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
`PRELIMINARY RESPONSE
` 
`
`

`
`TABLE OF CONTENTS
`
`
`
`Introduction .......................................................................................................... 1
`I.
`II. Background .......................................................................................................... 3
`a. About U.S. Patent No. 5,850,482 (the “‘482 patent” or “Meany”) .................. 3
`b. Petitioners Challenge Three Independent Claims of the ‘482 Patent .............. 4
`c. The Petition is Fundamentally Flawed Because Petitioners Fail to Apply
`Their Own Claim Constructions in the Challenges ................................................ 8
`III. Argument ........................................................................................................ 13
`a. The Petition Fails to Establish a Reason to Combine Three Embodiments of
`Kato ....................................................................................................................... 14
`b. Kato Fails to Disclose a “first data block of a storage medium” that is “error
`protected” as Required in Claims 5, 16, and 28 ................................................... 26
`c. There is No Reason to Combine Kato with Wei ............................................ 31
`d. The Stevenson Declaration is Entitled to No Weight .................................... 35
`IV. Conclusion ...................................................................................................... 37
`
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`

`
`Cases
`
`TABLE OF AUTHORITIES
`
`Arendi S.A.R.L. v. Apple Inc., --- F.3d ---, 2016 WL 4205964 (Fed. Cir. 2016) ..... 15
`Continental Can Co. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991) ................ 11
`Corning Incorporated v. DSM IP Assets B.V., Case No. IPR2013-00048 (PTAB
`May 9, 2014) (paper 94) ....................................................................................... 36
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc., Case No. IPR2013-00183
`(PTAB July 13, 2013) (paper 12) ......................................................................... 25
`In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) ............................................................. 12
`In re Oelrich, 666 F.2d 578 (CCPA 1981) .............................................................. 11
`In re Rambus, Inc., 694 F.3d 42 (Fed. Cir. 2012) ...................................................... 8
`In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993) .......................................................... 10
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) .................................. 14, 18, 32
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, Case No. IPR2014-
`01092 (PTAB Jan. 13, 2015) (paper 9) ................................................................. 32
`MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362 (Fed. Cir. 1999) ............. 10
`Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ..................... 14
`Omron Oilfield & Marine, Inc. v. MD/TOTCO, a Division of Varco, L.P., Case No.
`IPR2013-00265 (PTAB Oct. 31, 2013) (paper 11) ................................................ 8
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ........................................... 8
`TRW Automotive U.S. LLC v. Magna Electronics Inc., Case No. IPR2014-01355
`(PTAB Nov. 19, 2015) (paper 21) ........................................................................ 18
`Statutes
`
`35 U.S.C. § 314(a) .................................................................................... 1, 2, 13, 37
`Other Authorities
`
`M.P.E.P. § 2112 (IV) ............................................................................................... 10
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ............... 36
`Rules
`
`37 C.F.R. § 42.65(a) ............................................................................................ 2, 36
`37 C.F.R. § 42.104(b) ......................................................................................... 1, 12
`Fed. R. Evid. 705 ..................................................................................................... 36
`
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`
`LIST OF PATENT OWNER’S EXHIBITS
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`
`
`Description
`
`Patent Owner FastVDO LLC’s Power of Attorney
`
`
`
`
`
`
`Exhibit
`
`2001
`
`
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`iv 
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`IPR2016-01179 – Preliminary Response
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`I.
`
`Introduction
`
` 
`
`The Petition for inter partes review of U.S. Patent No. 5,850,482 (“the ‘482
`
`patent” or “Meany”) should be denied and no trial instituted because there is no
`
`“reasonable likelihood that the petitioner would prevail with respect to at least 1 of
`
`the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`The Petition 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 further challenge dependent claims 6 and 17
`
`as allegedly obvious over Kato in view of U.S. Patent No. 5,243,629 to Wei
`
`(“Wei”).
`
`But the Petition itself is fundamentally deficient under 37 C.F.R. § 42.104(b)
`
`for failing to apply its own proposed (and incorrect) claim constructions in the
`
`challenges of each claim.
`
`Substantively, each of Petitioners’ challenges fails for a variety of reasons.
`
`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, the Petitioners instead rely on impermissible hindsight,
`
`alleged common sense, and attorney argument couched as “expert” testimony.
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`IPR2016-01179 – Preliminary Response
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`Additionally, even assuming arguendo that the combinations and modifications of
`
`art were properly supported, the alleged combinations do not disclose or suggest all
`
`features of all challenged claims.
