UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`_______________
`
`
`
`MICROSOFT CORPORATION, MICROSOFT MOBILE INC., SAMSUNG
`ELECTRONICS AMERICA, INC. AND SAMSUNG ELECTRONICS CO. LTD.,
`Petitioners
`
`v.
`
`FASTVDO LLC,
`Patent Owner
`
`_______________
`
`Case IPR2016-01179
`Patent 5,850,482
`
`_______________
`
`
`
`PATENT OWNER FASTVDO LLC’s
`RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`
`
`I. Introduction ........................................................................................................ 1
`
`II. The ‘482 Patent Claims Elements Not Disclosed Or Suggested In Kato ..... 4
`
`a. About U.S. Patent No. 5,850,482 (the “‘482 patent” or “Meany”) ............ 4
`
`b. Petitioners Challenge Three Independent Claims of the ‘482 Patent ....... 8
`
`c. The Petition Fails To Present A Construction For
`“Storage Medium” .............................................................................................. 12
`
`III. The Challenged Claims Are Not Obvious Over Kato Alone, Or Over
`Kato In View Of Wei ............................................................................................. 16
`
`a. Any Combination of Kato’s Embodiments, Even If Properly Supported,
`Fails to Disclose A “first data block of a storage medium” That Is “error
`protected” As Required In Claims 5, 16, and 28 ............................................. 20
`
`b. Petitioners Do Not Propose Any Reason To Incorporate A “Storage
`Medium” Into Kato’s First Embodiment ......................................................... 26
`
`c. Petitioners’ Combination Of Kato’s Embodiments Fatally Lacks Any
`Evidence-Supported Account Of The Combination’s Contemplated
`Workings .............................................................................................................. 30
`
`d. The Petition Fails to Establish a Reason to Incorporate the Fourth
`Embodiment’s Error Protection into Kato’s First Embodiment ................... 34
`
`i
`
`

`

`e. Dr. Stevenson’s Testimony Fails To Establish A Reasonable Expectation
`Of Success In Combining Kato’s Embodiments .............................................. 44
`
`f. The Petitioner’s Analysis of Claim 28 Is Not Supported By Evidence ... 49
`
`g. There Is No Reason to Combine Kato with Wei ....................................... 51
`
`h. Petitioners’ New Theories Should Be Rejected ......................................... 55
`
`i. An Invalidity Ruling In This Case Constitutes An Impermissible Taking
`Of A Private Right Without Article III Oversight .......................................... 59
`
`IV. Conclusion ..................................................................................................... 60
`
`
`
`
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`
`Cases
`
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................................... 43
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .......................................................................... 32
`
`Corning Incorporated v. DSM IP Assets B.V.,
`IPR2013-00048 (PTAB May 9, 2014) (Paper 94) .............................................. 46
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .......................................................................... 19
`
`In re Nuijten,
`500 F.3d 1346 (Fed. Cir. 2007) .......................................................................... 16
`
`In re Rambus, Inc.,
`694 F.3d 42 (Fed. Cir. 2012) .............................................................................. 12
`
`Intelligent Bio-Systems v. Illumina Cambridge,
`821 F.3d 1359 (Fed. Cir. 2016) ......................................................... 3, 31, 57, 59
`
`KSR Int'l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................... 17, 18, 51
`
`LG Display Co., Ltd. v. Innovative Display Technologies LLC,
`IPR2014-01092 (PTAB Jan 13, 2015) (Paper 9) ................................................ 18
`
`McCormick Harvesting Mach. Co. v. Aultman,
`169 U.S. 606 (1898) ............................................................................................ 59
`
`iii
`
`

`

`Michigan Land and Lumber Co. v. Rust,
`168 U.S. 589 (1897) ............................................................................................ 60
