Trials@uspto.gov
`571-272-7822
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`Paper 15
`Entered: December 23, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01435
`Patent 8,924,506 B2
`
`Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
`MINN CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper 15
`Entered: December 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01435
`Patent 8,924,506 B2
`
`Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
`MINN CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
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`Microsoft Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–21 (the “challenged claims”)
`of U.S. Patent No. 8,924,506 B2 (Ex. 1001, “the ’506 patent”). Bradium
`Technologies LLC (“Patent Owner”) filed a Preliminary Response (Paper
`12, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition “shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” Upon consideration of the
`Petition and the Preliminary Response, we conclude that the information
`presented in the Petition does not establish a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of any of the
`challenged claims on the grounds set forth in the Petition. Accordingly, we
`deny Petitioner’s request to institute an inter partes review of claims 1–21.
`
`A. Related Proceedings
`According to Petitioner, the ’506 patent is the subject of the following
`pending patent infringement case: Bradium Techs. LLC v. Microsoft Corp.,
`No. 1:15-cv-00031-RGA (D. Del.). Pet. 1–2. Petitioner has also filed
`petitions for inter partes review in Microsoft Corp. v. Bradium Techs. LLC,
`Cases IPR2015-01432 and IPR2015-01434, challenging U.S. Patent Nos.
`7,139,794 B2 (“the ’794 patent”) and 7,908,343 B2 (“the ’343 patent”),
`respectively. The ’506 patent issued from a continuation-in-part application
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`of the application that resulted in the ’343 patent. The ’794 patent discloses
`similar subject matter and claims the benefit of priority from the same set of
`provisional applications as the ’343 and ’506 patents.
`
`B. The ’506 Patent
`The ’506 patent describes an image distribution system for retrieving
`high-resolution or large-scale images from a network image server over a
`limited-bandwidth communications channel for display on client devices,
`where a user may navigate over the images displayed on the client device by
`controlling a viewing frustum placed over the displayed images. See
`Ex. 1001, Abstract; col. 1, ll. 29–34; col. 5, ll. 31–59. The retrieval of large-
`scale or high-resolution images is achieved by selecting, requesting, and
`receiving update image parcels relative to an operator or user controlled
`image viewpoint. See id. at Abstract; col. 3, ll. 50–59. In an embodiment,
`when the viewing frustum is changed by user navigation commands, the
`client device determines the priority of the image parcels to be requested
`from the server “to support the progressive rendering of the displayed
`image,” and the image parcel requests are placed in a request queue to be
`issued in priority order. See id. at col. 7, ll. 50–65.
`On the server side, high-resolution source image data is pre-processed
`by the image server to create a series of derivative images of progressively
`lower resolution. See id. at col. 6, ll. 7–12. Figure 2 of the ’506 patent is
`reproduced below.
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`Figure 2 depicts preparation of pre-processed image parcels at the network
`image server. See id. at col. 4, ll. 60–63; col. 5, ll. 60–63; col. 6, ll. 7–10.
`As illustrated in Figure 2, source image data 32 is pre-processed to obtain a
`series K1-N of derivative images of progressively lower image resolution. Id.
`at col. 6, ll. 10–12. Initially, the source image data—i.e., the series image
`K0—is subdivided into a regular array of image parcels of a fixed byte size,
`e.g., 8K bytes. Id. at col. 6, ll. 12–17. In an embodiment, the resolution of a
`particular image in the series is related to the predecessor image by a factor
`of four while, at the same time, the array subdivision is also related by a
`factor of four, such that each image parcel of the series images has the same
`fixed byte size, e.g., 8K bytes. Id. at col. 6, ll. 17–22.
`In another embodiment, the image parcels are compressed by a fixed
`ratio—for example, the 8K byte parcels are compressed by a 4-to-1
`compression ratio such that each image parcel has a fixed 2K byte size. Id.
