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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.,
`Petitioner,
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________________
`
`Case IPR2018-00883
`Patent No. 8,934,535
`____________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`V.
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`B.
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`C.
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`Case IPR2018-00883
`PATENT OWNER’S PRELIMINARY RESPONSE
`TABLE OF CONTENTS
`Introduction ..................................................................................................... 1
`I.
`Background of the ’535 patent and challenged claims ................................... 2
`II.
`Petitioner’s proposed claim constructions ...................................................... 3
`III.
`IV. The Petition should be denied under § 325(d) ................................................ 4
`A.
`The Petition presents the same or substantially the same prior
`art previously before the Office ........................................................... 5
`The Board should deny institution. ...................................................... 7
`B.
`The Petition’s Ground 1 anticipation theory based on Dye fails to
`demonstrate that Dye meets limitations 15.1 and 15.2 ................................... 7
`A.
`The Petition’s Ground 1 theory relies on Dye’s lossless mode,
`or alternatively Dye’s lossy video/graphic compression mode,
`to allegedly meet claim limitations 15.1 and 15.2 ............................... 7
`The Petition’s lossless mode theory fails because it does not
`identify anything in Dye that is both a “parameter of . . . a data
`block” and is used to select an “asymmetric compressor,” as
`limitations 15.1 and 15.2 require .......................................................... 9
`The Petition’s lossy video/graphic compression mode theory
`fails because the Petition never shows that Dye’s lossy
`compressors are “asymmetric compressors” as limitation 15.2
`requires ............................................................................................... 11
`VI. The Petition’s Ground 2 obviousness theory based on Dye alone also
`fails to show that Dye meets limitation 15.2, and fails to ascertain the
`differences between Dye and claim 15 ......................................................... 12
`A.
`The Petition’s Ground 2 theory again does not show that Dye
`teaches using a data type to select a lossless, asymmetric
`compressor .......................................................................................... 12
`The Petition’s Ground 2 obviousness allegations cannot prevail
`because the Petition fails to “ascertain the differences” between
`Dye and claim 15, as the law of obviousness requires ....................... 13
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`B.
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`PATENT OWNER’S PRELIMINARY RESPONSE
`VII. The Petition’s Ground 3 theory based on Dye and Appelman lacks an
`adequate reason why a POSA would have added MPEG video
`compression to Dye, and fails to ascertain the differences between the
`prior art and claim 15 .................................................................................... 17
`A. When a petition’s motivation to combine rests on the alleged
`desire to solve a problem or need, the petition must show the
`problem or need exists in the context of the combination ................. 17
`The Petition’s obviousness allegations rely on the false premise
`that Dye does not teach an algorithm for compressing video ............ 20
`The Petition’s obviousness analysis fails to show why a POSA
`would have made the proposed modification .................................... 24
`The Petition’s Ground 3 obviousness allegations fail to
`“ascertain the differences” between the prior art and claim 15 ......... 31
`VIII. The Petition’s Ground 4 theory based on Dye and Riddle likewise
`fails for numerous reasons ............................................................................ 31
`A.
`The Petition’s obviousness allegations rely on the false premise
`that “throughput” is a “parameter” of a data block ............................ 31
`The Petition’s obviousness allegations rely on the false premise
`that Dye does not teach an algorithm for compressing video ............ 34
`The Petition’s obviousness analysis fails to show why a POSA
`would have made the proposed modification .................................... 35
`The Petition’s Ground 4 obviousness allegations fail to
`“ascertain the differences” between the prior art and claim 15 ......... 38
`IX. Conclusion .................................................................................................... 39
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`B.
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`C.
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`D.
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`B.
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`C.
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`D.
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`Exhibit No.
`2001
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` Case IPR2018-00883
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`PATENT OWNER’S PRELIMINARY RESPONSE
`EXHIBIT LIST
`
`
`Description
`Declaration of Kayvan B. Noroozi in Support of Motion for
`Admission Pro Hac Vice.
