMN inventors Seagate Report.  Under longstanding precedent, Section 102(e) has been interpreted exclude material derived from the inventors. In re Costello, 717 F.2d 1346 (Fed. Cir. 1983). In other words, regardless of the listed inventors on a purported prior art reference, we look to the actual underlying disclosure and ask whether that information was “by another.”  Still LSI argued that Tsang was a proper 102(e) reference

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.

Slip Op.  Thus, that portion of Tsang was properly excluded from prior art consideration.  The court’s interpretation of Section 102(e) stretches our statutory interpretation limits since 102(e)’s prior art test is at the application level, and the court here drills down to specific disclosures and portions of the application.  The AIA remedied this statutory stretching by creating the exception of 102(b)(2) that focuses on the disclosure level.

Shifting Arguments: LSI had Separately relied upon two tables found in a prior patent Okada.   The problem — although the petition relied upon Okada, petitioner’s reliance on the particular tables didn’t happen until the IPR Hearing.  In its decision the  board found that the new theory was both untimely and unpersuasive.  On appeal, did not address the untimely conclusion — only the persuasiveness.  The Federal Circuit did not like that approach and concluded that untimeliness was a separate and independent ground that LSI forfeited “by failing to challenge it in its opening brief on appeal.”

The case should now head back to the Northern District of California where UMN is asserting both surviving claims.  The lawsuit has been stayed for the past four years awaiting resolution to the IPR. Meanwhile, LSI’s motion for judgment on the pleadings that the asserted claims are patent-ineligible has remained undecided throughout that time.  LSI 101 Motion.

Patrick McElhinny (K&L Gates) argued the IPR appeal for UMN and Kristopher Reed (Kilpatrick) argued for LSI.   The same teams are also handling the underlying litigation.

50 thoughts on “LSI v. UMN: Binary Conversion, Eligibility, and “By Another”

  1. 6

    NightWriter — care to make a prediction about the outcome of the patent eligibility issue?

  2. 5

    Abstract data processing methods are the quintessential examples of ineligible subject matter and this claim 13 is a quintessential example of that.

    Note that the last two “steps” here are totally functional. All the “work” (lol) in the claim is done by “imposing constraints on the encoded waveform” (note: there is no antecedent basis for the term “encoded waveform”; the preamble uses the term “recorded waveform” which appears nowhere in the body of the claim).

    The “invention” here is observing a type of repetitive digital data that is prone to errors (unsurprising in itself and not a discovery of the applicants) and … using basic logic (what else?) to reduce the errors.

    Good grief, what a farce.

    1. 5.1

      Encoding (and its compliment decoding) belong to the technology realm that includes encryption.

      I (again) invite Malcolm to stop his emotional mewling and instead put his money where his mouth is and NOT use any technology that he would deem not worthy of innovation protection.

      Goodbye ALL internet activity (including, without limitation, his mewling on this blog, online banking and commerce, and pretty much any Modern activity).

      Heck, he wouldn’t even be welcomed in Amish land (their innovation may not be ‘electronic,’ but are still more advanced than what Malcolm would ‘permit’ outside of his own personal ‘bucket’).

      (Not so) deep down, Malcolm knows this, and this is shown in his rampant cognitive dissonance.

      1. 5.1.1


        Can you expound on your position? If I understand it correctly, you are saying that a claim in the encryption realm is per se OK under section 101? Or, would you require such a claim to be at least tied to a machine or computer? If the latter, do you think the claims in the UMN patent qualify? Thx in advance.


          Tis simpler than what you may be trying for:

          Encryption is a technology for which we ALL should want innovation protection for.

          Innovations OFTEN are captured in more than one of the statutory categories.

          You might be confused (as a student) with the Supreme Court’s messing around with 101.

          101 was intended to be a very low bar to get over.

          Two basics to 101:

          1) have utility in the patent sense of that word; and
          2) the innovation be described in at least one of the statutory categories.


            Based on your previous post and your response to my pointed question, it seems that you think any claim in the encryption realm is automatically over the Section 101 “low bar.” I am not trying to quibble over what the law is or what it should be, just wanted to get your position.


              My “pointed” answer to your “pointed” question is what the law is.