`at col. 6, ll. 23–28. This allows each image parcel to fit into a single
`network data packet, which improves data delivery and avoids the
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`transmission latency and processing overhead of managing image parcel
`data broken up over multiple network data packets. See id. at col. 8, ll. 15–
`22.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 8, and 15 are independent. Claim
`1 is illustrative of the challenged claims and is reproduced below:
`1.
`A method of retrieving large-scale images over network
`communications
`channels
`for display on
`a
`limited
`communication bandwidth computer device, said method
`comprising:
`limited communication bandwidth
`issuing, from a
`computer device to a remote computer, a request for an update
`data parcel wherein the update data parcel is selected based on
`an operator controlled image viewpoint on the computer device
`relative to a predetermined image and the update data parcel
`contains data that is used to generate a display on the limited
`communication bandwidth computer device;
`processing, on the remote computer, source image data to
`obtain a series K1-N of derivative images of progressively lower
`image resolution and wherein series image K0 being subdivided
`into a regular array wherein each resulting image parcel of the
`array has a predetermined pixel resolution wherein image data
`has a color or bit per pixel depth representing a data parcel size
`of a predetermined number of bytes, resolution of the series
`K1-N of derivative images being related to that of the source
`image data or predecessor image in the series by a factor of
`two, and said array subdivision being related by a factor of two
`such that each image parcel being of a fixed byte size;
`receiving said update data parcel from the data parcel
`stored in the remote computer over a communications channel;
`and
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`displaying on the limited communication bandwidth
`computer device using the update data parcel that is a part of
`said predetermined image, an image wherein said update data
`parcel uniquely forms a discrete portion of said predetermined
`image.
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following three grounds of unpatentability (Pet.
`13–59):
`
`Claims Challenged
`
`Statutory Basis
`
`Ground
`
`1–21
`
`1–3, 5–10, 12–17,
`and 19–21
`
`§ 103(a)
`
`§ 103(a)
`
`4, 11, and 18
`
`§ 103(a)
`
`Potmesil,1 Hornbacker,2 and
`Lindstrom3 (Pet. 13–34, Ground 1)
`Rutledge,4 Ligtenberg,5 and
`Cooper6 (Pet. 34–58, Ground 2)
`Rutledge, Ligtenberg, Cooper, and
`Hassan7 (Pet. 58–59, Ground 3)
`
`
`1 Ex. 1002, Ex. A, Michael Potmesil, Maps Alive: Viewing Geospatial
`Information on the WWW, Computer Networks and ISDN Systems Vol. 29,
`No. 7, 1327–42 (Aug. 1997) (“Potmesil”).
`2 Ex. 1003, WO 99/41675 (Aug. 19, 1999) (“Hornbacker”).
`3 Ex. 1004, Peter Lindstrom et al., An Integrated Global GIS and Visual
`Simulation System (“Lindstrom”).
`4 Ex. 1006, U.S. Patent No. 6,650,998 B1 (Nov. 18, 2003) (“Rutledge”).
`5 Ex. 1005, U.S. Patent No. 5,682,441 (Oct. 28, 1997) (“Ligtenberg”).
`6 Ex. 1007, U.S. Patent No. 6,118,456 (Sept. 12, 2000) (“Cooper”).
`7 Ex. 1008, U.S. Patent No. 5,940,117 (Aug. 17, 1999) (“Hassan”).
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`The Petition also mentions four additional grounds which are not
`discussed in the Petition but discussed only in the Declaration of William R.
`Michalson (“Michalson Decl.,” Ex. 1009). See Pet. 12 (citing Ex. 1009
`¶¶ 285–479). For the reasons discussed below in Section III.D, we will not
`consider these additional grounds not presented in the Petition.
`
`II. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed
`Tech., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015), reh’g en banc denied,
`793 F.3d 1297 (Fed. Cir. 2015). Under the broadest reasonable
`interpretation (BRI) standard, and absent any special definitions, claim terms
`are given their ordinary and customary meaning, as would be understood by
`one of ordinary skill in the art in view of the specification. In re Translogic
`Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions
`for claim terms or phrases must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner proposes that each claim term of the challenged claims be
`construed to have its ordinary and customary meaning under the BRI
`standard. Pet. 11. Patent Owner does not dispute Petitioner’s proposed
`claim construction. Hence, we need not construe any claim terms expressly
`for purposes of this Decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in
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`controversy need to be construed, and only to the extent necessary to resolve
`the controversy).