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`Case IPR2018-00883
`PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`Introduction
`Unified Patents challenges claim 15 and certain dependent claims of the
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`’535 patent on four grounds, all relying in whole or in part on Dye. But try as it
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`might, the Petition fails to show that Dye teaches “determining a parameter of . . . a
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`data block” that it then uses to select an “asymmetric compressor,” as claim 15
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`requires.
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`The Petition’s headline anticipation ground stumbles at the threshold by
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`relying on several alleged parameters that are not parameters of a data block, or
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`that are not used to select an asymmetric compressor.
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`The Petition then only compounds its failures in the next three grounds.
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`Ground 2 alleges obviousness based on Dye alone, but does nothing to address the
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`very reasons Dye does not anticipate. Instead, Ground 2 introduces an additional
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`dispositive failure: it alleges obviousness without even attempting to ascertain the
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`differences between the prior art and challenged claims.
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`That fatal error then pervades throughout Grounds 3 and 4. But those
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`grounds only deepen the Petition’s problems by relying on combinations of prior
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`art references without providing any credible or adequate motivation to combine.
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`Specifically, both grounds attempt to add a new video encoder to Dye on the
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`premise that Dye does not teach any video compression algorithms. But neither
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`ground even tries to demonstrate that allegation to be true, and Dye in fact directly
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`PATENT OWNER’S PRELIMINARY RESPONSE
`teaches the opposite. As this Preliminary Response demonstrates, Dye clearly
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`teaches a video compression algorithm, obviating the entire basis for the Petition’s
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`Ground 3 and 4 combinations. Moreover, the Petition provides no actual reason
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`why an ordinary artisan would have specifically selected the MPEG video
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`compression algorithm, or the H.261 algorithm, for inclusion in Dye, as the law of
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`obviousness requires. Once again, Dye teaches directly otherwise. Whereas Dye
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`teaches that its aim is to improve latency, both MPEG and H.261 are highly
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`latency-prone compression techniques that Dye’s inventors were aware of, and
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`chose not to include in Dye. The Petition gives no reason why an ordinary artisan
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`would have thought to do otherwise.
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`Accordingly, the Petition cannot prevail as to any claim on any ground, and
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`institution should be denied in full.
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`II. Background of the ’535 patent and challenged claims
`Petitioner challenges Claims 15-17, 19, 22, and 23 of U.S. Patent No.
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`8,934,535. The ’535 patent “relates generally to data compression and
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`decompression” and “the subsequent storage, retrieval, and management of
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`information in data storage devices utilizing either compression and/or accelerated
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`data storage and retrieval bandwidth.” ’535 at 1:21-29.
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`Challenged independent Claim 15 of the ’535 patent recites:
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`[Pre] A method, comprising:
`[15.1]
`determining a parameter of at least a portion of a data block;
`[15.2]
`selecting one or more asymmetric compressors from among
`a plurality of compressors based upon the determined
`parameter or attribute;
`compressing the at least the portion of the data block with
`the selected one or more asymmetric compressors to
`provide one or more compressed data blocks; and
`storing at least a portion of the one or more compressed data
`blocks.
`Challenged claims 16, 17, 19, 22, and 23 depend directly or indirectly from
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`[15.4]
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`[15.3]
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`independent claim 15.
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`III. Petitioner’s proposed claim constructions
`The Board does not construe claim terms unnecessary to resolving the
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`controversy. Shenzhen Liown Electronics Co. v. Disney Enterprises, Inc.,
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`IPR2015-01656, Paper 7 at 10 (Feb. 8, 2016) (citing Vivid Techs., Inc. v. Am. Sci.
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`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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`Petitioner asks the Board to construe a single term, “asymmetric
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`compressors.” Pet. 9. The specification expressly defines an asymmetric
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`compressor “as one in which the execution time for the compression and
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`decompression routines differ significantly.” Ex. 1001 at 9:60-10:4. Petitioner’s
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`construction follows the specification’s definition. Patent Owner agrees with the
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`construction and the Board should adopt it as the construction is relevant to
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`resolving the parties’ dispute.
