Trials@uspto.gov
`571-272-7822
`
`Paper 45
`Date: January 10, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC., ARRIS SOLUTIONS, INC., and
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`
`IPR2018-01169
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`571-272-7822
`
`Paper 45
`Date: January 10, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC., ARRIS SOLUTIONS, INC., and
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`
`IPR2018-01169
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2018-01169
`Patent 8,934,535 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Netflix, Inc.1 (“Petitioner”) filed a Petition (Paper 8, “Pet.”) to
`institute an inter partes review of claims 1–14 (the “challenged claims”) of
`U.S. Patent No. 8,934,535 B2 (Exhibit 1001, “the ’535 Patent”). Realtime
`Adaptive Streaming, LLC (“Patent Owner”) timely filed a Preliminary
`Response. Paper 19 (“Prelim. Resp.”). On January 17, 2019, upon
`consideration of the Petition, the Preliminary Response, and the evidence
`cited by the parties, we determined that Petitioner established a reasonable
`likelihood that it would prevail with respect to at least one of the claims
`challenged in the Petition and instituted review to determine the patentability
`of the challenged claims on all grounds. Paper 20 (“Dec. Inst.”), 1.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 26 (“PO Resp.”). Petitioner filed a Reply (Paper 31,
`“Reply”) thereto, and Patent Owner filed a Sur-Reply (Paper 33, “Sur-
`Reply”). Petitioner supports its challenge with the Declaration of James
`Storer, Ph.D. Ex. 1003. Patent Owner supports its Response with the
`Declaration of Kenneth A. Zeger, Ph.D. Ex. 2001. An oral hearing was
`held before the Board, the transcript of which was entered into the record
`(Paper 44).
`
`B. Related Proceedings
`The parties inform us that the ʼ535 Patent is involved in the following
`litigations:
`
`
`1 ARRIS SOLUTIONS, INC., who filed a petition in IPR2019-00674, and
`Comcast Cable Communications, LLC, who filed a petition in IPR2019-
`00684, have been joined as petitioners in this proceeding.
`
`2
`
`
`
`IPR2018-01169
`Patent 8,934,535 B2
`• Realtime Data LLC d/b/a IXO v. Echostar Corp., No. 6:17-cv-00084
`(E.D. Tex.)
`• Realtime Data LLC d/b/a IXO v. DISH Network Corp. et al., 6:17-cv-
`00421 (E.D. Tex.)
`• Realtime Adaptive Streaming, LLC v. Sling TV, LLC, No. 1:17-cv-
`02097 (D. Colo.)
`• Realtime Adaptive Streaming, LLC v. Amazon.com, Inc., No. 6:17-cv-
`00549 (E.D. Tex.)
`• Realtime Adaptive Streaming LLC v. EchoStar Technologies, LLC et
`al., No. 6:17-cv-00567 (E.D. Tex.).
`• Realtime Adaptive Streaming, LLC v. Hulu, LLC, No. 2:17-cv-07611
`(C.D. Cal.)
`• Realtime Adaptive Streaming, LLC v. Cisco Systems, Inc., No. 6:17-
`cv-00591 (E.D. Tex.)
`• Realtime Adaptive Streaming, LLC v. Brightcove, Inc., No. 1:17-cv-
`01519 (D. Del.)
`• Realtime Adaptive Streaming, LLC v. Haivision Network Video, Inc.,
`No. 1:17-cv-01520 (D. Del.)
`• Realtime Adaptive Streaming, LLC v. Polycom, Inc., No. 1:17-cv-
`02692 (D. Colo.)
`• Realtime Adaptive Streaming, LLC v. Netflix, Inc., No. 1:17-cv-01692
`(D. Del.)
`• Realtime Adaptive Streaming, LLC v. Sony Electronics Inc., No. 1:17-
`cv-01693 (D. Del.)
`• Realtime Adaptive Streaming, LLC v. Apple, Inc., No. 1:17-cv-02869
`(D. Colo.)
`• Realtime Adaptive Streaming, LLC v. Adobe Systems Inc., No. 1:18-
`cv-10355 (D. Mass.)
`• Realtime Adaptive Streaming, LLC v. Samsung Electronics Co., No.
`6:18-cv-00113 (E.D. Tex.)
