UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`FASTVDO LLC,
`Patent Owner
`
`_______________
`
`Case IPR2016-01203
`Patent 5,850,482
`
`_______________
`
`
`
`
`
`PATENT OWNER FASTVDO LLC’s
`PRELIMINARY RESPONSE
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`
`

`
`TABLE OF CONTENTS
`
`
`
`Introduction .......................................................................................................... 1
`I.
`II. Background .......................................................................................................... 2
`a. About U.S. Patent No. 5,850,482 (the “‘482 patent” or “Meany”) .................. 3
`b. Petitioner Challenges the Five Independent Claims of the ‘482 Patent ........... 4
`c. Petitioner’s Request for Review of Claims 7-11 and 22-26 Must be Denied 10
`III. Argument ........................................................................................................ 13
`a. The Petition Fails to Establish Obviousness of the Challenged Claims over
`Kato ....................................................................................................................... 14
`b. The Petition Fails to Remedy Kato’s Fourth Embodiment Deficiencies with
`Other Embodiments of Kato ................................................................................. 18
`c. Kato Fails to Disclose a “first data block of a storage medium” that is “error
`protected” as Required in Claims 5, 10, 16, 25, and 28 ....................................... 27
`d. Kato Fails to Disclose a “first data link” that is “error protected” as Required
`in Claims 6, 11, 17, and 26 ................................................................................... 32
`e. Petitioner’s Second Challenge Fails to Establish Proper Motivation for
`Combining Fiala with Fazel and Fazel ‘622 ......................................................... 34
`f. Petitioner Also Fails to Establish Proper Motivation for Incorporating the
`Claimed Data Transforming and Quantizing Into Fiala ....................................... 37
`g. Claims 5, 10, 16, 25, and 28 are Independently Patentable Over Petitioner’s
`Second Ground ...................................................................................................... 39
`h. Claim 29 Should be Dismissed from Inter Partes Review ............................ 40
`IV. Conclusion ...................................................................................................... 41
`
`ii 
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`Cases
`
`TABLE OF AUTHORITIES
`
`Gracenote, Inc. v. Iceberg Industries LLC, Case No. IPR2013-00551 (PTAB Feb.
`28, 2014) (paper 6). ............................................................................................... 12
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc., Case No. IPR2013-00183
`(PTAB July 13, 2013) (paper 12) ......................................................................... 27
`In re Rambus, Inc., 694 F.3d 42 (Fed. Cir. 2012) .................................................... 10
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ......................................... 19, 34
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, Case No. IPR2014-
`01092 (PTAB Jan .13, 2015) (paper 9) .......................................................... 34, 35
`Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ..................... 18
`Omron Oilfield & Marine, Inc. v. MD/TOTCO, a Division of Varco, L.P., Case No.
`IPR2013-00265 (PTAB Oct. 31, 2013) (paper 11) .............................................. 11
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 10
`Statutes
`
`35 U.S.C. § 112(b) ................................................................................................... 12
`35 U.S.C. § 112(f) ........................................................................................... 4, 8, 11
`35 U.S.C. § 311(b) ............................................................................................ 12, 40
`35 U.S.C. § 314(a) .................................................................................... 1, 2, 13, 41
`Other Authorities
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ............... 36
`Rules
`
`37 C.F.R. § 42.65 ..................................................................................................... 36
`37 C.F.R. § 42.104(b)(2) ................................................................................... 12, 40
`37 C.F.R. § 42.104(b)(3) ............................................................................... 2, 11, 12
`37 C.F.R. § 42.104(b)(4) ............................................................................. 11, 12, 39
`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
`
`Patent Owner’s Opening Claim Construction Brief in FastVDO
`LLC v. AT&T Mobility LLC et al., Case No. 3:16-cv-00385
`
`
`
`
`
`Exhibit
`
`2001
`
`2002
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`
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`IPR2016-01203 – Preliminary Response
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`
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`
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`I.