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`IV. The Petition should be denied under § 325(d)
`Under 35 U.S.C. § 325(d), the Board may, in its discretion, deny institution
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`of any Petition that presents “the same or substantially the same prior art or
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`arguments previously [ ] presented to the Office.” Neil Ziegmann, N.P.Z., Inc. v.
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`Carlis G. Stephens, IPR2015-01860, Paper 13 at 5-7 (September 6, 2017) (denying
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`rehearing of non-institution via expanded panel, including Chief Administrative
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`Patent Judge Ruschke and Deputy Chief Administrative Patent Judge Boalick).
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`“Section 325(d) informs that even where a petition may meet the elevated
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`standard of a reasonable likelihood that a challenger would prevail, the Office has
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`the discretion to deny the petition.” Id. at 7.
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`In determining whether to deny a Petition under § 325(d), the Board
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`conducts a two-step inquiry:
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`(1) whether the Petition presents “the same or substantially the same prior
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`art or arguments” as those previously presented to the Office, and if so;
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`(2) whether it is appropriate for the Board to exercise its discretion to deny
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`institution. Id. at 14-15.
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`As this section demonstrates, both requirements are met here, and institution
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`should be denied based on § 325(d) alone.
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`A. The Petition presents the same or substantially the same prior art
`previously before the Office
`The Board has held that if a petition relies on a primary reference that is the
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`same art previously presented to the Office, that fact alone is “a sufficient basis”
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`for the Board to deny institution under § 325(d)—even if the Petition includes
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`other references that are not the same or substantially the same as those previously
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`before the Office. See Neil Ziegmann, N.P.Z., Inc. v. Carlis G. Stephens, IPR2015-
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`01860, Paper 13 at 21 n. 9 (September 6, 2017) (“Indeed, even if were [sic] to
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`accept Petitioner’s assertions concerning the secondary references, the presence of
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`Ziegmann alone, both in the Petition and the prosecution history, is a sufficient
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`basis to exercise our discretion under Section 325(d).”).
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`Moreover, where a reference is cited to the Examiner during prosecution in
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`an IDS, and is acknowledged by the Examiner, that reference constitutes “the same
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`or substantially the same prior art previously presented to the Office” under §
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`325(d). Id. at 15 (expanded panel consisting of Chief and Deputy Chief
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`Administrative Patent Judges affirming that Petitioner’s primary reference,
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`Ziegmann, was correctly found to be the same or substantially the same prior art
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`previously presented to the Office “because Ziegmann was cited to the Examiner
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`in an IDS, [and] the Examiner acknowledged the IDS. . . .”) (emphasis added).
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`The Petition here relies on a primary reference—Dye—that was listed on an
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`IDS on pages marked “ALL REFERENCES CONSIDERED EXCEPT WHERE
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`LINED THROUGH.” See Ex. 1002 at 274. Dye was not marked through. Id. Dye
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`was thus considered by the Examiner.
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`Accordingly, Dye is the same prior art previously presented to the Office,
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`and because Dye is the primary reference in the Petition, institution may be denied
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`on that basis alone. Neil Ziegmann, N.P.Z., Inc. v. Carlis G. Stephens, IPR2015-
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`01860, Paper 13 at 21 n. 9.
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`In addition, Riddle, the Petition’s only secondary reference in Ground 4, is
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`also the “same prior art the same prior art previously before presented to the
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`Office” because it was also listed on an IDS on pages marked “ALL
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`REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.” See Ex.
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`1002 at 268. Riddle was not marked through. Id. Riddle was thus also considered
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`by the Examiner.
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`Accordingly, the Board has discretion to deny institution under § 325(d).
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`The Petition acknowledges that Dye and Riddle were both cited during
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`prosecution, but it urges that “the Examiner did not discuss or rely on either
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`reference.” Pet. 8. But that argument is both irrelevant and materially incorrect. It
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`is irrelevant because the Examiner need not discuss or expressly rely on either
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`reference to have given it full consideration; he need only review the reference to
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`determine the extent to which it is similar or distinct from the claimed inventions,
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`including in light of other prior art. Moreover, the Examiner here could have
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`simply crossed off any references not considered, but he did not do so with respect
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`to Dye or Riddle. Accordingly, the Examiner clearly expressed that Dye and
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`Riddle were considered.