`• Realtime Adaptive Streaming LLC v. Wowza Media Systems LLC, No.
`1:18-cv-00927 (D. Colo.)
`
`3
`
`
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`IPR2018-01169
`Patent 8,934,535 B2
`• Realtime Adaptive Streaming LLC v. Google LLC et al, No. 2:18-cv-
`03629 (C.D. Cal.)
`• Realtime Adaptive Streaming LLC v. Avaya Inc., No. 1:18-cv-01046
`(D. Colo.)
`• Realtime Adaptive Streaming LLC v. Broadcom Corp. et al., No. 1:18-
`cv-01048 (D. Colo.)
`• Realtime Adaptive Streaming LLC v. LG Electronics Inc. et al, No.
`6:18-cv-00215 (E.D. Tex.)
`• Realtime Adaptive Streaming LLC v. Advanced Micro Devices, Inc.,
`No. 1:18-cv-01173 (D. Colo.)
`• Realtime Adaptive Streaming LLC v. Intel Corp., No. 1:18-cv-01175
`(D. Colo.)
`• Realtime Adaptive Streaming LLC v. Mitel Networks, Inc., No. 1:18-
`cv-01177 (D. Colo.)
`• Realtime Adaptive Streaming LLC v. Charter Communications, Inc. et
`al, No. 1:18-cv-01345 (D. Colo.)
`• Realtime Adaptive Streaming LLC v. Cox Communications, Inc., No.
`8:18-cv-00942 (C.D. Cal.)
`• Realtime Adaptive Streaming LLC v. Comcast Cable
`Communications, LLC, No. 1:18-cv-01446 (D. Colo.).
`Pet. 63–65; Paper 9, 2–4.
`Petitioner further informs us that the ʼ535 Patent is involved in the
`following inter partes review proceedings which are no longer pending
`before the Board:
`
`• Unified Patents Inc. v. Realtime Adaptive Streaming LLC, IPR2018-
`00883
`• Hulu, LLC, Amazon.com, Inc., & Netflix, Inc. v. Realtime Adaptive
`Streaming LLC, IPR2018-01170.
`
`
`
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`IPR2018-01169
`Patent 8,934,535 B2
`
`C. The ʼ535 Patent
`The ʼ535 Patent relates generally to “compressing and decompressing
`data based on an actual or expected throughput (bandwidth) of a system.”
`Ex. 1001, 1:21–25. The ʼ535 Patent explains that data compression
`algorithms can have varied performance characteristics. Ex. 1001, 1:32–35.
`“For example, with a typical dictionary[-]based compression algorithm[,]
`such as Lempel-Ziv, the size of the dictionary can affect the performance of
`the algorithm.” Ex. 1001, 1:35–38. A large dictionary may yield very good
`compression ratios but may make the algorithm take a long time to execute.
`On the other hand, a smaller dictionary would yield a faster compression
`time but at the expense of a lower compression ratio. Ex. 1001, 1:38–44.
`Thus, one challenge in employing data compression is selecting the
`appropriate algorithm from a variety of algorithms for a given application or
`system. Ex. 1001, 1:47–50. The desired balance between speed and
`efficiency is an important factor in determining which algorithm to select for
`data compression. Ex. 1001, 1:50–53. A system that provides dynamic
`modification of compression system parameters to provide an optimal
`balance between speed and compression ratio is highly desirable. Ex. 1001,
`1:56–60.
`The ʼ535 Patent describes two categories of compression algorithms:
`asymmetrical and symmetrical. An asymmetrical data compression
`algorithm is “one in which the execution time for the compression and
`decompression routines differ significantly.” Ex. 1001, 9:64–66. Thus, in
`an asymmetrical algorithm, either the compression time is fast and the
`decompression time is slow, or vice versa. An example of an asymmetric
`algorithm is Lempel-Ziv. Ex. 1001, 10:2–4. A symmetric compression
`algorithm, on the other hand, is “one in which the execution time for the
`
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`IPR2018-01169
`Patent 8,934,535 B2
`compression and the decompression routines are substantially similar.