`
`III. ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`
`A. Obviousness over Potmesil, Hornbacker, and Lindstrom
`Petitioner contends claims 1–21 are unpatentable under 35 U.S.C.
`§ 103(a) over the combination of Potmesil, Hornbacker, and Lindstrom. Pet.
`13–34. Petitioner asserts that Potmesil, Hornbacker, and Lindstrom are prior
`art to the ’506 patent under § 102(b). Id. at 11.
`As an initial matter, Patent Owner notes that Lindstrom is undated and
`contends that Petitioner has not met its burden to show Lindstrom qualifies
`as printed publication prior art. Prelim. Resp. 4–9. In particular, Patent
`Owner contends that Petitioner has not demonstrated Lindstrom was
`publicly accessible prior to the critical date of the ’506 patent. Id. at 6–9.
`Under 35 U.S.C. § 311(b), a petitioner in an inter partes review may
`only challenge the claims of a patent based on “prior art consisting of patents
`or printed publications.” 35 U.S.C. § 311(b). Petitioner has the initial
`burden of production, i.e., “going forward with evidence,” to establish that
`there is prior art that renders the claims unpatentable. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327
`(Fed. Cir. 2008)). As noted by Patent Owner, the Lindstrom article lacks
`any indication on the face of the reference that may suggest the date or the
`manner of its publication or dissemination. See Prelim. Resp. 4. Hence, it is
`not clear from the face of Lindstrom whether it qualifies as prior art in an
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`inter partes review. Thus, Petitioner must make a threshold showing that
`Lindstrom is a prior art “printed publication[].” 35 U.S.C. § 311(b).
`Whether a reference qualifies as a “printed publication” involves a
`case-by-case inquiry into the facts and circumstances surrounding the
`reference’s disclosure to members of the public. In re Klopfenstein, 380
`F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference
`was made “sufficiently accessible to the public interested in the art” before
`the critical date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting
`In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). A reference is
`considered “publicly accessible” upon a satisfactory showing that the
`document has been “disseminated or otherwise made available to the extent
`that persons interested and ordinarily skilled in the subject matter or art
`exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v.
`ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citation and internal quotation
`marks omitted). Often, the determination of public accessibility turns on
`whether a reference is indexed and catalogued in a meaningful way. For
`example, an uncatalogued and unshelved thesis in a university library,
`notwithstanding its accessibility to a graduate committee, was not
`sufficiently accessible to the public to constitute a printed publication within
`the meaning of 35 U.S.C. § 102(b) because the “thesis could have been
`located in the university library only by one having been informed of its
`existence by the faculty committee, and not by means of the customary
`research aids available in the library.” In re Bayer, 568 F.2d 1357, 1361–62
`(CCPA 1978). In contrast, a dissertation shelved in the stacks and indexed
`in the catalog at a university library was found to be a printed publication.
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`In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). However, indexing and
`cataloging must be prepared in a “meaningful” way, e.g., in relationship to
`the subject matter of the references, to allow an interested researcher
`exercising reasonable diligence to locate the prior art. See Cronyn, 890 F.2d
`at 1161.
`Although Petitioner asserts that Lindstrom is prior art under § 102(b)
`(Pet. 11), the Petition does not discuss at all why that is the case. Instead,
`when identifying Lindstrom as prior art, the Petition without any explanation
`points to “associated” Exhibits 1013 and 1014, which are Declarations of Dr.
`Peter Lindstrom (“Lindstrom Decl.”) and Mr. Charles Randall Carpenter
`(“Carpenter Decl.”), respectively. See Pet. ii–iii, 3–4. We discuss each of
`these Declarations in turn.