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`The Board should deny institution.
`B.
`As shown above, the Petition is merely cumulative of the art considered by
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`the Board and the Examiner. Institution here would thus merely waste the Board’s
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`resources to go over the same art the Office has considered. The Board should
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`therefore exercise its discretion to deny institution here.
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`V. The Petition’s Ground 1 anticipation theory based on Dye fails to
`demonstrate that Dye meets limitations 15.1 and 15.2
`A. The Petition’s Ground 1 theory relies on Dye’s lossless mode, or
`alternatively Dye’s lossy video/graphic compression mode, to
`allegedly meet claim limitations 15.1 and 15.2
`Limitation 15.1 requires “determining a parameter of at least a portion of a
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`data block.” Limitation 15.2 further requires “selecting one or more asymmetric
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`compressors from among a plurality of compressors based upon the determined
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`parameter or attribute.”
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`The Petition presents two separate theories, with sub-allegations, as to how
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`Dye purportedly teaches both limitations 15.1 and 15.2.
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`The Petition’s first theory alleges that the “address range where the data is to
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`be stored; a requesting agent which provides the data; and/or a data type of the
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`data” each meet limitation 15.1. Pet. 12. The Petition then alleges that each of
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`those three purported parameters—address range, requesting agent, and data
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`type—can be used in Dye to select a “lossless mode” in which the Lempel-Ziv
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`(“LZ”) compression algorithm is used. Id. at 14. The Petition further alleges that
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`the ’535 patent identifies LZ compression as a type of “asymmetric compression.”
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`Id. The Petition’s first theory is therefore that any of three items—address range,
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`requesting agent, and data type—meets limitation 15.1, and that any of those three
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`items can be used in Dye to select an asymmetric compressor (LZ), thus
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`purportedly meeting limitation 15.2. For purposes of this Preliminary Response,
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`this first theory will be referred to as the “lossless mode theory.”
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`The Petition’s second theory relies on Dye’s handling of video/graphical
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`objects. Pet. 12. The Petition alleges that Dye determines which compression
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`algorithm to apply to video/graphical objects “based on whether the object is in the
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`foreground or background, or based on an attribute of the graphical object.” Id.
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`The Petition thus alleges that “whether the object is in the foreground/background,
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`or the attribute of an object” is a “parameter” that meets the requirement of
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`limitation 15.1. Id. The Petition further asserts that Dye teaches selecting from
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`among different lossy compression techniques for video/graphical objects based on
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`whether the object is in the foreground or background. Pet. 14 (“For example, Dye
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`explains that the IMC may use a lossy compression algorithm with a higher
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`compression ratio for data objects in the background of the display and a lossy
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`compression algorithm with a lower compression ratio for objects in the
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`foreground of the display.”) (citations omitted). The Petition does not attempt to
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`show that Dye teaches using any lossless compression for video/graphical objects.
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`Indeed, Dye itself expressly teaches: “If the data comprises video/graphics data,
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`then the compression mode may be lossy.” Ex. 1003 at 39:14-15 (emphasis added).
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`Dye further teaches that “the compression modes may comprise varying levels of
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`lossy compression for video/graphical objects. . . .” Id. at 39:22-24 (emphasis
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`added). The Petition’s second theory will therefore be referred to herein as the
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`“lossy mode theory.”
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`B.
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`The Petition’s lossless mode theory fails because it does not
`identify anything in Dye that is both a “parameter of . . . a data
`block” and is used to select an “asymmetric compressor,” as
`limitations 15.1 and 15.2 require
`As noted, the Petition’s “lossless mode” theory relies on three alleged items
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`to meet limitation 15.1: “address range where the data is to be stored; a requesting
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`agent which provides the data; and/or a data type of the data.” Pet. 12.
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`But limitation 15.1 does not simply require determining any “parameter.”