`Examples of symmetrical algorithms include table-based compression
`schemes such as Huffman.” Ex. 1001, 10:5–9. The total execution time of
`the compression and decompression portions of asymmetrical algorithms is
`typically higher than the total time for symmetrical algorithms. Ex. 1001,
`10:10–13. “But an asymmetric algorithm typically achieves higher
`compression ratios.” Ex. 1001, 10:13–14.
`The invention described in the ʼ535 Patent is “directed to a system and
`method for compressing and decompressing based on the actual or expected
`throughput (bandwidth) of a system employing data compression and a
`technique of optimizing based upon planned, expected, predicted, or actual
`usage.” Ex. 1001, 7:51–55. A bandwidth sensitive data compression routine
`may be selected based on access profiles that enable the controller to
`determine a compression routine associated with a data type of the data to be
`compressed. Ex. 1001, 8:4–8. “The access profiles comprise information
`that enables the controller to select a suitable compression algorithm that
`provides the desired balance between” speed and compression ratio.
`Ex. 1001, 8:8–13.
`These access profiles may take into account the overall throughput of
`a system as one factor in deciding whether to use an asymmetric or a
`symmetric algorithm. Ex. 1001, 11:25–29. Another factor the access profile
`may track is the type of data to be processed. Ex. 1001, 11:29–31. For
`example, different data types (the type may be determined by a file
`extension of the data) may be associated with different compression
`algorithms. Ex. 1001, 11:35–40.
`The ʼ535 Patent illustrates this concept with three categories of access
`profiles. In a first category, the access profile of a particular data type may
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`IPR2018-01169
`Patent 8,934,535 B2
`specify that the data may be decompressed significantly more times than it is
`compressed. This is typical with operating systems, applications, and
`websites. Ex. 1001, 12:1–12. In such a situation, it may be suitable to
`utilize an asymmetric algorithm that provides a slow compression routine
`and a fast decompression routine. Ex. 1001, 12:14–20. Thus, the
`compression ratio achieved by using an asymmetric algorithm with slow
`compression will be higher than if a symmetric algorithm was used. Ex.
`1001, 12:20–24.
`A second category is one in which the data would be compressed
`significantly more times than decompressed. Ex. 1001, 12:25–27. This is
`typical for automatically updating an inventory database. Ex. 1001, 12:27–
`28. Here, an asymmetric algorithm with a fast compression routine and a
`slow decompression routine would be most appropriate. Ex. 1001, 12:28–
`35.
`
`A third category is one in which the data is accessed with a similar
`number of reads and writes, and thus would be compressed and
`decompressed approximately the same number of times. Ex. 1001, 12:36–
`39. “This is typical of most user-generated data such as documents and
`spreadsheets.” Ex. 1001, 12:40–41. In this case, a symmetric algorithm that
`provides relatively fast compression and decompression would be
`preferable. Ex. 1001, 12:41–43.
`In this way, the ʼ535 Patent describes a system that automatically
`selects an appropriate compression algorithm to optimize system throughput
`based on the type of data being installed or stored. Ex. 1001, 14:27–39.
`
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 14 are independent. Claims 2–
`13 depend directly or indirectly from claim 1.
`
`7
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`IPR2018-01169
`Patent 8,934,535 B2
`Claim 1, reproduced below, is illustrative:
`1.
`A method, comprising:
`determining a parameter or attribute of at least a portion of
`a data block having audio or video data;
`selecting an access profile from among a plurality of
`access profiles based upon the determined parameter or attribute;
`and
`
`compressing the at least the portion of the data block with
`one or more compressors using asymmetric data compression
`and information from the selected access profile to create one or
`more compressed data blocks, the information being indicative
`of the one or more compressors to apply to the at least the portion
`of the data block.
`Ex. 1001, 29–41.
`
`E. Asserted Ground of Unpatentability
`Petitioner challenges claims 1–14 of the ʼ535 Patent on the following
`ground:
`
`Claim(s) Challenged
`1–14
`
`
`103
`
`35 U.S.C. §
`
`References/Basis
`Imai,2 Ishii3
`
`F. Level of Ordinary Skill
`Petitioner proposes that a person of ordinary skill
`would have a bachelor’s degree in electrical engineering,
`computer science, or a similar field with at least two years of
`
`2 Imai, Japanese Patent Application Publication No. H11331305, published
`Nov. 30, 1999. Ex. 1004. A certified English translation of Exhibit 1004
`was submitted as Exhibit 1005. Citations to “Imai” herein refer to the
`translation.