`In his Declaration, Dr. Lindstrom states that he is the “lead author” of
`the Lindstrom article. Ex. 1013 ¶ 3. Dr. Lindstrom also asserts that the
`Lindstrom article was “published and made publicly accessible in 1997.” Id.
`¶ 5. According to Dr. Lindstrom, the Lindstrom article was “published
`online” as a GVU (Graphics, Visualization, and Usability Center at Georgia
`Institute of Technology) Technical Report in 1997, and was “available to the
`public . . . through the Georgia Tech website and File Transfer Protocol
`(FTP) site.” Id. ¶ 4. Dr. Lindstrom further asserts that the Lindstrom article
`“could be located by the general public through a search of the online
`Georgia Tech catalog” or “through an Internet or web search engine.” Id.
`Dr. Lindstrom, however, does not explain what the “online Georgia Tech
`catalog” is or provide any supporting evidence regarding the online catalog.
`Nor does he provide any evidence to support his assertion regarding public
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`accessibility “through an Internet or web search engine” in 1997. Dr.
`Lindstrom testifies that he checked the GVU FTP site in 1997 and observed
`that the Lindstrom article was available for download from the site. Id.
`None of this testimony was cited or discussed in the Petition itself. Hence,
`we give no weight to Dr. Lindstrom’s testimony. See Google Inc. v.
`ART+COM Innovationpool GmbH, Case IPR2015-00788, slip. op. at 10
`(PTAB Sept. 2, 2015) (Paper 7) (citing 37 C.F.R. § 42.104(b)(5) (“The
`Board may exclude or give no weight to the evidence where a party has
`failed to state its relevance or to identify specific portions of the evidence
`that support the challenge.”)).
`Furthermore, the mere fact that the Lindstrom article was available on
`the GVU FTP site is not sufficient to demonstrate the public accessibility of
`the article because Dr. Lindstrom does not provide any evidence how the
`interested members of the public could have found the FTP site in 1997 and,
`upon finding it, navigated the site to locate the article—for example, whether
`the FTP server contained an index or catalog to allow customary and
`meaningful research. See SRI Int’l, Inc. v. Internet Security Sys., Inc., 511
`F.3d 1186, 1194–97 (Fed. Cir. 2008) (holding that, although a paper on an
`FTP server was available to anyone who knew how to find it, the FTP server
`did not contain an index or catalogue or other tools for customary and
`meaningful research, and, therefore, the paper was “not publicized or placed
`in front of the interested public”).
`The Lindstrom Declaration attaches two exhibits, Exhibits B and C,
`which, according to Dr. Lindstrom, are copies of electronic mails “relating
`to the publication of the Lindstrom Publication” he received in 1997 from
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`Ms. Elaine Swobe, who was the GVU’s technical report coordinator at the
`time. Ex. 1013 ¶¶ 7–10. None of these attachments is mentioned or
`discussed in the Petition itself, nor is Dr. Lindstrom’s testimony regarding
`the attachments cited or discussed in the Petition. Hence, we decline to give
`any weight to Exhibits B and C or Dr. Lindstrom’s testimony regarding
`them. See Google, Case IPR2015-00788, slip. op. at 10.
`We also note that neither Exhibits B and C nor Dr. Lindstrom’s
`testimony demonstrate public accessibility of the Lindstrom article. For
`example, according to Dr. Lindstrom, Exhibit C shows “a message from Ms.
`Swobe to the GVU Advisory Board, faculty, and 15 graduate students . . .
`announcing the release and public availability of GVU Technical reports in
`March and April of 1997, including the Lindstrom Publication.” Dr.
`Lindstrom does not explain how this message demonstrates that the
`Lindstrom article was accessible to the interested public. At most, Dr.