`
`MobileMedia Ideas LLC v. Apple Inc.,
`780 F.3d 1159 (2015) .......................................................................................... 48
`
`Moore v. Robbins,
`96 U.S. 530 (1877) .............................................................................................. 59
`
`Net MoneyIN, Inc. v. Verisign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ................................................................... 17, 34
`
`Omron Oilfield & Marine, Inc. v. MD/TOTCO, a Division of Varco, L.P.,
`IPR2013-00265 (PTAB Oct. 31, 2013) (Paper 11) ............................................ 12
`
`Personal Web Technologies, LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .................................................................... passim
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................... 12, 15
`
`Stryker Corp. v. Karl Storz Endoscopy America, Inc.,
`IPR2015-00764 (PTAB September 2, 2015) (Paper 13) .................................... 41
`
`TRW Automotive U.S. LLC v. Magna Electronics, Inc.,
`IPR2015-00972 (PTAB September 16, 2015) (Paper 9) .................................... 41
`
`United States v. Am. Bell Telephone Co.,
`128 U.S. 315 (1888) ............................................................................................ 60
`
`
`
`Statutes
`
`35 U.S.C. § 315(e) ........................................................................................ 4, 19, 60
`
`iv
`
`

`

`35 U.S.C. § 316(e) ................................................................................................... 19 
`
`
`
`Rules
`
`37 C.F.R. § 42.23(b) ............................................................................... 3, 31, 57, 58
`
`37 C.F.R. § 42.65 ................................................................................................ 4, 45
`
`37 C.F.R. § 42.104(b) .............................................................................................. 12
`
`Fed. R. Evid. 705 ..................................................................................................... 45
`
`
`
`Other Authorities
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) ........................................................... 45, 57
`
`
`
`
`
`v
`
`

`

`
`
`
`LIST OF PATENT OWNER’S EXHIBITS
`
`Exhibit Number
`
`Exhibit Description
`
`2001
`
`Patent Owner FastVDO LLC’s Power of Attorney
`
`2002-2003
`
`Reserved
`
`2004
`
`2005
`
`2006
`
`2007
`
`Declaration of Kenneth A. Zeger, Ph.D.
`
`Curriculum Vitae of Kenneth A. Zeger, Ph.D.
`
`Deposition Transcript of Robert L. Stevenson, Ph.D.
`
`Deposition Transcript of Edward J. Delp, III, Ph.D.
`
`2008-2009
`
`Reserved
`
`2010
`
`2011
`
`2012
`
`Curriculum Vitae of Robert L. Stevenson, Ph.D.
`
`Declaration of Robert L. Stevenson in IPR2013-00350
`(BOSE 2026)
`
`T. P. O’Rourke, R. L. Stevenson, L. Perez, D. J. Costello,
`Jr., and Y.-F. Huang, “Robust Transmission of Compressed
`Images over Noisy Gaussian Channels,” Proceedings of
`The 1995 IEEE International Conference on Acoustics,
`Speech and Signal Processing, pp. 2319–2322, Detroit, MI,
`May 9–12, 1995.
`
`vi
`
`

`

`Exhibit Number
`
`Exhibit Description
`
`2013
`
`T. P. O’Rourke, R. L. Stevenson, D. J. Costello, Jr. and Y.-
`F. Huang, “Improved Decoding of Compressed Images
`Received over Noisy Channels,” Proceedings of the 1995
`IEEE International Conference on Image Processing, pp.
`II:65–68, Washington, DC, October 1995.
`
`
`
`
`
`vii
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`I.
`
`Introduction
`
` 
`
`The Petition for inter partes review of U.S. Patent No. 5,850,482 (“the ‘482
`
`patent” or “Meany”) presents grounds for challenge against claims 1-3, 5-6, 12-14,
`
`16-17, and 28 of the ‘482 patent. Petitioners specifically challenge claims 1-3, 5,
`
`12-14, 16, and 28 of the ‘482 patent as allegedly obvious over U.S. Patent No.
`
`5,392,037 to Kato (“Kato”) alone, and challenge dependent claims 6 and 17 as
`
`allegedly obvious over Kato in view of U.S. Patent No. 5,243,629 to Wei (“Wei”).
`
`The Board instituted on both challenges in the Decision dated December 16, 2016
`
`with citations to the declaration of Dr. Stevenson (Ex. 1005 or “Stevenson Decl.”).