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`Rather, it specifically requires “determining a parameter of at least a portion of a
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`data block.” Thus a parameter that is not “of a data block” cannot satisfy limitation
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`15.1. Rather, even under the broadest reasonable interpretation, a parameter of a
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`data block must at least provide information regarding the contents of the data
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`block itself. In the context of Dye, neither the “address range where the data is to
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`be stored” nor the “requesting agent which provides the data” constitutes a
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`parameter of a data block. The former simply indicates where the data block
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`should be stored; the latter indicates where the data block came from. But neither
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`item says anything about the data block itself, and thus cannot be a “parameter of .
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`. . a data block” as limitation 15.1 requires. Indeed, the Petition does not even
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`attempt to construe “parameter of . . . a data block” as used in the ’535 patent and
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`the claims, and gives no explanation of how either the “address range” or the
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`“requesting agent” is a parameter of a data block for purposes of limitation 15.1.
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`Accordingly, neither the “address range” or the “requesting agent” has been
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`shown to meet limitation 15.1. Thus the only item identified in the Petition’s
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`“lossless mode” theory that can even arguably be considered a “parameter of . . . a
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`data block” for purposes of limitation 15.1 is the data type of the data block.
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`The data type of the data block in Dye, however, has not been shown to meet
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`limitation 15.2. Limitation 15.2 requires “selecting one or more asymmetric
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`compressors from among a plurality of compressors based upon the determined
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`parameter or attribute.” The Petition alleges that the LZ algorithm in Dye is an
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`asymmetric compressor. Pet. 14. But the Petition never shows that Dye teaches
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`selecting LZ compression “based upon” a block’s data type, as limitation 15.2
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`requires. Instead, the Petition simply quotes and cites Dye for the teaching that data
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`type can be used to determine a “compression mode,” Pet. 15-16, but the Petition
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`never shows that Dye teaches specifically selecting a lossless dictionary-based
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`algorithm (the alleged “asymmetric compressor”) based on a data block’s data
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`type.
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`Accordingly, the Petition’s “lossless mode” theory fails to show that Dye
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`anticipates claim 15 because it does not show that any of the alleged three
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`“parameters” in Dye in fact satisfies both limitations 15.1 and 15.2.
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`C. The Petition’s lossy video/graphic compression mode theory fails
`because the Petition never shows that Dye’s lossy compressors are
`“asymmetric compressors” as limitation 15.2 requires
`As noted, the Petition’s second theory relies on Dye’s handling of
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`video/graphic objects. More specifically, the Petition alleges that Dye’s
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`identification of whether an object is in the foreground or background of the video
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`or graphic is a parameter of the data block that is used to select an encoder for the
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`data. See Section V.A., supra. The Petition also alleges—and Dye itself
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`demonstrates—that Dye compresses video/graphic objects using only lossy
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`compression.
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`To meet limitation 15.2 based on Dye’s handling of video/graphic objects,
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`the Petition would thus need to show that at least one of Dye’s lossy compressors
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`is an asymmetric compressor.
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`The Petition expressly concedes that an “asymmetric compressor” is one “in
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`which the execution time for the compression and decompression routines differ
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`significantly.” Pet. 9 (emphasis added). But the Petition never attempts to show
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`that any of Dye’s lossy compressors is an “asymmetric compressor” under the
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`Petition’s own definition, much less why. Accordingly, the Petition’s “lossy mode”
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`theory also fails to meet limitation 15.2 because the Petition does not show that
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`Dye teaches using video/graphic information regarding objects in the foreground
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`or background to select an asymmetric compressor, as limitation 15.2 requires.
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`VI. The Petition’s Ground 2 obviousness theory based on Dye alone also
`fails to show that Dye meets limitation 15.2, and fails to ascertain the
`differences between Dye and claim 15
`A. The Petition’s Ground 2 theory again does not show that Dye
`teaches using a data type to select a lossless, asymmetric
`compressor
`The Petition’s Ground 2 theory alleges that it would have been obvious to
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`meet limitation 15.2, based on Dye alone, by using an asymmetric compressor. Pet.