              Whether or not that law is consistently applied, is – of course – a very different question.

              Further, not to be pedantic, but I would NOT use the phrase “automatically over” as there is no such thing.

              That is a loaded phrase which has tended to be used negatively in patent law.

              Instead, much more simple, more direct, and without the baggage, simply ask whether the putative invention (in ANY field) resolves the two issues that make up that low hurdle.

              Also – for your own benefit – learn to sniff out “hot buttons” and emotive-laden words. Delve to understand the context behind their use when you DO see them.

  3. 4

    As the prior post is blocked from comments, I did have to chuckle at the timing of a post about email when the last post on the Ethics side (now over a year ago) had to do with emails that go unread.

    1. 3.1

      The phrase “get a life” leaps to mind instantly, with respect to all of the participants.

      But hey someone figured out that you could make repetitive data less prone to errors by … introducing breaks or coded instructions. Really impressive stuff and surely the “winners” here deserve millions of dollars if not billions. Why, himanity might have gone another three weeks without this were it not for our awesome patent system and think about what a tragedy that would have been.

  4. 2

    UMN’s U.S. Patent No. 5,859,601 is super interesting because it is so similar to the patent rejected by the Supreme Court in Gottschalk v. Benson, 409 U.S. 63 (1972).
    So similar? Not really.

    Notwithstanding that Benson was a terribly-decided decision by a whack-job of a justice, they are two very different inventions.

    As described by the Supreme Court, Benson involved a “method for converting numerical information from binary-coded decimal numbers into pure binary numbers” — essentially converting one form of numerical representation to another. It is a fundamental operation.

    The claims in 5,859,601, however, are not directed to some fundamental operation. Rather, this is directed to a specific improvement to a particular technology. As described in the the ‘601 patent:
    Prior art experience indicates that the primary source of errors in optimal and near-optimal sequence detectors operating at high data densities is the detector’s inability in the presence of noise to distinguish the minimum distance patterns.
    To cite Cardionet v. Infobionic:
    In doing so, we look to whether the claims “focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”
    The specification of the ‘601 Patent explicitly describes improving data storage devices (e.g., “[t]he present invention relates to a channel coding technique to improve data storage devices … [a]s a consequence, the final bit error rate is improved significantly when the original data bits are reproduced”).

    1. 2.1

      “ The specification of the ‘601 Patent explicitly describes improving data storage devices ”

      That’s nice. Except the claims at issue are directed to abstract logical methods for data processing.

      Is there a new structure for this (lol) “improved storage device” described in structural terms anywhere in the specification?

      No. There is no such device described in the specification.

    2. 2.2

      But Benson used a “reentrant shift register”:

      Claim 8 reads:

      The method of converting signals from binary coded decimal form into binary which comprises the steps of-

      (1) storing the binary coded decimal signals in a reentrant shift register,

      (2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position of said register,

      (3) masking out said binary ‘1’ in said second position of said register,

      (4) adding a binary ‘1’ to the first position of said register,

      (5) shifting the signals to the left by two positions,

      (6) adding a ‘1’ to said first position, and

      (7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.”

      This looks like hardware to me.

      And, honestly, the logic in Benson is so contorted that I’ve read it maybe 50 times and still have no idea what it’s saying. Decipher this for instance:

      “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting binary code to pure binary were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

      For instance, if it has no practical application except being performed on a computer, how does this preempt one from using the mathematics apart from the computer?

      In my mind, Benson is one of the most poorly reasoned of the 101 cases.

  5. 1

    Even though in the claim preamble, presumably “in a recorded waveform..” is intended to avoid In re Nuijten (Fed. Cir. 2007) holding that a claim to a signal, per se, is not patent-eligible subject matter under 35 USC § 101?

    1. 1.1

      No. As described by the Federal Circuit in Nuijten, “[t]he essence of the dispute between the parties is whether a transitory signal is covered by any statutory category.” After walking through each of the four statutory categories, the Federal Circuit concluded “[a] transitory, propagating signal like Nuijten’s is not a ‘process, machine, manufacture, or composition of matter.'”

      Claim 13 of the ‘061 Patent is clearly directed to a method so it would not be subject to Nuijten.