`
`But as explained below with support from the declaration of IEEE Fellow, Dr.
`
`Kenneth Zeger (Ex. 2004 or “Zeger”), each of the challenged claims survive IPR
`
`because Petitioners’ obviousness-based challenges contain fatal flaws that cannot
`
`be remedied in this proceeding.
`
`First, even if properly supported, the alleged combination of Kato’s
`
`embodiments fails to disclose or suggest all features of all challenged claims, as
`
`those features are arranged in the claims. For example, claims 5, 16, and 28
`
`require storage of unequal error protected data. Petitioners and Dr. Stevenson
`
`overlook that Kato fails to disclose such features. Kato’s encoding circuit 602
`
`includes RAM 617, which stores variable-length encoded data (or compressed
`
`1
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`data). But both the encoding circuit 602 and RAM 617 are upstream of the error
`
`correction code (ECC) encoder 603. The ECC encoder 603 adds error correction
`
`codes only to the output of the encoding circuit 602. Thus, Kato’s memory (RAM
`
`617) stores data to which no unequal error protection is added. Neither Petitioners
`
`nor Dr. Stevenson propose to modify the location of RAM 617 vis-à-vis the ECC
`
`encoder 603, and neither Petitioners nor Dr. Stevenson propose to incorporate
`
`additional storage to Kato downstream of the ECC encoder 603 when
`
`incorporating the ECC encoder 603 into Kato’s first embodiment.
`
`This leads to the second obviousness failing. The Petition and Dr.
`
`Stevenson’s declaration both lack any discussion of how the alleged combination
`
`of Kato’s embodiments would operate. In view of this deficiency, Federal Circuit
`
`law requires that this alleged combination must fail. Under Personal Web
`
`Technologies, LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017), “a clear,
`
`evidence-supported account of the contemplated workings of the combination is a
`
`prerequisite to adequately explaining and supporting a conclusion that a relevant
`
`skilled artisan would have been motivated to make the combination and reasonably
`
`expect success in doing so.” The Petition lacks such an account. Dr. Stevenson’s
`
`declaration lacks such an account. And any account produced in Petitioners’ Reply
`
`would be improper for presenting new theories of obviousness in Reply. See 37
`
`2
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`C.F.R. § 42.23(b); Intelligent Bio-Systems v. Illumina Cambridge, 821 F.3d 1359,
`
`1366 (Fed. Cir. 2016).
`
`Third, while an obviousness challenge requires a reason that a person of
`
`ordinary skill in the art (“POSITA”) would have implemented a specific
`
`modification or combination of teachings in the way claimed by the challenged
`
`claims, the Petitioners instead rely on impermissible hindsight, alleged common
`
`sense, and attorney argument couched as “expert” testimony. Indeed, the
`
`Petitioners’ alleged reason for incorporating Kato’s fourth embodiment into its first
`
`embodiment is to provide a benefit that the first embodiment already possesses.
`
`Petitioners rely upon this combination in every challenge presented in the Petition,
`
`and when this foundation crumbles, every challenge fails.
`
`Fourth, the testimony of Dr. Stevenson on the alleged obviousness of
`
`combing Kato’s first and fourth embodiment does not match the research he was
`
`performing and writing about at the relevant time. Dr. Stevenson declared that the
`
`incorporation of unequal error protection from Kato’s fourth embodiment could be
`
`achieved by a POSITA at the relevant time “without the need for undue
`
`experimentation, [and] yielding predictable results.” Ex. 1005 at ¶88. But
`
`hindsight guides this testimony; in the mid-1990s, Dr. Stevenson and a team of
`
`other leading experts and researchers in the field of image compression ran
`
`thousands of tests, requiring months of work, to measure and determine
`
`3
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`performance characteristics for channel coding. This research was not simply
`
`tantamount to “insert tab-A into slot-B.” Contrary to Dr. Stevenson’s testimony in
`
`this proceeding, incorporating unequal error protection into a system required
`
`extensive experimentation even by the leading minds in the field, and Dr.
`
`Stevenson’s own work shows that results were not “predictable.”