`
`The Petition cites to and relies upon the supporting Stevenson Declaration
`
`(“Stevenson Dec.”, Ex. 1005), but the testimony and opinions in this Declaration
`
`are presented without any “underlying facts or data” on which they are based.
`
`Indeed, as will be described and shown below, the Stevenson Declaration is often 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 Petition fails to meet its burden in
`
`establishing a reasonable likelihood of success on any challenged claim. Since the
`
`Petition fails to show a “reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims,” the Petition must be denied. 35 U.S.C. §
`
`314(a).
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`IPR2016-01179 – Preliminary Response
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`II.
`
`Background
`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
`
`“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 code word, and further
`
`includes information about a characteristic of the suffix into the prefix of the code
`
`word. See, e.g., Meany at Abstract; 13:36-50; 14:38-56; 16:15-27; Fig. 1 (shown
`
`below).
`
`Once unequal error protection has been applied to the code words, the ‘482
`
`patent discloses that the 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
`
`
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`IPR2016-01179 – Preliminary Response
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`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 code
`
`words, the ‘482 patent discloses that the 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
`
`
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`IPR2016-01179 – Preliminary Response
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`information within the second portion that is representative of the
`respective portion of the data; and
`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
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`IPR2016-01179 – Preliminary Response
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`including information within the second portion that is representative
`of a respective portion of the data; and
`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 by being
`
`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.” 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
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`IPR2016-01179 – Preliminary Response
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`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. Kato fails to disclose or suggest at least these features. As a result, at
`
`least claims 5, 16, and 28 must survive this inter partes review. And as will be
`
`explained below, other dependent claims are also independently patentable over
`
`Kato, whether considered alone or in view of Wei.
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`IPR2016-01179 – Preliminary Response
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`c. The Petition is Fundamentally Flawed Because Petitioners
`Fail to Apply Their Own Claim Constructions in the
`Challenges
`
`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). See, e.g., 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., Case No. IPR2013-00265, slip op. at 7 (PTAB Oct. 31,
`
`2013) (paper 11).
`
`While Petitioners have proposed a construction for the term, “code word,”
`
`they have not applied that construction in their challenges. Petitioners contend that
`
`the “code word” should be interpreted as a “code from a code book representing a
`
`symbol.” Pet. at 19. Patent Owner disagrees with this interpretation since, as
`
`Petitioners admit, the ‘482 specification discloses a code book as just one
`
`embodiment: “The assignment of code words for entropy coding is typically
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`IPR2016-01179 – Preliminary Response
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`governed by means of a codebook which must be known to both the encoder and
`
`decoder.” ‘482 patent at 4:51-54 (emphasis added); see also Pet. at 19. As will be
`
`explained, Petitioners fail to apply their proposed construction throughout the
`
`Petition.
`
`Petitioners contend that a “first portion of each code word” should be
`
`interpreted as a “prefix field of a code word generated in a manner such that a bit
`
`error in the field could result in a potential loss of code word synchronization.”
`
`Pet. at 20. And Petitioners contend that a “second portion of each code word”
`
`should be interpreted as a “suffix field of a code word generated in a manner such
`
`that a bit error in the field results in a miscoded value that falls in a predetermined
`
`range about the correct value.” Pet. at 21. Thus, summarizing Petitioners’ claim
`
`construction position on these three terms, Petitioners contend that the “first
`
`portion of each code word” and “second portion of each code word” are fields of a
`
`“code word,” which is “code from a code book.”
`
`In Petitioners’ challenge of claim 1, however, Petitioners deviate from these
`
`proposed constructions. Petitioners first characterize Kato’s coded data Ci as
`
`“code words” and describe Ci as being “generated as two portions, CJi and CEi.”
`
`Pet. at 42. But Petitioners stop short of arguing that CEi is “code from a code
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`IPR2016-01179 – Preliminary Response
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`book,” and instead argue that CEi “is created using a code book, namely the
`
`combination of Ji and Table 1.” Pet. at 42 (emphasis added).1
`
`Petitioners’ characterization of CJi also suffers a fatal defect. There,
`
`Petitioners argue that “Kato describes the use of Huffman coding to generate the
`
`CJi portion of the code word to represent the symbol Ji (Kato, 10:45-49), which
`
`necessarily requires a codebook.” Pet. at 42 (emphasis added). In essence, as the
`
`basis to argue that coded data CJi is “from a code book,” Petitioners have resorted
`
`to a theory of inherency in order to match Petitioners’ own proposed claim
`
`construction to Kato’s disclosure. Such a theory is completely unsupported by the
`
`Petition and the Stevenson Declaration.