      1. 1.1.1

        “composition of matter”

        I guess physicists still debate about whether electrons are matter.


          In re Nuitjen is an example of “anti-science.”

          A decision clearly at odds with the factual reality of this universe.

          As for that “temporary” nature, just go outside on a clear night and look up at “transitory” that have lasted longer than ALL inventions EVER by the hands of man.



              Your inability to recognize irony in the things that you say is truly breathtaking.

              Your whining about that case is older than those signals and way less interesting.

              Your whining predates “my whining” by at least a decade, and your refusal to admit to the nature of innovation in the Fifth Kondratiev wave renders your emotional mewlings ever less interesting than anything that I have ever posted.

              Let me yet again invite you to abstain from any innovation that you FEEL should not be protected — put your money where your mouth is.


            There is little question that the Federal Circuit mangled facts to get the result they wanted. In so doing, I think they employed “the end justifies the means” logic.

            I suspect that Nuijten was a policy-based decision, and the Federal Circuit mangled the facts to give them cover. Specifically, the problem with signal claims is that anytime signals are propagated over a network (e.g., the internet), these signals are made, and the making of a patent invention (i.e., a signal) constitutes patent infringement. In essence, if signals were patentable subject matter, then anybody who owns any network equipment would be subject to patent infringement suits based upon that equipment “making” signals as part of their operation. This would put a huge damper on building out the internet.

            have lasted longer than ALL inventions EVER by the hands of man
            I have asked examiner’s this from time-to-time … “what is the definition of ‘non-transitory’?” None can give me an answer because there is no art-recognized definition. Anybody who uses that phrase in a claim likely opens themselves up to a 112, 2nd paragraph rejection.


              “None can give me an answer because there is no art-recognized definition. ”

              Lelz, we all know that’s not true.

              Non-transitory = non (not permanent i.e. the definition of transitory, or insert any other definition here) aka “permanent” as one definition.


                Non-transitory = non (not permanent i.e. the definition of transitory, or insert any other definition here) aka “permanent” as one definition.
                How much permanence makes something “permanent”? Is it a millisecond or a million years?

                Radio signals that are beamed into space will have permanence that will last well over a million years, and thus, adding “non-transitory” does not necessarily exclude those signals. If the purpose of adding “non-transitory” to claim language is to exclude propagating signals, then the meaning of the term is indefinite.

                The point is that when the Federal Circuit used the phrase “a transitory, propagating signal,” they didn’t appreciate propagating signals are not necessarily “transitory.”

                As an aside, the “permanence” or a lack of a non-transitory nature of radio signals is an important plot device in the movie “Contact,” which is based upon the book of the same name — that book being written by Carl Sagan, whose science pedigree is fairly well known.

                1. “How much permanence”

                  Not a matter of how much bro, it’s a property. I know this blows your mind and all but tis true.

                  “Radio signals that are beamed into space will have permanence ”

                  Arguably. But irrelevant as they’ll have 0 permanence here on earth which is what is relevant.

                  Look it’s all super fun to sit and have discussions about, but it’s all clownery.

                2. “they didn’t appreciate propagating signals are not necessarily “transitory.””

                  I’m pretty sure that they aren’t tar ded. They just didn’t address that as it is immaterial to the question before them, though you cannot grasp that.

                3. it’s a property.

                  LOL – really? What is the measure of this “property?”

                  If you (as it appears) are angling this property to be some type of “indestructibleness,” you are absolutely missing the point vis a vis actual reality.


                Oh, and I forgot. Your definition of non-transitory is inconsistent with the Board’s analysis in Ex parte Mewherter.

                It seems that the Board was jealous of the Federal Circuit screwing up basic scientific facts so they had to do the same as well. The Patent Office has little credibility here.

                1. link to

                  Looks entirely consistent with my position. Doesn’t even touch the “non-transistory” discussion. Doesn’t need to.

                  It’s a non-trans decision, if you will, lol. Possibly transphobic.


                Never mind the fact that all you did there 6 was mouth a tautology, you very much missed the point that the court engaged in utter nonsense by deeming as “transitory” that which is clearly shown to be MORE permanent than any AND every thing created by the hand of man.


                And ever will be.