`Lindstrom’s testimony indicates that the article was made accessible to
`certain members of GVU, a research center within Georgia Institute of
`Technology, including the Advisory Board, faculty, and graduate students of
`GVU. This is not sufficient to demonstrate that the interested public, e.g.,
`interested researchers outside GVU, exercising reasonable diligence could
`have located the Lindstrom article at the relevant time. See Bayer, 568 F.2d
`at 1361–62 (although accessible to a graduate committee, an uncatalogued
`and unshelved thesis in a university library was not a printed publication
`within the meaning of 35 U.S.C. § 102(b)). Further, although a list of
`keywords appears in Exhibits B and C, neither the exhibits nor the
`Lindstrom Declaration describe how the keywords were used or identify any
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`other indexing that would lead a person exercising reasonable diligence to
`the Lindstrom article.
`Turning to the Carpenter Declaration, Mr. Carpenter states that he was
`the Manager of the GVU Lab between 1994 and 1998. Ex. 1014 ¶ 3. In his
`Declaration, Mr. Carpenter makes essentially the same assertions as those in
`the Lindstrom Declaration regarding the alleged online publication of the
`Lindstrom article via the GVU FTP site (see id. ¶¶ 6–7) and regarding the
`same two electronic mails received from Ms. Swobe (attached as Exhibits B
`and C) mentioned in the Lindstrom Declaration (see id. ¶¶ 15–17). In
`addition, the Carpenter Declaration includes two other items of information:
`a screen shot of a computer display showing the directory listing of the
`directory on the GVU FTP server containing the files comprising the
`Lindstrom article (id. ¶¶ 11–12); and a printout of an Internet Archive’s
`“Wayback Machine” capture of the GVU Technical Reports website as of
`June 28, 1998, which is attached as Exhibit D (id. ¶ 13). Similar to the
`Lindstrom Declaration, none of these attachments, information, or testimony
`is cited or discussed in the Petition itself. Hence, we give no weight to
`Exhibits B, C, and D, or Mr. Carpenter’s testimony regarding them. See
`Google, Case IPR2015-00788, slip. op. at 10; see also Hughes Network
`Systems, LLC v. California Institute of Technology, Case IPR2015-00060,
`slip. op. at 2–4 (PTAB Nov. 6, 2015) (Paper 20) (declining to consider
`evidence and testimony regarding the date of publication of prior art on a
`website, which are presented only in a declaration and not discussed at all in
`the petition itself).
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`Even if they were presented properly, the additional information and
`testimony in the Carpenter Declaration do not demonstrate public
`accessibility of the Lindstrom article. First, regarding Mr. Carpenter’s
`assertion that the screen shot shows that the Lindstrom article and
`accompanying figures were uploaded on May 8, 1997 to the directory on the
`GVU FTP server captured in the screen shot (Ex. 1014 ¶¶ 11–12), the
`testimony is directed to the assertion that the Lindstrom article was stored on
`the GVU FTP server in May 1997, not the public accessibility of Lindstrom.
`Mr. Carpenter does not explain how interested members of the public could
`have found the GVU FTP site, navigated to the directory shown in the
`screen shot, and located the Lindstrom article as being related to the subject
`matter claimed in the ’506 patent among the dozens of files listed in the
`screen shot. Hence, the screen shot and Mr. Carpenter’s testimony regarding
`it fail to demonstrate that interested researchers exercising reasonable
`diligence could have found the Lindstrom article before the critical date.
`Next, Mr. Carpenter asserts that Exhibit D shows that the Lindstrom
`article was publicly available as of June 1998. Id. ¶ 13. Mr. Carpenter
`further testifies that he was the designer of the GVU Technical Reports
`website and that the Wayback Machine capture of the website at
`http://www.gvu.gatech.edu/gvu/reports/1997/ shown in Exhibit D is
`consistent with his recollection of how the website would have appeared in
`mid-1998. See id. ¶ 14. Mr. Carpenter also asserts that Exhibit D shows
`that the Lindstrom article was available for download from the GVU website
`in mid-1998. Id.
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`The Carpenter Declaration, however, does not explain how a
`researcher interested in the subject matter of the ’506 patent claims would
`have found the GVU website prior to the critical date. Nor does Mr.