`
`Finally, as already explained in Patent Owner’s Preliminary Response, the
`
`testimony and opinions in the Stevenson Declaration are often presented without
`
`any “underlying facts or data” on which they are based. Indeed, the Stevenson
`
`Declaration is frequently a clear copy-and-paste of the Petition’s attorney
`
`argument, without any supporting evidence or reasoning behind the legal
`
`conclusions alleged therein. The Stevenson Declaration therefore is in violation of
`
`37 C.F.R. § 42.65(a) and is entitled to no weight.
`
`For these reasons and more, the challenged claims should be confirmed in a
`
`Final Written Decision, and Petitioners should be estopped to the fullest extent
`
`permitted under 35 U.S.C. § 315(e).
`
`II. The ‘482 Patent Claims Elements Not Disclosed Or Suggested In
`Kato
`a. About U.S. Patent No. 5,850,482 (the “‘482 patent” or “Meany”)
`The ‘482 patent was filed as U.S. Patent Application No. 08/633,896 on
`
`April 17, 1996, and issued on December 15, 1998. The title of the ‘482 patent is
`
`4
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`“ERROR RESILIENT METHOD AND APPARATUS FOR ENTROPY
`
`CODING,” and the ‘482 patent discloses an encoding apparatus that applies
`
`unequal error protection (UEP) to the prefix and suffix of a source-encoded code
`
`word, and further includes information about a characteristic of the suffix into the
`
`prefix of the code word. See, e.g., ‘482 patent at Abstract; 13:36-50; 14:38-56;
`
`16:15-27; Fig. 1 (shown below).
`
`
`
` 
`
`As part of the compression encoding (also referred to as source encoding),
`
`the ‘482 patent discloses a code word generator that encodes data using split field
`
`coding, where each generated code word includes a prefix field and an associated
`
`suffix field. Id. at Abstract. The prefix field includes information representing a
`
`characteristic of the suffix field, such as its length, while the suffix field includes
`
`information representing at least a portion of the original data. Id. As the ‘482
`
`patent explains it, if the prefix field is decoded without any errors, the method and
`
`5
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`apparatus can correctly determine the length of the suffix field or the range of
`
`values represented by the suffix field such that the suffix field is resilient to errors.
`
`Id. To increase the probability that the prefix field is correctly decoded, the prefix
`
`field is protected to a greater degree than the suffix field. Id.
`
`Figure 1 above shows a block diagram of error resilient data compression
`
`apparatus 10. Id. at 8:48–51. Original data is transformed by data transformer 12,
`
`and then quantized by data quantizer 14 such that the quantized data has fewer
`
`unique data values or coefficients than the transformed data. Id. at 9:32-33; 11:36–
`
`39. The quantized data is encoded “to thereby increase the compression
`
`performance by eliminating explicit coding of each insignificant coefficient” by
`
`the data encoder 16. Id. at 13:20-25.
`
`
`
`The data encoder 16 of Figure 1 includes a code word generator 26 to
`
`generate code words that represent the quantized coefficients. Id. at 13:36–39.
`
`Code word generator 26 includes a prefix generator 27 for generating the prefix
`
`field of each code word, and a suffix generator 28 for generating the associated
`
`suffix field of each code word. Id. at 13:44–48. Since each code word is formed of
`
`two fields including a first portion, or prefix field, and an associated second
`
`portion, or suffix field, this method of coding is termed “split field coding” in the
`
`‘482 patent. Id. at 13:41–43; 13:48–50. In split field coding, the prefix field
`
`“includes information representative of the associated suffix field,” examples of
`
`6
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`which include the length of the suffix field, or the range of coefficient values
`
`represented by the suffix field. Id. at 13:51–63. “[i]f the prefix field is decoded
`
`correctly, the method and apparatus of the present invention can correctly
`
`determine the length of the associated suffix field and can also correctly determine
`
`the range of coefficient values to be represented by the suffix field. Id. at 15:61–66.