`
`It is well-understood that for a theory of inherency to succeed, it is not
`
`enough that the missing disclosure could be present. Rather, the missing disclosure
`
`must necessarily be disclosed present in the cited reference. “The fact that a certain
`
`result or characteristic may occur or be present in the prior art is not sufficient to
`
`establish the inherency of that result or characteristic.” M.P.E.P. § 2112 (IV)
`
`quoting In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993); see also
`
`MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
`
`Inherency may not be established by probabilities or possibilities. In re Oelrich,
`                                                            
`1 Neither Ei nor CEi is included in Kato’s Table 1, and therefore neither Ei nor CEi
`
`is “from” Kato’s Table 1. See Kato at 7:34-54.
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`IPR2016-01179 – Preliminary Response
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`666 F.2d 578, 581 (CCPA 1981). For establishing inherency, that which is missing
`
`in the express description must necessarily be present and would be so recognized
`
`by one having ordinary skill in the art. Continental Can Co. v. Monsanto Co., 948
`
`F.2d 1264, 1268 (Fed. Cir. 1991).
`
`Despite this standard, Petitioners have offered no evidence that a POSITA
`
`would have recognized that Huffman coding must necessarily require a codebook,
`
`as Petitioners’ attorney argument contends. Indeed, the Stevenson Declaration
`
`includes no further discussion of the allegedly inherent requirement of a code book
`
`for Huffman coding. Rather, the Stevenson Declaration is merely a copy of the
`
`Petition’s unsupported conclusion about inherent disclosure. And the act of moving
`
`attorney argument from the Petition to the Declaration does not convert it from
`
`argument to evidence. Compare Stevenson Decl. ¶93 with Pet. 42:
`
`Stevenson Decl., ¶93:
`
`Petition, p. 42:
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`IPR2016-01179 – Preliminary Response
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`Closing this loop, the Petition concludes that “because Ci is a combination
`
`of portions CJi and CEi, it, too, qualifies as a ‘code from a code book representing
`
`a symbol.’” Pet. at 42 (citing to Stevenson Dec., ¶¶91-95). But as shown above,
`
`Petitioners rely upon an unsupported inherency argument to characterize CJi as
`
`“from a code book,” and completely abandon any argument that CEi is a code
`
`“from” a code book. The characterization of Ci as “from a code book” is not
`
`supported by is Petitioners’ interpretations of CJi and CEi. This is a fatal flaw in
`
`the Petition under the Board’s Rules.
`
`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). The present
`
`Petition fails to comply with this requirement by deviating from Petitioners’ own
`
`proposed constructions in its challenge of claim 1. This deficiency as to claim 1 is
`
`prominent on pp. 41-42 of the Petition, as described above, and this deficient
`
`reasoning for claim 1 is adopted by reference in Petitioners’ challenges of
`
`independent claim 12 (see p. 54) and independent claim 28 (see p. 58). Further,
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`each of the challenged dependent claims must survive where the Petition cannot
`
`establish obviousness of the independent claims. See In re Fine, 837 F.2d 1071,
`
`1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the
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`IPR2016-01179 – Preliminary Response
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`independent claims from which they depend are nonobvious.”). Thus, this
`
`deficient reasoning as to claim 1 taints the entire Petition.
`
`While Patent Owner disagrees with Petitioners’ proposed claim
`
`constructions, Patent Owner maintains that none of the claims terms require
`
`construction for the Board to deny the Petition in full without institution of inter
`
`partes review, for the reasons explained in Section III below.2
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`III. Argument
`
` 
`
`In order to justify the institution of an inter partes review, the Petitioners
`
`must establish that there is a “reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). Not only is the Petition deficient as explained above, but none of
`
`Petitioners’ challenges meet this required threshold for institution. The Board
`
`should deny the Petition and decline to institute the inter partes review.
`
`                                                            
`2 Patent Owner reserves all right to present further argument and evidence related
`
`to claim construction if inter partes review is instituted, consistent with the
`
`Board’s Rules and practice. No waiver is intended by any claim construction
`
`argument withheld at this stage of the proceeding. 