`Carpenter explain how Exhibit D shows an interested researcher would have
`located the Lindstrom article from the website. Assuming Exhibit D
`accurately depicts how the GVU Technical Reports website would have
`appeared in June 1998, the GVU website shows a listing of 25 papers
`including the title and the author (or authors) for each paper. The papers
`appear to be listed by a paper number that is unrelated to the subject matter
`or the title of the paper. Id., Ex. D. In Cronyn, the Federal Circuit held that
`indexing based on author’s name was not sufficient to render college thesis
`papers publicly available, even when the title of the papers was listed along
`with the author’s name in the index cards, because the indexing by name
`bore “no relationship to the subject of [the papers].” Cronyn, 890 F.2d at
`1161. Similarly, here, the listing of papers shown in Exhibit D by itself is
`insufficient to demonstrate public accessibility of the Lindstrom article
`without further evidence or explanation. The Carpenter Declaration does not
`say anything about whether the GVU website was catalogued or indexed to
`allow interested researchers to find the Lindstrom article based on the
`subject matter of the paper or the ’506 patent claims. Mr. Carpenter also
`says nothing about whether the keywords mentioned in Exhibits B and C
`were used in connection with the GVU website. Thus, the Carpenter
`Declaration does not present sufficient information to demonstrate that an
`interested researcher exercising reasonable diligence could have found the
`Lindstrom article before the critical date. See Groupon, Inc. v. Blue
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`Calypso, LLC, Case CBM2013-00044, slip. op. 16–22 (PTAB Dec. 17,
`2014) (Paper 47) (a technical report listed on a university department’s
`website was not shown to be publicly accessible because the paper was only
`available for viewing and downloading to members of the public who
`happened to know that the paper was there, and insufficient evidence was
`presented to establish the department’s webserver contained an index or
`catalog, or any other tools for finding the paper based on the subject matter
`of the paper).
`In consideration of the above, we are not persuaded that Petitioner has
`met its initial burden of production of evidence establishing that Lindstrom
`is applicable as prior art. Therefore, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in its challenge to
`patentability of claims 1–21 under 35 U.S.C. § 103(a) as obvious over the
`combination of Potmesil, Hornbacker, and Lindstrom.
`
`B. Obviousness over Rutledge, Ligtenberg, and Cooper
`Petitioner contends claims 1–3, 5–10, 12–17, and 19–21 are
`unpatentable under 35 U.S.C. § 103(a) over the combination of Rutledge,
`Ligtenberg, and Cooper. Pet. 34–58. We are not persuaded that Petitioner
`has established a reasonable likelihood of prevailing on the asserted ground
`for the reasons explained below.
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`1. Principles of Law
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
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`Patent 8,924,506 B2
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`person having ordinary skill in the art to which the subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) where in evidence, so-called secondary considerations.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`2. Analysis
`Patent Owner asserts that the obviousness analysis presented in the
`Petition is deficient because the Petition generally does not identify the
`differences between the claims and the asserted references as required under
`the Graham framework. Prelim. Resp. 12–14, 17–18. Patent Owner also
`contends that the Petition does not adequately explain how the asserted
`references are to be combined. Id. at 20–21. Patent Owner further contends
`that the Petition is also deficient because the Petition omits the claim
`language from the obviousness analysis and never links the actual terms of
`the claim elements to any particular teaching of the asserted prior art
`references. Id. at 31–34. Although Patent Owner argues that most of
`Petitioner’s analysis suffers from these problems, for purposes of this
`Decision, we focus on a limitation that is included in all claims and relates to
`a significant aspect of the invention claimed in the ’506 patent.
`
`Claims 1, 8, and 15
`Independent claims 1, 8, and 15 all recite the following limitation (the
`“common limitation”):
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`IPR2015-01435
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`resolution of the series K1-N of derivative images being related
`to that of the source image data or predecessor image in the
`series by a factor of two, and said array subdivision being
`related by a factor of two such that each image parcel being of a
`fixed byte size.