`3 Ishii, U.S. Patent No. 5,675,789, issued Oct. 7, 1997 (Exhibit 1007,
`“Ishii”).
`
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`Patent 8,934,535 B2
`experience in data compression or . . . a master’s degree in
`electrical engineering, computer science, or a similar field with a
`specialization in data compression. Ex. 1003 at 65. A person
`with less education but more relevant practical experience may
`also meet this standard. Ex. 1003 at 65.
`
`Pet. 7. Patent Owner does not propose a level of ordinary skill and indicates
`that it “adopts Petitioner’s definition of the level of ordinary skill.” PO
`Resp. 6. We agree with and adopt Petitioner’s proposed level of ordinary
`skill.
`
`G. Claim Interpretation
`In an inter partes review filed before November 13, 2018, we
`construe claim terms in an unexpired patent according to their broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b) (2017)4; Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). “Under a broadest reasonable
`interpretation, words of the claim must be given their plain meaning, unless
`such meaning is inconsistent with the specification and prosecution history.”
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). Only
`terms that are in controversy need to be construed, “and only to the extent
`necessary to resolve the controversy.” See Wellman, Inc. v. Eastman Chem.
`
`
`4 The revised claim construction standard for interpreting claims in inter
`partes review proceedings, as set forth in the final rule published October
`11, 2018, does not apply to this proceeding, because the new “rule is
`effective on November 13, 2018 and applies to all IPR, PGR, and CBM
`petitions filed on or after the effective date.” Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(now codified at 37 C.F.R. pt. 42 (2019)).
`
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`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`1. asymmetric compressors / compressors using asymmetric data
`compression
`Petitioner argues that a person of ordinary skill in the art (“POSITA”):
`would have understood that the terms “asymmetric
`compressor(s)” (Claims 12, 15, 16, and 24–26) and “compressors
`using asymmetric data compression” (Claims 1, 10, and 27) in
`view of the specification, mean “a compression algorithm in
`which
`the execution
`time
`for
`the compression and
`decompression routines differ significantly.”
`Pet. 7. Patent Owner does not propose a construction for these terms.
`We determine that an explicit construction of the terms is not
`necessary for determining whether Petitioner has demonstrated that the
`challenged claims are unpatentable.
`
`2. data block
`Petitioner proposes that “data block” be construed as “a unit of data
`comprising more than one bit.” Pet. 8. Patent Owner does not propose a
`construction for this term.
`We determine that an explicit construction of the term is not necessary
`for determining whether Petitioner has demonstrated that the challenged
`claims are unpatentable.
`
`3. access profile
`Petitioner argues “access profile,” as recited in independent claims 1
`and 14, should be construed as “information regarding the number or
`frequency of reads or writes.” Pet. 10. Patent Owner, on the other hand,
`proposes to construe “access profile” to mean “information that enables the
`controller to select a suitable compression algorithm that provides a desired
`
`10
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`IPR2018-01169
`Patent 8,934,535 B2
`balance between execution speed (rate of compression) and efficiency
`(compression ratio).” PO Resp. 7.
`Petitioner argues that an access profile “contains information
`regarding accesses—or a number or frequency of reads or writes.” Pet. 11.
`In other words, Petitioner argues that the term “access” refers to either reads
`or writes. Pet. 11 (citing Ex. 1001, 1, 14). Petitioner relies on tables from
`columns 11 and 12 of the ʼ535 Patent, one of which is reproduced below,
`“depict[ing] . . . ‘access profile’ as a description of the number or frequency
`of reads or writes of data” that is used in conjunction with data type to select
`a compression algorithm. Pet. 11–12.
`
`
`The above table from column 12 of the ʼ535 Patent, which Petitioner relies
`upon, summarizes “three data access profiles and the type of compression
`algorithm that would produce optimum throughput.” Ex. 1001, 12:47–49.
`Referring to the inclusion of the term “desired balance” in Patent
`Owner’s construction, Petitioner argues that “a POSITA would not know
`with reasonable certainty what a ‘desired balance’ between execution speed
`and efficiency is.” Reply 3. Petitioner also faults Patent Owner’s
`
`11
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`Patent 8,934,535 B2
`construction for reciting a “controller” when no controller is recited in any
`of the ʼ535 Patent’s claims. Reply 3.