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`IPR2016-01179 – Preliminary Response
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`a. The Petition Fails to Establish a Reason to Combine Three
`Embodiments of Kato
`
`Where a prior art reference discloses two embodiments, neither of which
`
`discloses all elements of a claim as arranged in the claim, those embodiments
`
`cannot be combined for anticipation purposes. See Net MoneyIN, Inc. v. Verisign,
`
`Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). In that situation, the challenger must
`
`present an obviousness analysis to support the combination of the embodiments.
`
`Further, under the law governing obviousness, a petitioner must show a reason
`
`why a POSITA would have thought to combine particular available elements of
`
`knowledge, as evidenced by the prior art, to reach the claimed invention. KSR Int’l
`
`Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). This reasoned analysis must avoid
`
`“hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”
`
`Id. at 421.
`
`Even more complex than the scenario described in Net MoneyIN, here the
`
`Petitioners seek to combine three separate embodiments of Kato. There is no
`
`dispute that each of these embodiments separately fails to disclose all the features
`
`of the challenged claims. As a result, Petitioners purport to combine the first,
`
`third, and fourth embodiments of Kato. Pet. at 38-41. But the Petition fails to
`
`establish the necessary reason, or rationale, for the combination of all three
`
`embodiments. Specifically, even if Kato can be relied upon to disclose an express
`
`suggestion to combine embodiments 1 and 3, there is no reason aside from
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`IPR2016-01179 – Preliminary Response
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`improper hindsight in the Petition, the Stevenson Declaration, or in Kato to justify
`
`a modification of Kato’s first or third embodiments with the fourth embodiment.
`
`And since each challenge relies upon this unsupported combination of the fourth
`
`embodiment of Kato with the first and third embodiment, each challenge is
`
`necessarily deficient.
`
`In their introduction of the “detailed explanation of each ground for
`
`challenge claims of the [‘]482 patent,” Petitioners advocate for the use of
`
`“common sense” and attempt to soften the requirement to find the required “reason
`
`why a POSITA would have thought to combine particular available elements of
`
`knowledge.” Id. at 418. But this invitation runs contrary to the recent guidance
`
`from the U.S. Court of the Appeal for the Federal Circuit in Arendi S.A.R.L. v.
`
`Apple Inc., --- F.3d ---, 2016 WL 4205964 (Fed. Cir. 2016). There, the Federal
`
`Circuit admonished against relying on common sense in lieu of reasoned analysis:
`
`“whether to supply a motivation to combine or a missing limitation—[common
`
`sense] cannot be used as a wholesale substitute for reasoned analysis and
`
`evidentiary support, especially when dealing with a limitation missing from the
`
`prior art references specified.” Id. at *7.
`
`Petitioners’ alleged motivation to combine three embodiments of Kato is
`
`described at pp. 38-41 of the Petition. There, Petitioners allege that Kato “itself
`
`provides express motivation to combine” the first and third embodiments, and
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`IPR2016-01179 – Preliminary Response
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`point to Kato’s disclosure at 20:11-12, 21-25. Pet. at 39. In truth, Kato discloses
`
`that the “encoding circuit 405 [of the third embodiment] is similar in structure to
`
`the encoding apparatus of FIG. 1(a) [the first embodiment].” Kato at 20:11-12.
`
`But Kato then proceeds to explain that the “signal inputted into the encoding
`
`circuit 405 is different from the signal inputted into the encoding apparatus of FIG.
`
`1(a).” Id. at 20:12-15. While the first embodiment’s input signal is “image data,”
`
`the third embodiment’s signal is “the data which results from quantizing the DC
`
`coefficient … of a block having 8x8 pixels.” Id. at 20:15-20. As will be seen,
`
`Petitioners never address this difference when proposing to then incorporate the
`
`fourth embodiment.
`
`Petitioners diverge from the express language of Kato when looking next to
`
`“combine Kato’s fourth embodiment with its first embodiment.” Pet. at 39. Any
`
`reason for proposing this combination can only be described as hindsight-based,
`
`without any supporting evidence. Specifically, Petitioners look to Kato’s disclosed
`
`use of error correction codes by ECC encoder 603 in the fourth embodiment,3 and
`
`                                                            
`3 Petitioners also cite back to section VI.A.2 of the Petition (Pet. at 39), but that
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`section incorrectly argues that Kato’s data store region shown in Fig. 7 includes
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`error protection. As explained in Section III.b of this Preliminary Response,
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`Kato’s error correction codes are applied by ECC encoder 603, which is
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`argue that it “would have been obvious to apply unequal error protection to the
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`first and second portions CJi and CEi of the first embodiment, respectively … .”