                1. “Never mind the fact that all you did there 6 was mouth a tautology”

                  If literal tautologies show that he was lying then it’s enough.

                2. He said the PTO examiners could/would not define the term. He was obviously lying, any given examiner is happy to define the term for him. He just doesn’t like what he’s getting and thinks his decent into “muh logic” clownery is going to somehow matter.

                3. Here’s an idea 6: give an example of something that you think has this “property” of permanence.

                4. “Mouthing a tautology is not defining a term.”

                  anon -2022


                  “a phrase or expression in which the same thing is said twice in different words.”

                  Here’s an idea 6: give an example of something that you think has this “property” of permanence.

                  link to

                5. LOL – “no”

                  And thank you for retreating from the conversation, thereby proving my point.

                  Come out and play again soon.

                6. “Mouthing a tautology is not defining a term.”

                  Now this made me laugh. Thanks for sharing that one.

                7. “And thank you for retreating from the conversation, thereby proving my point.”

                  The ocpder at work. Primer on how to try to get people to JADE. Refusing to engage is “lololprovingtheirpoint” in their ta rd minds.

                8. Translation of 6:

                  “Wah, I cannot continue and I am mad that anon draws the correct conclusion that I have proven his point.”

                  Thanks again 6.

                9. “Wah, I cannot continue and I am mad that anon draws the correct conclusion that I have proven his point.”

                  Yes anon that’s what it sounds like in the OCPD mind.

                10. nothing “OCPD” about it – you cannot meet the challenge.

                  It’s OK to admit it.

                  (and yes, I note that you did not answer the post above either)

                11. “you cannot meet the challenge.”

                  What the ocpder thinks.

                  “why it’s so hard to gib example of a permanent object lololol, despite the fact that you’re literally surrounded by them etc. etc. etc.”

                  ^ocpd, folks.

                12. No 6, you just don’t get to word game your way out of this.

                  This simply is not a matter of “OCPD” anything.

                  You replied to the conversation with a mouthed tautology, and you were called out for doing so.

                  I even gave you a path out, but your example-less quip only proves my point (yet again).

                  Read again: link to

                  You seem to want this “undescribed” property to be a differentiator, but no matter what that undescribed property may be, it just does not measure up to reality.

                  You of course do NOT have to actually engage here in the merits, but you do not get to choose the consequence of that action.

                  Of course, you can choose the better path of acknowledging that I am correct.


              I like the theory. It sounds very FedCir-ish, in part because it wouldn’t actually work they way they planned; in many/most cases, that signal will also get stored in varius buffers (i.e., tangible storage devices) along the way.


          Actually, an electron is a wave function that is spread out in space (and probably time as well).

          It only becomes an electron when it is observed, either by a human or a machine. It is called the collapse of the wave function.

          One theory is that the wave function is the electron from all of the universes in the multiverse.

          Why it is spread out must be because the universes are not perfectly aligned.

          Why the wave function collapses when it is observed must be because the observer sees only the electron in the observer’s universe.

          BTW, the wave function is why quantum computers work, and they *do* work.

          As to whether electrons are matter, there was the theory that matter is a wave. The group velocity is what we call the velocity of the particle. The mass is the phase velocity of the wave which is always greater than the speed of light. I learned this in college physics 50 years ago, long before there was string theory. It might have led to String Theory. (But String theory is probably wrong.)

          BTW, relativity says that nothing with mass can travel *at* the speed of light. It doesn’t say that nothing can travel faster than the speed of light.

          Let’s see the Patent Office explain what *matter* is in its Guidelines For Examiners.

      2. 1.1.2

        I wonder if everyone else here would take the position that there is no concern with suing on a signal claim as long as it is Called a “method” in spite of Nuijten? E.g., what about say “A method of improved accuracy propagation of a signal comprising propagating signals that have been previously divided into small separated packets of __ length with packet identifiers. “


            Just checking the certainty of the statement in 1.1 that a claim “clearly directed to a method .. would not be subject to Nuijten.” I.e., is it really that certain that another CAFC panel would not treat another signal claim as not having a 101 problem if written as a method?


              … as to what ANY one panel of the CAFC MAY do, such is also just not (necessarily) connected to reality.

              Your statement appears to presuppose something that cannot be supposed.

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