`
`Introduction
`
`The Petition (“Pet.”) 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, 5-14, 16-17,
`
`22-26, and 28-29 of the ‘482 patent. Petitioner first challenges these claims as
`
`allegedly obvious over U.S. Patent No. 5,392,037 to Kato (“Kato”) alone, and next
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`challenges these claims as allegedly obvious over a combination of three
`
`references:
`
` Fiala and Greene, “Data Compression with Finite Windows,”
`
`Communications of the ACM, Vol. 32, No. 4, pp. 490-505 (1989)
`
`(“Fiala”);
`
` Fazel and Lhuillier, “Application of Unequal Error Protection Codes
`
`on Combined Source-Channel Coding of Images,” International
`
`Conference on Communications, Including SuperComm Technical
`
`Sessions (IEEE), Atlanta, April 15-19, 1990, Vol. 3, pp. 898-903
`
`(“Fazel”); and
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`1 
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`IPR2016-01203 – Preliminary Response
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` U.S. Patent No. 5,218,622 to Fazel et al. (“Fazel ‘622)
`
`But the Petition itself is fundamentally and procedurally deficient under 37
`
`C.F.R. § 42.104(b)(3) for failing to present any proposed construction on the terms
`
`that Petitioner contends are means-plus-function terms. This alone is reason
`
`enough for the Board to deny institution on at least claims 7-11 and 22-26.
`
`Substantively, Petitioner’s challenges each fail 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 Petitioner instead relies on impermissible hindsight
`
`and unsupported attorney argument. Additionally, even assuming that the
`
`combinations and modifications of art were properly supported, both independent
`
`and dependent claims are independently patentable over the alleged combinations.
`
`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,” and since Petitioner has failed to comply
`
`with the Board’s requirements in making the requisite showing, the Petition should
`
`be denied. 35 U.S.C. § 314(a).
`
`II. Background
`
`
`
`2 
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`IPR2016-01203 – Preliminary Response
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`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
`
`second data block of the storage medium. Id. at 17:14-25; Fig. 1; Fig. 6. In
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`IPR2016-01203 – Preliminary Response
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`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. Petitioner Challenges the Five Independent Claims of the ‘482
`Patent
`
`Petitioner challenges the validity of claims 1-3, 5-14, 16-17, 22-26, and 28-
`
`29 of the ‘482 patent. Of these challenged claims, claims 1, 7, 12, 22, and 28 are
`
`independent. Petitioner contends that independent claims 7 and 22 invoke means-
`
`plus-function law under 35 U.S.C. § 112(f).1 See Pet. at 9-16. Thus, these claims
`
`will be addressed separately from independent claims 1, 12, and 28.
`
`Claims 1, 12, and 28
`
`Independent claims 1, 12, and 28 do not invoke a means-plus-function
`
`analysis, and these three independent claims are discussed 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:
`                                                            
`1 Formerly 35 U.S.C. § 112, ¶6.
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`IPR2016-01203 – Preliminary Response
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`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
`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:
`
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`IPR2016-01203 – Preliminary Response
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`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
`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
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`IPR2016-01203 – Preliminary Response
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`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
`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. The art relied upon in the Petition’s two grounds for challenge each
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`IPR2016-01203 – Preliminary Response
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`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. 2 And as will be explained below,
`
`other claims are also independently patentable over Petitioner’s art of record.
`
`Claims 7 and 22
`
`As noted above, Petitioner contends that these independent claims are in
`
`means-plus-function format and invoke 35 U.S.C. § 112(f). These two
`
`independent claims are introduced below:
`
`7. A data encoding apparatus comprising:
`code word generating means for 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 means comprises:
`first generating means for generating the first portion of each
`code word, said first generating means comprising means for
`including information within the first portion that is representative of
`a predetermined characteristic of the associated second portion; and
`second generating means for generating the second portion of
`each code word, said second generating means comprising means for
`
`                                                            
`2 While the Board should deny institution of claims 7-11 and 22-26 due to the
`
`Petition’s clear deficiencies (see Section II.c below), dependent claims 10 and 25
`
`include similar features as claims 5, 16, and 28, and must also survive this inter
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`partes review. 
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`IPR2016-01203 – Preliminary Response
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`including information within the second portion that is representative
`of the respective portion of the data; and
`error protection means for 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.