`
`
`
`In order to improve the probability that the prefix fields will be decoded
`
`correctly, the ‘482 patent error encodes (or channel encodes) the prefix fields at
`
`“an appropriately high level of error protection.” Id. at 16:15–18. Because the
`
`suffix fields are error resilient, “the suffix fields may be channel encoded with a
`
`lower level of error protection” than the prefix fields. Id. at 16:18-21. The lower
`
`level of error protection reduces the addition of redundancies, and therefore
`
`reduces storage requirements and transmission bandwidth. Id. at 16:22–27. To
`
`provide these unequal levels of error protection, the data encoder 16 of FIG. 1
`
`includes unequal error protection means 29 for providing unequal levels of error
`
`protection to the source-encoded data. Id. at 17:1–4.
`
`Once unequal error protection has been applied to the code words, the ‘482
`
`patent discloses that the error-encoded prefixes of the code words can be stored in
`
`a first data block of a storage medium, and the suffixes of the code words can be
`
`stored in a second data block of the storage medium. Id. at 17:14-25; Fig. 1; Fig.
`
`6. In another embodiment, once unequal error protection has been applied to the
`
`7
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`code words, the ‘482 patent discloses that the error-encoded prefixes of the code
`
`words can be transmitted via a first data link, while the suffixes of the code words
`
`can be transmitted via a second data link. Id. at 17:26-37; Fig. 1.
`
`b. Petitioners Challenge Three Independent Claims of the ‘482
`Patent
`Petitioners challenge the validity of claims 1-3, 5-6, 12-14, 16-17, and 28 of
`
`the ‘482 patent. Of these challenged claims, claims 1, 12, and 28 are independent.
`
`These independent claims are presented below:
`
`1. An error resilient method of encoding data comprising the
`steps of:
`generating a plurality of code words representative of respective
`portions of the data, wherein each code word comprises a first portion
`and an associated second portion, and wherein said code word
`generating step comprises the steps of:
`generating the first portion of each code word, wherein said
`first portion generating step comprises the step of including
`information within the first portion that is representative of a
`predetermined characteristic of the associated second portion; and
`generating the second portion of each code word, wherein said
`second portion generating step comprises the step of including
`information within the second portion that is representative of the
`respective portion of the data; and
`
`
`
`8
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`providing error protection to at least one of the first portions of
`the plurality of code words while maintaining any error protection
`provided to the respective second portion associated with the at least
`one first portion at a lower level than the error protection provided to
`the respective first portion.
`
`Claim 12 differs from claim 1 in that claim 12 includes the additional steps
`
`of “transforming the data,” “quantizing the transformed data,” and then “encoding
`
`the quantized data,” as further recited below:
`
`
`12. An error resilient method of compressing data comprising
`the steps of:
`transforming the data based upon a predetermined
`transformation function;
`quantizing the transformed data such that the quantized data has
`fewer unique coefficients than the transformed data; and
`encoding the quantized data, said encoding step comprising the
`steps of:
`generating a plurality of code words, representative of
`respective portions of the data, which have respective first and second
`portions, wherein said code word generating step comprises the steps
`of including information within the first portion that is representative
`of a predetermined characteristic of the associated second portion, and
`including information within the second portion that is representative
`of a respective portion of the data; and
`
`9
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`providing error protection to at least one of the first portions of
`the plurality of code words while maintaining any error protection
`provided to the respective second portion associated with the at least
`one first portion at a lower level than the error protection provided to
`the respective first portion.
`
`
`Claim 28 differs from the method claims of claims 1 and 12, and is directed
`
`to a “computer readable memory for storing error resilient encoded data.”
`
`Additionally, as the elements of claim 28 make clear, the claimed “storage
`
`medium” is “partitioned into a first error protected data block and a second data
`
`block.” Further, claim 28 includes the storage of unequal error protected data.