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`24-25. But that allegation again misses the mark: limitation 15.2 specifically
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`requires selecting an asymmetric compressor “based upon the determined
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`parameter or attribute.” The Petition’s Ground 2 discussion does not attempt to
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`show that it would have been obvious in view of Dye to select an asymmetric
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`compressor based on a data type, much less how or why. Nor does the Petition
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`even allege that it would have been obvious to select an asymmetric compressor to
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`compress a data block based on any other teaching in Dye that actually constitutes
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`a “parameter of . . . a data block.” See Section V.B, supra. Accordingly, the
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`Petition’s Ground 2 obviousness allegations with respect to limitation 15.2 do
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`nothing to cure the fatal flaws identified with respect to Ground 1 above. See
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`Section V, supra.
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`B.
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`The Petition’s Ground 2 obviousness allegations cannot prevail
`because the Petition fails to “ascertain the differences” between
`Dye and claim 15, as the law of obviousness requires
`Section 103 expressly states that the question of obviousness turns on
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`whether “the differences between the claimed invention and the prior art are such
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`that the claimed invention as a whole would have been obvious before the effective
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`filing date of the claimed invention to a person having ordinary skill in the art to
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`which the claimed invention pertains.” 35 U.S.C. § 103 (emphasis added).
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`Consistent with the statutory language, the Supreme Court has long held that
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`a proper allegation of obviousness requires that “differences between the prior art
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`and the claims at issue . . . be ascertained.” See Graham v. John Deere Co., 383
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`U.S. 1, 17–18 (1966); KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007)
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`(“While the sequence of [Graham’s four factors] might be reordered in any
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`particular case, the factors continue to define the inquiry that controls.”).
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`The Federal Circuit has likewise held, en banc, that “[a] determination of
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`whether a patent claim is invalid as obvious under § 103 requires consideration of
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`all four Graham factors, and it is error to reach a conclusion of obviousness until
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`all those factors are considered.” Apple v. Samsung Elecs. Co., 839 F.3d 1034,
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`1048 (Fed. Cir. 2016) (en banc) (emphasis added; internal citations omitted); see
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`also Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1295
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`(Fed. Cir. 2012); Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
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`Cir. 2011).
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`Consistent with the language of § 103 and controlling precedent, the Board
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`has repeatedly recognized that a prima facie showing of obviousness requires that
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`the Petition “accurately identify and analyze the differences between the claimed
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`invention and the prior art[.]” CaptionCall LLC v. Ultratec, Inc., IPR2015-01359,
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`Paper 75 at 18 (PTAB Dec. 14, 2016). Indeed, the Board has stated that an accurate
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`identification and analysis of the differences between the claimed invention and the
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`prior art is “a critical inquiry in a proper obviousness analysis under Graham and
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`KSR.” Id. (emphasis added) (referring to Graham v. John Deere Co., 383 U.S. 1,
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`17–18 (1966), and KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007)).
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`In short, it is simply not possible, as a matter of law, to properly allege
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`obviousness without first identifying the differences between the invention and the
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`art.
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`Thus where a petition alleges obviousness without identifying and analyzing
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`“any differences between the prior art and the claims at issue,” the Board has
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`routinely rejected the petition. See Shopkick Inc. v. Novitaz, Inc., IPR2015-00279,
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`Paper 7 at 27-28 (May 29, 2015) (denying institution because, among other
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`failures, the Petition did not identify the differences between the challenged claims
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`and prior art). The Board’s decision in Apple v. OpenTV, IPR2015-01031, Paper 10
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`at 13-14 (Oct. 13, 2015), is particularly illustrative. There, the Board refused to
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`accept the adequacy of Apple’s hedged, conditional statement that “various
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`limitations . . . if found missing from Tomioka [the base reference], may be taught
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`or suggested by Tomioka itself, Schiller, or Kotani . . . .” (emphasis added). The
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`Board emphasized that such equivocation cannot suffice, and rejected the Petition
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`for alleging obviousness without identifying “any differences between the claimed
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`subject matter and the prior art.” Id.