`The differences between claim 7 and claim 22 are similar to the differences
`
`between claim 1 and claim 12. Specifically, like claim 12, claim 22 includes claim
`
`language directed to “transforming the data,” “quantizing the transformed data,”
`
`and “encoding the quantized data,” emphasized below for easier reference:
`
`22. An error resilient data compression apparatus comprising:
`a data transformer for transforming the data based upon a
`predetermined transformation function;
`a data quantizer for quantizing the transformed data such that
`the quantized data has fewer unique coefficients than the transformed
`data; and
`a data encoder for encoding the quantized data, said data
`encoder comprising:
`code word generating means for 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 means comprises means for including information within
`the first portion that is representative of a predetermined characteristic
`of the associated second portion, and means for including information
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`IPR2016-01203 – Preliminary Response
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`within the second portion that is representative of a respective portion
`of the data; and
`error protection means for 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.
`
`
`The Petition’s deficiencies as to claims 7 and 22, and all the claims that
`
`depend therefrom, are explained in more detail in Section II.c.
`
`c. Petitioner’s Request for Review of Claims 7-11 and 22-26 Must be
`Denied
`
`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
`
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`IPR2016-01203 – Preliminary Response
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`Varco, L.P., Case No. IPR2013-00265, slip op. at 7 (PTAB Oct. 31, 2013) (paper
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`11).
`
`However, under 37 C.F.R. § 42.104(b)(3), a petition must include the
`
`petitioner’s position on “[h]ow the challenged claim is to be construed.” Further,
`
`“[w]here the claim to be construed contains a means-plus-function … limitation as
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`permitted under 35 U.S.C. § 112(f), the construction of the claim must identify the
`
`specific portions of the specification that describe the structure, material, or acts
`
`corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Petitioner
`
`contends that claims 7, 8, 11, 22-24, and 26 include means-plus-function terms.
`
`Pet. at 9-16. However, Petitioner does not describe the structure, materials, or acts
`
`corresponding to the terms that Petitioner contends are in means-plus-function
`
`format. Rather, Petitioner takes the position that these claims (claims 7 and 22,
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`and therefore all claims that depend therefrom) are indefinite. See Pet. at 9-16.
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`Further, Petitioner’s failure under 37 C.F.R. § 42.104(b)(3) as to at least
`
`claims 7 and 22 (and the claims that depend therefrom) means that the Petition is
`
`necessarily deficient as to these same claims under 37 C.F.R. § 42.104(b)(4). This
`
`rule requires a petition to also include the petitioner’s statement on “[h]ow the
`
`construed claim is unpatentable under the statutory grounds identified in paragraph
`
`(b)(2) of this section.” (emphasis added). Because Petitioner does not present a
`
`construction for the alleged means-plus-function terms in claims 7 and 22,
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`IPR2016-01203 – Preliminary Response
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`Petitioner has not provided a statement on how the “construed” claims are
`
`allegedly unpatentable.
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`Finally, there is no dispute that indefiniteness under 35 U.S.C. § 112(b) is
`
`not a permissible challenge in inter partes review. See 35 U.S.C. § 311(b); 37
`
`C.F.R. § 42.104(b)(2). And yet that is exactly the challenge that Petitioner alleges
`
`before the Board on claims 7, 22, and all the claims depending therefrom. See,
`
`e.g., Pet. at 10-16 (arguing that claim terms of claims 7, 8, 11, 22-24, and 26 are
`
`“indefinite.”).
`
`Patent Owner denies that the terms of these claims 7, 8, 11, 22-24, and 26
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`are indefinite for failure to disclose corresponding structure in the specification.
`
`Indeed, many such disputes were briefed to the District Court in litigation between
`
`Patent Owner and Petitioner. See, e.g., Ex. 2002 at 26-28 (briefing Patent Owner’s
`
`proposed construction for the “error protection means” of claim 22). Nevertheless,
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`even if the Board agrees that these terms are not indefinite, the Petition remains
`
`deficient under 37 C.F.R. §§ 42.104(b)(3)-(4) for failing to include a statement on
`
`“[h]ow the construed claim[s]” are allegedly unpatentable. See Gracenote, Inc. v.
`
`Iceberg Industries LLC, Case No. IPR2013-00551, slip op. at 38 (PTAB Feb. 28,
`
`2014) (paper 6).