`
`Relevant elements of claim 28 are emphasized below for easier reference:
`
`
`28. A computer readable memory for storing error resilient
`encoded data, the computer readable memory comprising:
`a storage medium for storing the error resilient encoded data,
`said storage medium being partitioned into a first error protected
`data block and a second data block, wherein any error protection
`provided by said second data block is at a lower level than the error
`protection provided by said first data block; and
`a plurality of code words, representative of respective portions
`of the original data, which have respective first and second portions,
`wherein the first portion of each code word includes information
`representative of a predetermined characteristic of the associated
`
`10
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`second portion, and wherein the associated second portion of each
`code word includes information representative of a respective portion
`of the original data,
`wherein at least one of the first portions of the plurality of code
`words is stored in the first data block of said storage medium such
`that the at least one first portion is error protected, and wherein the
`respective second portion associated with the at least one first portion
`is stored in the second data block of said storage medium such that
`any error protection provided to the respective second portion
`associated with the at least one first portion is at a lower level than the
`error protection provided to the respective first portion.
`
`
`
`Similar to claim 28, dependent claims 5 and 16, which respectively depend
`
`from claims 1 and 12, further limit the underlying “providing error protection”
`
`steps of their independent claims to comprise “storing” the code words in a storage
`
`medium, where the “first data block is error protected.” Thus, claims 5, 16, and 28
`
`each require the claimed “storage medium” to include a first data block that is error
`
`protected. In light of the proper construction of “storage medium” presented in
`
`Section II.c below, Kato fails to disclose or suggest at least these features of claims
`
`5, 16, and 28. As a result, at least these claims must survive this inter partes
`
`review.
`
`As introduced above and as will be explained below with the support of Dr.
`
`Zeger’s testimony, all of Petitioners’ challenges are founded upon deficient
`
`obviousness arguments.
`
`11
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`c. The Petition Fails To Present A Construction For “Storage
`Medium”
`The standard for construing claim terms in this proceeding is not in dispute.
`
`The ‘482 patent is expired as of April 17, 2016, and the parties agree that the
`
`Board reviews the claims of an expired patent according to a district court’s
`
`standard. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Pet. at 17. In
`
`Phillips v. AWH Corp., the court set forth the principle that words of a claim “are
`
`generally given their ordinary and customary meaning” as understood by a person
`
`of ordinary skill in the art in question at the time of the invention, construed to
`
`preserve validity in case of ambiguity. 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005);
`
`see also Omron Oilfield & Marine, Inc. v. MD/TOTCO, a Division of Varco, L.P.,
`
`IPR2013-00265, slip op. at 7 (PTAB Oct. 31, 2013) (Paper 11).
`
`According to 37 C.F.R. § 42.104(b), a petition must identify both “[h]ow the
`
`challenged claim is to be construed” and “[h]ow the construed claim is
`
`unpatentable … .” 37 C.F.R. § 42.104(b)(3)-(4) (emphasis added). Patent Owner
`
`disagrees with Petitioners’ proposed claim constructions to the extent they differ
`
`from the claim constructions reached by the Board in the Institution Decision
`
`(Paper 15) and from the claim constructions reached by the District Court in co-
`
`pending litigation. See generally Ex. 1014.
`
`Patent Owner further notes that Petitioners failed to provide any proposed
`
`construction for the claimed “storage medium” of claims 5, 16, and 28. This term
`
`12
`
`

`

`IPR2016-01179 – Patent Owner’s Response
`
`is properly construed according to the ‘482 patent as a physical storage device or
`
`memory, and should not be construed so broadly as to cover a transmission
`
`channel, data link, or transmission media generally. Zeger at ¶34. This proper
`
`construction is consistent with the preamble of claim 28, which is directed to
`
`“computer readable memory.” ‘482 patent at 22:23. Additionally, as Dr. Zeger
`
`testifies, transmission channels and data links do not generally store data. Zeger at
`
`¶34. Nevertheless, Patent Owner anticipates that Petitioners will attempt, in their
`
`Petitioners’ Reply, to construe or characterize the claimed “storage medium” to
`
`cover transmission channels, data links, or transmission media as allegedly
`
`disclosed or suggested by Kato.
`
`Specifically, during the deposition of Dr. Stevenson, Petitioners’ technical
`
`declarant, Dr. Stevenson identified the bottom of Kato’s column 32 and top of
`
`column 33 as allegedly disclosing other “examples of data store regions besides the
`
`RAM [617] in Kato.” The precise testimony is quoted below:
`
`Q. Are there other examples of data store regions besides the
`RAM in Kato?