`Patent Owner argues that its “construction comes directly from the
`ʼ535 patent” (PO Resp. 7 (citing Ex. 1001 8:8–12)), while “the ʼ535 patent
`describes access profiles without using any of the words in Petitioner’s
`construction” (PO Resp. 8). According to Patent Owner, Petitioner’s
`construction “is not the broadest reasonable interpretation and imports
`limitations from the specification into the claims.” PO Resp. 8. For
`example, Patent Owner refers to embodiments of access profiles that it
`argues contain information related to data type and to system throughput so
`that a suitable compression algorithm providing the desired balance between
`speed and compression ratio may be selected. PO Resp. 8 (citing Ex. 1001,
`7:51–55, 8:4–12, 14:27–39). Similarly, Patent Owner argues that, in light of
`dependent claim 8, which recites “selecting the one or more compressors
`based upon a number of reads of at least a portion of a first compressed data
`block that was created from the at least the portion of the data block,” the
`broader claim 1 “is not limited to a method that uses ‘a number of reads.’”
`PO Resp. 10. Patent Owner argues that the tables from columns 11 and 12
`of the ʼ535 Patent “is merely an example of the invention” and that
`limitations from this embodiment should not be imported into the claim. PO
`Resp. 11. Moreover, the access profiles in the tables “contain[] information
`about both reads and writes,” while Petitioner’s construction allows for reads
`or writes. PO Resp. 12–13.
`Turning initially to Petitioner’s proposed construction, we agree with
`Petitioner that the term “access” as used in the ʼ535 Patent at least includes
`reads or writes of data. For example, the tables appearing in columns 11 and
`12 of the ʼ535 Patent each refer to the amount of times data is either written
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`Patent 8,934,535 B2
`to or read from storage. However, while we agree with Petitioner that the
`ʼ535 Patent provides several examples of access profiles that use the number
`and/or frequency of reads or writes to select a suitable compression
`algorithm, the specification does not limit the access profiles to only the
`number and/or frequency of reads or writes. Ex. 1001, 11:25–40. Rather,
`other information, such as data type, may also provide an indication of the
`amount of times data is written to or read from storage. See Ex. 1001, 12
`(explaining that certain data types, such as operating system files, are written
`infrequently but read frequently, while other data types, such as database
`files, are written to frequently, but read infrequently). Therefore, we decline
`to limit the construction of access profile to only the number or frequency of
`reads or writes.
`With respect to Patent Owner’s proposed construction, we agree with
`Petitioner that Patent Owner’s proposed construction is problematic in
`including the terms “desired balance” and a “controller.” Although the ʼ535
`Patent states “[t]he access profiles comprise information that enables the
`controller to select a suitable compression algorithm that provides a desired
`balance between execution speed (rate of compression) and efficiency
`(compression ratio),” the specification also states that the “plurality of access
`profiles” are “operatively accessible by the controller that enable[] the
`controller to determine the compression routine that is associated with a data
`type of the data to be compressed.” Ex. 1001, 8:4–13. Thus, in context, the
`statement Patent Owner relies upon is merely descriptive of the intended use
`of the access profiles rather than a definition. We also agree with
`Petitioner’s argument that the introduction of the term “controller” in the
`construction would add a limitation that is not present in any of the claims of
`the ʼ535 Patent.
`
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`In light of the above, we conclude that the term “access profile” at
`least encompasses, but is not necessarily limited to, Petitioner’s proposed
`construction, namely “information regarding the number or frequency of
`reads or writes.” Because we conclude that Petitioner’s proposed
`construction is encompassed within the bounds of the term “access profile,”
`we can properly analyze Petitioner’s contentions, which are based on this
`construction, and Patent Owner’s arguments to the contrary, without further
`construing the term.
`
`II. DISCUSSION
`A. Principles of Law
`To prevail in its challenges to the patentability of the claims,
`Petitioner must demonstrate by a preponderance of the evidence that the
`challenged claims are unpatentable. 35 U.S.C. § 316(e) (2012); 37 C.F.R.