`
`In view of Petitioner’s argument that these claims are indefinite, the correct
`
`outcome is for the Board to deny institution as to inter partes review for claims 7,
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`IPR2016-01203 – Preliminary Response
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`22, and all the claims that depend therefore. However, this is not the sole reason
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`for which inter partes review should be denied for these claims. As explained
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`below, the challenges presented by Petitioner are deficient as to all claims, and
`
`should be rejected without requiring the Board to reach any claim constructions on
`
`the terms appearing in claims 7, 8, 11, 22-24, and 26.3
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`III. Argument
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`
`
`In order to justify the institution of an inter partes review, the Petitioner
`
`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
`
`Petitioner’s challenges meet this required threshold for institution. The Board
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`should deny the Petition and decline to institute the inter partes review.
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`                                                            
`3 Patent Owner reserves all right to present further argument and evidence related
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`to claim construction if inter partes review is instituted, consistent with the
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`Board’s Rules and practice. No waiver is intended by any claim construction
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`argument withheld at this stage of the proceeding. 
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`IPR2016-01203 – Preliminary Response
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`a. The Petition Fails to Establish Obviousness of the Challenged
`Claims over Kato
`
`The Petition’s first challenge relies on Kato’s fourth embodiment to disclose
`
`or suggest all features of the challenged claims.4 But Kato’s fourth embodiment,
`
`shown in Fig. 6(a) and Fig. 7, fails to disclose or suggest all such features of the
`
`challenged claims, and Petitioner’s purported reason to modify Kato’s fourth
`
`embodiment to reach at least claims 1, 3, 7, 9, 12, 14, 22, 24, 28, and 29 is founded
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`upon impermissible hindsight. This argument cannot support institution of this
`
`inter partes review.
`
`As representative of Petitioner’s failure on this ground, claim 1 recites in
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`relevant part, “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.” Petitioner
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`acknowledges that Kato’s first portion Pi of the fourth embodiment includes
`
`“information indicating the length [L] of the code word Ci (i.e., L1+L2),” but does
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`                                                            
`4 Petitioner contends that Kato’s “third and fourth embodiments in particular [are]
`
`relevant to this challenge.” Pet. at 19. However, Petitioner provides no reason that
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`a POSITA would have modified or otherwise combined Kato’s fourth embodiment
`
`in view of Kato’s third embodiment. This is required in order to support a
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`combination of embodiments. See Section III.b below.
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`IPR2016-01203 – Preliminary Response
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`not include L2. Pet. at 45. Code word Ci is equivalent to the sum of the first
`
`portion Pi and the second portion Ri. And so the length L of code word Ci is not
`
`the same as the length L2 of the second portion Ri. Thus, Petitioner concedes that
`
`the first portion Pi fails to include “information … representative of a
`
`predetermined characteristic of the associated second portion” as required in the
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`independent claims 1, 7, 12, 22, and 28. Id. Similarly, the first portion Pi fails to
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`include “information representative of the predetermined number of characters
`
`which comprise the associated second portion” as required in the dependent claims
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`3, 9, 14, 24, 28, and 29. Id.
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`As a result of Kato’s deficiency in disclosure, Petitioner contends that it
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`“would have been obvious to a person of ordinary skill in the art to have the first
`
`portion Pi in Kato contain information directly representative of the length L2 of
`
`the second portion Ri (assuming such is required by the claim).” Id. (citing to
`
`Lippman ¶77). Petitioner argues that this would have been a “simple substitution
`
`… to obtain predictable results” or “obvious to try … with a reasonable
`
`expectation of success.” Id. at 45-46. The Lippman Declaration further contends
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`that this modification would have been the result of a “design choice.” Ex. 1002 at
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`¶77. None of these proposed modifications are supported with evidence, however.
`
`Further, each is merely the product of impermissible hindsight that fails to consider
`
`why Kato includes the value L in first portion Pi.
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`IPR2016-01203 – Preliminary Response
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`According to Kato’s fourth embodiment, the transmitter includes ROM 606,
`
`which “generates and outputs word length data L1 and L2 in response to the input
`
`data Di.” Kato at 25:14-16. These values are shown on the left-hand side of Fig.
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`6(a) (annotated below), and are used by control circuit 608 to determine whether
`
`there is sufficient open area in RAM 617 to store the next variable-length code
`
`data. Id. at 26:34-45.