`MR. HELGE: Objection, scope.
`A. I think there's a discussion that begins at the bottom of
`column 32 and goes on through the paragraph -- continues on column
`33. There's discussion of various other sorts of data storage there or
`data regions.
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`IPR2016-01179 – Patent Owner’s Response
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`Q. So is it your testimony that these would provide additional
`examples?
`A. Sure.
`MR. HELGE: Objection, leading.
`A. Yes.
`Ex. 2006 at 138:11-139:1. As discussed in Section III.h below, this
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`testimony elicited from Dr. Stevenson by Petitioners’ counsel represents an
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`improper new theory not presented in the Petition or Dr. Stevenson’s declaration,
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`Ex. 1005, and it should not be permitted post-institution. Moreover, Kato’s
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`disclosure in the cited portions of columns 32-33 fails to support an impermissibly
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`broad interpretation of the claimed “storage medium” of claim 28.
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`In describing a “data store region,” Kato’s column 33 explains that “[i]t is
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`unnecessary that a data store region always agrees with a physical data store region
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`(for example, a data store region in a packet in the case of packet transmission, or a
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`data region in a sector in the case of a disk-shaped recording medium).” Kato at
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`33:2-7. Even assuming that this cited excerpt of Kato characterizes a “data store
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`region” to include a transmission channel, data link, or transitory data carried on a
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`transmission medium, this disclosure does not stand for the proposition that the
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`claimed “storage medium” of the ‘482 patent could be construed as a signal or
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`transmission channel. Indeed, to construe the claimed “storage medium” of claims
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`5, 16, and 28 based on the extrinsic evidence of Kato over the ‘482 patent’s own
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`IPR2016-01179 – Patent Owner’s Response
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`specification would be in violation of the principles of claim construction under
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`Phillips v. AWH Corp., 415 F.3d 1303, 1317-18 (Fed. Cir. 2005) (“We have
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`viewed extrinsic evidence in general as less reliable than the patent and its
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`prosecution history in determining how to read claim terms, for several reasons.”).
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`Here, the ‘482 patent claims clearly distinguish between the concept of
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`“storing” data “in a first data block of a storage medium” and the concept of
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`“transmitting” data “via a first data link.” Ex. 1001 at 18:57-59; 19:1-2. To
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`interpret a “storage medium” to be tantamount to a transmission channel, signal, or
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`transmission media is to overlook that the ‘482 patent purposefully claimed the
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`transmission of data using different terms than “storage medium.”
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`The specification and drawings of the ‘482 patent also support the proper
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`interpretation of a “storage medium” as a physical storage medium. Zeger at ¶35.
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`For example, in FIG. 1 of the ‘482 patent, the Storage Medium is represented as
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`module 18, and is arranged parallel to a Transmitter module 20 accessing data
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`links 22 and 24. Ex. 1001, FIG. 1. As described in the ‘482 specification, the
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`storage medium 18 may be a “magnetic disk storage which is error protected as
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`shown in FIG. 6.” Id. at 17:15-19. In contrast to storing the compressed and
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`encoded data in a storage medium 18, the ’482 patent discloses that “the
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`compressed and encoded data can be efficiently transmitted, such as via first and
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`second data links.” Id. at 17:26-27. This usage clearly indicates that the ‘482
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`IPR2016-01179 – Patent Owner’s Response
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`patent uses different terms to describe physical storage media versus transmitted
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`data, transmission media, and transmission channels.
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`Thus, in the ‘482 patent, the term “storage medium” refers to a physical
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`storage device or disk, and should not be construed in a manner that contradicts
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`this usage. Zeger at ¶¶34-35. Specifically, the term “storage medium” should not
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`be construed to refer to a transmission channel, data link, or transmission media
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`generally. The Federal Circuit has previously recognized a similar distinction
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`between a storage medium and a signal. See In re Nuijten, 500 F.3d 1346, 1351
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`(Fed. Cir. 2007). Therefore, even assuming that Kato’s