`§ 42.1(d). “In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, “would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
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`question of obviousness is resolved based on underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–
`18 (1966). An obviousness analysis “need not seek out precise teachings
`directed to the specific subject matter of the challenged claim, for a court
`can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner,
`however, cannot satisfy its burden of proving obviousness by employing
`“mere conclusory statements,” but “must instead articulate specific
`reasoning, based on evidence of record” to support an obviousness
`determination. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380–81
`(Fed. Cir. 2016). Petitioner also must articulate a reason why a person of
`ordinary skill in the art would have combined the prior art references. In re
`NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`
`B. Overview of Imai
`Imai is related to encoding and transmitting digital signals to the
`receiving side where they are decoded and reproduced in real time.
`Ex. 1005 ¶ 1. Real-time encoding, transmitting, and decoding, however, can
`present several problems. For example, the transmission rate of the network
`can vary and drop below the data rate of the coded data, which leads to the
`encoded digital signals arriving too late. Ex. 1005 ¶ 3. The hardware
`capabilities or decoding method of the receiving device can also slow down
`real-time decoding of the received signals. Ex. 1005 ¶ 4. To address these
`problems, Imai includes a plurality of coding methods and selects the
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`appropriate coding method to encode the digital signals, or part of the digital
`signals, based on certain relevant factors. Ex. 1005 ¶ 7. The digital signals
`Imai is particularly concerned with are audio signals, and the plurality of
`coding methods can include PCM, ADPCM, ATRAC, ATRAC2, HVXC,
`and layers 1, 2, and 3, of MPEG. See Ex. 1005 ¶ 67. Factors that can affect
`which coding method is used include the processing capability of the
`receiving device (see Ex. 1005, Fig. 9, ¶¶ 88–99), transmission rate of the
`network (see Ex. 1005 ¶¶ 145–166), and the audio content of the audio
`signals (see Ex. 1005 ¶¶ 101–102). For example, Imai describes a situation
`where the audio signal is predominantly voice, in which case HVXC may be
`appropriately used as the coding method. Ex. 1005 ¶ 102. On the other
`hand, if the audio signal is predominantly instrument sounds, then ATRAC
`may be appropriately used as the coding method. Ex. 1005 ¶ 102.
`Imai discloses at least two embodiments of its invention. The first,
`illustrated in Figure 5, is an embodiment in which audio signals are encoded
`(compressed) using a chosen encoder and transmitted to the client. See, e.g.,
`Ex. 1005 ¶¶ 65–74. The second, illustrated in Figure 16, is an embodiment
`in which the audio signal is encoded using each of the available encoding
`methods and the resulting output is stored on the server. See, e.g., Ex. 1005
`¶¶ 165–171.
`
`C. Overview of Ishii
`Ishii is related to a file compression processor that records image and
`text data to a recording media after data compression. Ex. 1007, 1:10–15.
`Ishii’s file compression processor includes a file status monitor that keeps
`track of the current available capacity on the file unit and a threshold value
`of available capacity that is always to be ensured. Ex. 1007, Abstract, 1:56–
`60. When the current available file capacity is greater than the threshold
`
`16
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`Patent 8,934,535 B2
`value, files are not compressed and, in some embodiments, certain files with
`high access frequency are decompressed. Ex. 1007, 6:65–7:3. When the
`current available file capacity is below the threshold, the system searches for
`files with a lower access frequency and compresses them. Ex. 1007, 5:43–
`50. An appropriate data compression method is selected based on access
`frequency and file type. Ex. 1007, 5:43–50, 5:60–65. For example, a
`compression method with shorter compression and decompression times is
`selected for files that are accessed frequently and a compression method
`with a higher compression ratio (and typically longer compression times) is
`selected for files with lower access frequency. Ex. 1007, 6:12–17.
`
`D. Reason to Combine Imai and Ishii
`1. Petitioner’s Contentions
`Petitioner argues that a person of ordinary skill in the art would have
`combined Imai with Ishii because the combination “would improve upon
`Imai’s system by adding the capability to track the frequency with which
`Imai’s digital signals are requested by the client as taught by Ishii and would
`modify Imai’s compression algorithm selection logic to consider the
`frequency of access as taught by Ishii.” Pet. 18.