`
`Ex. 1001, col. 12, ll. 47–52; col. 13, ll. 55–60; col. 14, ll. 57–62. For claim
`1, Petitioner identifies this limitation as elements 1.H, 1.I, and 1.J.8
`Ex. 1012, 1. Petitioner treats these elements separately as if they are three
`distinct limitations, each describing or capturing a discrete feature or
`concept. See Pet. 44–45. As discussed below, Petitioner’s analysis is
`fundamentally flawed because the common limitation set forth above must
`be considered as a whole. The reason is that the limitation captures a single
`concept described in the Specification—a concept that can be understood
`only when the limitation is considered as a whole. Petitioner’s omission of
`the actual claim language in its analysis and using the labels (e.g., claim
`elements 1.H, 1.I, or 1.J) in place of the claim language obscures the
`problem underlying Petitioner’s approach and reinforces the erroneous
`impression that the Petitioner-identified elements are separate and distinct
`limitations.
`As discussed above in Section I.B, the Specification of the ’506 patent
`describes preparation of pre-processed images at the network image server,
`where a source image data is pre-processed to obtain a series K1-N of
`derivative images, which are subdivided into a regular array of image
`
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`8 Petitioner identifies the same limitation as elements 8.N, 8.O, and 8.P for
`claim 8; and as elements 15.O, 15.P, and 15.Q for claim 15. Ex. 1012, 4, 6.
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`18
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`IPR2015-01435
`Patent 8,924,506 B2
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`parcels. Ex. 1001, col. 6, ll. 10–17. The resolution of a particular image in
`the series of images is related to the predecessor image by a factor of four
`while, at the same time, the array subdivision is also related by a factor of
`four, such that each image parcel of the series images has the same fixed
`byte size, e.g., 8K bytes. Id. at col. 6, ll. 17–22. For example, if the array
`subdivision decreases by a factor of four from one image to the next one in
`the series, the resolution would also decrease by a factor of four such that the
`size of each image parcel would remain at the same fixed byte size. The
`claim language of the common limitation quoted above essentially tracks
`this disclosure in the Specification except that a factor of two is recited in
`the claims instead of a factor of four mentioned in the Specification. Hence,
`in view of the Specification, a person of ordinary skill would understand the
`ordinary and customary meaning of the common limitation to be that, for
`successive images in the series K1-N of images, the resolution and the array
`subdivision are each related by a factor of two such that each image parcel
`of the series images has the same fixed byte size. In other words, the
`common limitation quoted above operates as a whole to capture the concept
`of varying the resolution and array subdivision of the series images in
`relation to each other so as to maintain the size of each image parcel at the
`same fixed byte size. Thus, a proper obviousness analysis must address the
`common limitation as an integral whole because the limitation describes a
`single unitary concept that can only be understood when considering the
`limitation as a whole.
`Petitioner’s analysis, however, arbitrarily breaks up the common
`limitation into three elements, e.g., elements 1.H, 1.I, and 1.J for claim 1,
`19
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`and treats each of them separately in isolation from each other. See Pet. 44–
`45. For example, Petitioner asserts that the combination of Rutledge,
`Ligtenberg, and Cooper teaches element 1.H (“resolution of the series K1-N
`of derivative images being related to that of the source image data or
`predecessor image in the series by a factor of two”), the combination of
`Rutledge and Ligtenberg teaches element 1.I (“said array subdivision being
`related by a factor of two”), and Ligtenberg teaches element 1.J (“such that
`each image parcel being of a fixed byte size”). Id. However, Petitioner does
`not address the meaning of the common limitation as a whole in view of the
`Specification, nor does the Petition or the Michalson Declaration present any
`discussion of how the combination of Rutledge, Ligtenberg, and Cooper
`teaches the claimed feature of varying the resolution and the array
`subdivision in relation to each other, so as to keep the image parcel size the
`same for the series of images. See id.; Ex. 1009 ¶¶ 21
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