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`
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`Further, L1 and L2 are used on the transmission side to update the write
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`starting addresses of the first portion and the second portion in registers 613 and
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`614. Id. at 25:35-44; 25:59-26:4; 26:10-30. Similar actions are taken at the
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`receiver of Fig. 6(b), albeit in reverse. For example, Kato discloses that L1 is
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`determined by counter 634 being incremented for each bit of first portion Pi. Id. at
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`29:30-40.
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`However, contrary to Petitioner’s argument, Kato does not disclose using L2
`
`(i.e. L2 = L – L1) in decoding Pi and Ri at the receiver. Rather, Kato reads out the
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`(Lmax – L1), or the (maximum word length of variable-length code words minus
`
`the word length of Pi) to read out second portion Ri from RAM 635. Id. at 29:41-
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`52. The reason for this is that “the first bit of the readout variable-length code
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`word is held placed in the highest bit of a signal inputted into the ROM 637.” Id.
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`at 29:57-61. This is clear from Kato’s Fig. 7, where the direction of writing the
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`second portions Ri is opposite from the direction of writing the first portions Pi.
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`
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`The first bit of the second portion Ri
`is placed in the highest bit position
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`
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`Thus, Kato uses Lmax and L1 to read out the data Vi from RAM 635, and
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`does not expressly disclose using L2 in this process. Petitioner’s proposed
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`modification to Kato, however, proposes a “simple substitution” of L2 for L even
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`though Kato expressly discloses reading out Lmax (rather than L1+L2) bits. Id. at
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`29:57-61. Petitioner and Dr. Lippman do not acknowledge that their proposed
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`modification to Kato is inconsistent with Kato’s methodology and design, and
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`therefore have failed to set forth an adequate explanation for why such a
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`substitution would have been simple or a matter of design choice. Rather, this
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`proposed modification to Kato fails to consider the particular design chosen by
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`Kato, much less how the proposed modification would affect Kato’s design.
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`Petitioner’s proposed modification is advanced as a results-driven argument based
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`on hindsight, and should be rejected.
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`Further, since the Petition’s first challenge based on Kato fails as to each
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`independent claim 1, 7, 12, 22, and 28, this challenge fails as to each dependent
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`claim as well.
`
`b. The Petition Fails to Remedy Kato’s Fourth Embodiment
`Deficiencies with Other Embodiments of Kato
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`Where a prior art reference discloses two embodiments, neither of which
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`discloses all elements of a claim as arranged in the claim, those embodiments
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`cannot be combined for anticipation purposes. See Net MoneyIN, Inc. v. Verisign,
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`Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). In that situation, the challenger must
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`present an obviousness analysis to support the combination of the embodiments.
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`Further, under the law governing obviousness, a petitioner must show a reason
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`why a POSITA would have thought to combine particular available elements of
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`knowledge, as evidenced by the prior art, to reach the claimed invention. KSR Int’l
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`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). This reasoned analysis must avoid
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`“hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”
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`Id. at 421.
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`Here, the Petitioner provides no reason why a POSITA would have applied
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`transform and quantizing steps to Kato’s fourth embodiment, relying instead upon
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`conclusory statements driven by hindsight bias. Specifically, the Petitioner argues
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`that a POSITA “would have found it obvious that the input data Di to be variable-
`
`length encoded in the fourth embodiment could have been advantageously
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`compressed to provide the input data Di, i.e., by using well-known transform and
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`quantizing steps.” Pet. at 49 (citing to Lippman ¶83). But both the Petition and the
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`Lippman Declaration fail to propose a reason why a POSITA would have thought
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`to combine available elements of knowledge. Rather, Lippman merely testifies
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`that it “would have been obvious to [a POSITA] to encode that transformed,
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`quantized data [from the third embodiment] using the split-field coding scheme
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`discussed with respect to the fourth preferred embodiment.” Ex. 1002 at ¶83.
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`Lippman goes on to testify that the “benefits of the split-field coding scheme …
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`would obviously have been applicable to data that has been transformed and
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`quantized according to the third preferred embodiment.” Id.5 These conclusory
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`5 Lippman and Petitioner do not even agree on how this modification of
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`embodiments would be implemented. Lippman proposes applying split-field
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`statements do not satisfy the requirement from KSR that an obviousness challenge
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`must include a reason why a POSITA would have thought to combine available
`
`elements of knowledge.
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`Thus,