`In Imai, the factors considered in determining which compression
`algorithm to select include “the content of the data, the data type, the
`processing ability of the client, and the throughput of a communications
`channel.” Pet. 19 (citing Ex. 1005 ¶¶ 88–102, 149–160; Ex. 1003 ¶ 117). In
`Ishii, the factors considered “include a ‘data attribute (whether it is text data
`or binary data)’ and ‘access frequency.’” Pet. 20 (citing Ex. 1007, 5:66–
`6:6). According to Petitioner, “[t]he combined system yields the predictable
`result of having a more complete set of compression algorithm selection
`
`17
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`IPR2018-01169
`Patent 8,934,535 B2
`criteria that will improve the system’s ability to choose the most suitable
`algorithm for compressing a given data set.” Pet. 20 (citing Ex. 1003 ¶ 119).
`Petitioner also argues that one of ordinary skill would have used the
`number of reads and writes in selecting a compression algorithm, as taught
`in Ishii, with the selection criteria of Imai, because “a POSITA would have
`known and Imai in fact teaches, one of the limiting factors in compression
`systems would have been the processing capacity of the overall system.”
`Pet. 21 (citing Ex. 1005 ¶ 167; Ex. 1003 ¶ 120). Petitioner explains that
`“[u]sing the number of read/writes of a data file for selection of a more
`symmetric/less symmetric algorithm would assist in this goal by reducing
`the scale necessary for the server and the overall workload of the system.”
`Pet. 21 (citing Ex. 1005 ¶ 170).
`
`2. Patent Owner’s Arguments
`In order to understand Patent Owner’s arguments regarding whether
`Petitioner has set forth an appropriate reason to combine Imai and Ishii, we
`first review Patent Owner’s assertions regarding Imai’s operation. As
`argued by Patent Owner, when Imai receives a request for audio data, its
`frame cutting circuit cuts the audio signal into units of frame. PO Resp. 15.
`Then, a compression algorithm is selected for each frame, from among a
`number of compression algorithms, by determining, for example, whether
`the frame has instrument sounds or vocal sounds. PO Resp. 15 (citing
`Ex. 1005 ¶ 102). After the frames are compressed, they are transmitted to
`the client over the network. PO Resp. 15 (citing Ex. 1005 ¶ 64).
`Patent Owner argues that the Petition does not indicate how to use
`access frequencies to select compressors for Imai’s units of frame. PO Resp.
`32. This is because, according to Patent Owner, Petitioner’s theory applies
`Ishii’s access frequency to the entire digital signal (e.g. the entire song)
`
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`IPR2018-01169
`Patent 8,934,535 B2
`rather than the individually cut up units of frame of that digital signal. PO
`Resp. 19–20. Patent Owner argues that “[t]here is no evidence that the
`frequency of access of the digital signals is the same as the frequency of
`access of the units of frame.” PO Resp. 21. Indeed, Patent Owner argues,
`depending on the size of the units of frame, how the digital signal is cut into
`those frames, and whether certain patterns repeat within a digital signal or
`across digital signals, the access frequency of the units of frame may all be
`different from each other and from the access frequency of the digital signal
`as a whole. PO Resp. 21–22. Because the access frequency of the units of
`frame do not coincide with the access frequency of the digital signal, Patent
`Owner argues, a POSITA would not know how to design a system that
`tracks the access frequency of an entire digital signal and use that
`information to select compressors for the units of frame of that signal. PO
`Resp. 23–24.
`Further, Patent Owner argues that Imai already considers factors such
`as the computational capabilities of a client and the congestion of the
`network in selecting a compressor for the units of frame of a digital signal.
`PO Resp. 33. Adding Ishii’s access frequency to these other factors would
`be a “non-trivial task and would require significant creativity and
`experimentation,” according to Patent Owner. PO Resp. 33.
`In addition to arguing that Petitioner fails to explain how to combine
`Ishii’s access frequency with Imai’s system, Patent Owner also argues that
`Petitioner fails to explain why a person of ordinary skill would add Ishii’s
`access frequency to the other factors already considered in Imai. PO
`Resp. 30–32. This is because, according to Patent Owner, “[t]he number of
`times a particular digital signal is requested in Imai’s Figure 5 embodiment
`
`19
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`Patent 8,934,535 B2
`by one or more clients has no effect on Imai’s ability to d
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