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`Pet. at 39. But this argument finds no support in Kato, and is not supported with
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`any objective evidence or data. Indeed, in the argument spanning pp. 39-40 of the
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`Petition, Petitioners again revert to hindsight rationale for applying error protection
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`to Kato’s first embodiment by concluding that a POSITA “would have been
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`motivated to provide higher level of error protection, as described in Kato’s fourth
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`embodiment, to the first portions CJi from Kato’s first embodiment … .” Pet. at 40
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`(citing to Stevenson Dec. ¶87). Petitioners undertake no factual analysis of the
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`differences in the signals being input and output from the fourth embodiment’s
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`encoding circuit 602 and the first embodiment’s encoding apparatus, or how the
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`differences would affect such a proposed combination.
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`Even the Stevenson Declaration, which is cited to twice on p. 40 of the
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`Petition, merely reiterates the attorney argument of these pages without adding any
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`objective evidence or data that would be necessary for the Stevenson Declaration
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`to be entitled to any weight. Compare Stevenson Dec. ¶¶83-87 with Pet. 39-40.
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`This trend continues into the next and final paragraph of Petitioners’ motivation
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`                                                                                                                                                                                                
`downstream of the RAM 617 having the data store regions. The data store region
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`shown in Fig. 7 includes no error correction codes.
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`section, and that paragraph best magnifies the erroneous and unsupported
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`combination argument advanced by Petitioners.
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`In this final paragraph of the section, Petitioners contend that incorporating
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`“Kato’s transforming and quantizing steps from its third embodiment and its
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`unequal error protection scheme from its fourth embodiment” into Kato’s first
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`embodiment could be achieved “without the need for undue experimentation” and
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`would “yield[ ] predictable results.” Pet. at 40. But there is absolutely no evidence
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`for either of these factual assertions. While Petitioners cite to Stevenson Dec., ¶88
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`at the conclusion of this paragraph, the Stevenson Declaration again offers no
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`factual underpinning for these allegations. Rather, as before, the Stevenson
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`Declaration ¶88 is a copy-and-paste of the Petition’s attorney argument, and this is
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`not objective evidence necessary to support the factual assertions of no “undue
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`experimentation” and “predictable results.” Further, as the Board has correctly
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`recognized in the past, “[t]he issue is not whether a skilled artisan could” have
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`implemented the proposed modification, but instead “whether a skilled artisan
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`would have been motivated to do so based on the teachings of the references; the
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`effects of demands known to the design community or present in the marketplace;
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`and the background knowledge possessed by a [POSITA] … .” TRW Automotive
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`U.S. LLC v. Magna Electronics Inc., Case No. IPR2014-01355, slip op. at 15-16
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`(PTAB Nov. 19, 2015) (paper 21) (citing to KSR, 550 U.S. at 418). Here,
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`Petitioners have provided no support for the alleged motivation to combine
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`embodiments.
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`Moreover, in glossing over the details of Kato’s various embodiments,
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`Petitioners have failed to evaluate whether Kato’s fourth embodiment is in fact
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`compatible with the first embodiment (or the third embodiment as modified by the
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`first embodiment). In order to establish the differences between Kato’s
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`embodiments, greater discussion of their workings is necessary, beginning with
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`Fig. 6(a) representing Kato’s fourth embodiment.
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`
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`The main purpose of Kato’s fourth embodiment is to disclose an encoding
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`circuit that “encodes the input data Di into a variable-length code, and places the
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`variable-length code in a data store region within a data transmission format.”
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`Kato at 23:54-57. Specifically, after Kato’s input terminal 601, ROM 606 outputs
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`“bit-parallel-format data Vi of a variable length code word Ci corresponding to the
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`input data Di.” Id. at 24:2-5. Shift register 607 converts the bit-parallel-format
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`data Vi into bit-series format, and stores this data into RAM 617 in the format of a
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`first portion Pi and a second portion Ri. Id. at 24:46-50; 25:24-31. These portions
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`are arranged in data store region shown in Fig. 7, in bit serial format, with a clear
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`delineation (“open area”) between the region for first portions Pi and the region for
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`second portions Ri. Id. at 24:63-65; Fig. 7.
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`This data, stored in the bit serial format, is also “read out from the data store
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`region in a bit serial format.” Id. at 26:64-66. The ECC encoder 603 adds the
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`ECC to the output data (including both the first portions and the second portions),
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`which is then modulated by the modula