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`As in Apple v. OpenTV and similar precedents, Ground 2 of the Petition
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`must be rejected because the Petition fails to identify any differences between Dye
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`and claim 15. Instead, the Petition simply states that “[t]o the extent it is asserted
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`that Dye does not disclose” limitations 15.1 and 15.2, those limitations would have
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`been obvious. Pet. 23, 24. The language of § 103, the Supreme Court’s decisions in
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`Graham and KSR, the Federal Circuit’s repeated holdings, and the Board’s own
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`decisions all make clear that mere weasel words cannot satisfy Petitioner’s
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`obligation of ascertaining the differences between the art and the claims.1
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`Accordingly, the Petition’s Ground 2 theory fails for the additional reason that it
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`alleges obviousness without ascertaining the differences between the art and claim
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`15.
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`1 Of course, it is not Patent Owner’s position that Dye teaches the entirety of
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`claim 15. See Section V, supra. Rather, the point is that Petitioner bears the burden
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`of alleging a prima facie showing of obviousness, and has failed to do so here. See
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`In re Magnum Oil Tools, 829 F.3d 1364, 1375-76 (Fed. Cir. 2016) (holding that the
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`burden of proving obviousness under the Graham factors, which includes
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`discerning the differences between the art and the claims, remains at all times with
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`petitioner, and cannot be placed on patent owner).
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`PATENT OWNER’S PRELIMINARY RESPONSE
`VII. The Petition’s Ground 3 theory based on Dye and Appelman lacks
`an adequate reason why a POSA would have added MPEG video
`compression to Dye, and fails to ascertain the differences between the
`prior art and claim 15
`A. When a petition’s motivation to combine rests on the alleged
`desire to solve a problem or need, the petition must show the
`problem or need exists in the context of the combination
`An allegation of obviousness based on a prior art combination cannot be
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`sustained where the petition fails to demonstrate why a POSA would have
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`combined the art in the specific manner necessary to arrive at the limitations of the
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`challenged claims. In re Nuvasive, 842 F.3d 1376, 1384 (Fed. Cir. 2016) (where a
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`petition merely states that a POSA would have been motivated to combine the
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`prior art references but fails to articulate a “reason why,” the petition’s “arguments
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`amount to nothing more than conclusory statements” that cannot support a finding
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`of obviousness) (emphasis original); Commvault Systems, Inc. v. Realtime Data
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`LLC, IPR2017-02007, Paper 11 at 16 (March 15, 2018) (“The failure of Petitioner
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`to address, let alone argue, why a person of ordinary skill would combine [the
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`references] is enough to deny the Petition.”).
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`When an alleged combination rests on the purported motivation to solve a
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`specific problem, the petition must show that that problem in fact exists in the
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`specific context of that combination. Thus in Duke v. BioMarin, 685 F. App’x 967,
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`978–79 (Fed. Cir. 2017), the Federal Circuit reversed the PTAB’s finding of
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`obviousness because petitioner had failed to show, and the Board had failed to
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`find, that the condition precedent underlying the alleged motivation to combine
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`could in fact be expected to occur. There, the motivation to combine rested on the
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`allegation that a “high incidence” of “patients treated with recombinant GAA
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`protein” (GAA enzyme replacement therapy) could develop a negative reaction,
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`specifically, “high antibody titers,” which the ordinary artisan would have been
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`motivated to address by using immunosuppressants. Id. at 978. The evidence of
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`record showed that it was a known problem in the art that patients could generally
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`develop high antibody titers in response to some types of enzyme replacement
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`therapy, and that prophylactic administration of immunosuppresants was a known
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`solution to that general problem. Id. But the evidence failed to show that the
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`problem of high antibody titers would occur, or would even be expected to occur,
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`specifically in response to GAA enzyme replacement therapy. Id.
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`The Federal Circuit held that, to establish a motivation to combine, it is not
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`enough to merely state “what ‘could be’ done ‘if’” a certain problem were to occur.
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`Id. Rather, there must be evidence that the problem allegedly driving the
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`combination could actually be expected to occur. Id. The Federal Circuit thus
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`reversed the Board’s conclusion of obviousness because “the evidence of record
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`[did] not establish t