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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`NETFLIX, INC.,
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
`____________
`
`Case IPR2018-01169
`Patent 8,934,535
`____________
`
`
`PATENT OWNER’S RESPONSE
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`

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`
`Table of Contents
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`IPR2018-01169 POR
`U.S. Patent No. 8,934,535
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`Introduction ....................................................................................................... 1
`I.
`II. Summary of ’535 Patent (Ex. 1001) and Challenged Claims ............................ 2
`III. Level of Ordinary Skill in the Art ..................................................................... 5
`IV. Claim Construction of “Access Profile” ............................................................ 6
`A. Patent Owner’s construction comes directly from the ’535 patent. ............... 7
`B. Petitioner’s construction is incorrect and unsupported .................................. 8
`C. Petitioner does not contend that “access profile” has a plain and ordinary
`meaning, or that its construction is that meaning. ................................................. 9
`D. The ’535 claims do not support Petitioner’s construction ............................. 9
`E. Petitioner’s construction is based on importing limitations from
`embodiments contrary to Federal Circuit law. .................................................... 11
`F. Petitioner’s construction is substantively wrong. ......................................... 13
`V. Summary of Prior Art ...................................................................................... 14
`A. Overview of Imai Primary Reference (Ex. 1005) ........................................ 14
`B. Overview of Ishii Secondary Reference (Ex. 1007) .................................... 17
`VI. The Petition’s Obviousness Theory for Claim 1 Fails .................................... 19
`A. Petitioner’s combination theory depends on applying Ishii’s “frequency of
`access” to Imai’s “digital signals.” ..................................................................... 19
`B. In Imai, the frequency of access of “digital signals” is different from the
`frequency of access of “units of frame.” ............................................................. 21
`C. There is no evidence that Ishii’s disclosure of frequency of access is
`applicable to Imai’s “digital signals.” ................................................................. 22
`Ishii’s encoder selection is based on the frequency of the same data block,
`1.
`not any other data block. .................................................................................. 22
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`2. A POSITA would not know how to use frequency of access of “digital
`signals” in Imai based on Ishii. ........................................................................ 23
`D. The proposed Imai-Ishii combination does not satisfy claim 1. .................. 26
`VII. The Petitioner’s Motivation to Combine Theory Fails .................................... 30
`A. There is no reason to choose Imai’s compressor based on “frequency of
`access.” ................................................................................................................ 30
`B. The Petition fails to show how Imai would use access frequencies for units
`of frame. .............................................................................................................. 32
`C. Imai and Ishii have different principles of operation that teach away from
`their combination. ............................................................................................... 34
`D. The Petition fails to show that a POSITA would be motivated to add more
`criteria for selecting encoders to Imai. ................................................................ 36
`IX. Under the Correct Construction of “Access Profile,” Petitioner’s Obviousness
`Theory Fails ............................................................................................................ 41
`A. Petitioner should not be allowed to add a new theory in reply. ................... 41
`B. Ishii does not disclose an “access profile” under the correct construction. . 42
`X. The Petition Fails to Show Invalidity for Any Challenged Claim .................. 45
`XI. Conclusion ....................................................................................................... 45
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`IPR2018-01169 POR
`U.S. Patent No. 8,934,535
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`EXHIBIT LIST
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`1005
`1006
`1007
`1008
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`1009
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`1010
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`1011
`1012
`1013
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`1014
`
`Exhibit No. Description
`1001
`U.S. Patent No. 8,934,535 to Fallon et al. (“’535 Patent”)
`1002
`Prosecution File History for the ’535 Patent
`1003
`Expert Declaration of James A. Storer
`1004
`Japanese Patent Application Publication No. H11331305 to Imai
`et al. (“Imai”)
`Certified English Translation of Imai
`U.S. Patent No. 6,507,611 to Imai et al. (“Imai ’611”)
`U.S. Patent No. 5,675,789 to Ishii et al. (“Ishii”)
`Excerpt from Andreas Spanias et al., Audio Signal Processing
`and Coding (John Wiley & Sons, Inc., 2007)
`Excerpt from Raymond Westwater et al., Real-Time Video
`Compression Techniques and Algorithms (Kluwer Academic
`Publishers, 1997)
`Excerpt from David Salomon, A Guide to Data Compression
`Methods (Springer-Verlag New York, Inc., 2002)
`International PCT Application Publication WO 00/51243 to Park
`U.S. Patent No. 5,873,065 to Akagiri et al.
`Memorandum Opinion and Order, Realtime Data, LLC v.
`Rackspace US, Inc. et al., No. 6:16-CV-00961, Dkt. 183 (E.D.
`Tex. June 14, 2017)
`Memorandum Opinion and Order, Realtime Data, LLC v. Actian
`Corp. et al., No. 6:15-CV-00463, Dkt. 362 (E.D. Tex. July 28,
`2016)
`U.S. Patent No. 6,195,024 to Fallon
`Notice of Interested Parties, Realtime Adaptive Streaming, LLC
`v. Hulu LLC, No. 2:17-CV-07611, Dkt. 18 (C.D. Cal. Oct. 24,
`2017)
`Expert Declaration of Kenneth A. Zeger, Ph.D.
`Transcript of Deposition of James A. Storer on March 13, 2019
`
`1015
`1016
`
`2001
`2002
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`i
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`I.
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`IPR2018-01169 POR
`U.S. Patent No. 8,934,535
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`Introduction
`Petitioner Netflix, Inc.1 challenges claims 1–14 of U.S. Patent No. 8,934,535
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`(“’535 patent”). The Petition presents a single ground for invalidity: that all
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`challenged claims are obvious based on Imai as the primary reference and Ishii as
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`the secondary reference. The lynchpin of Petitioner’s theory is combining Imai’s
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`Fig. 5 embodiment with Ishii’s alleged disclosure of (i) tracking access frequency
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`and (ii) encoder selection based on access frequency. But as discussed more fully in
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`this Response, Petitioner’s theory fails because:
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`• Petitioner’s
`Imai-Ishii combination depends on applying
`“frequency of access” to Imai’s requested digital signals.
`
`Ishii’s
`
`• But Petitioner alleges that the claimed “data block” is satisfied by Imai’s
`units of frame, which are not digital signals and in fact created by cutting
`the entire digital signal. And the frequency of access of digital signals is
`entirely different from the frequency of access of units of frame.
`
`• There is no evidence that that Ishii’s disclosure of frequency of access of
`the data block to be compressed is applicable to Imai’s “digital signals”
`before data blocks are even created.
`
`• Further, a POSITA would not be motivated to modify Imai’s encoder
`selector to account for frequency of access. Nor would a POSITA know
`how or be motivated to this given the differences between Imai and Ishii.
`
`
`1 The original Petitioners were Hulu, Inc., Amazon.com, Inc. and Netflix, Inc. On
`October 18, 2018, the Board granted the parties’ joint motion to terminate as to
`Petitioners Hulu and Amazon.com. Paper 18. Thus, Netflix, Inc. is the only
`remaining Petitioner in this proceeding.
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`1
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`• Finally, Petitioner’s argument is premised on an incorrect claim
`construction of “access profile.” Under the correct construction, Petitioner
`has not met its burden to show that the claims are unpatentable.
`
`For these reasons, the Board should find that Petitioner has not met its burden to
`
`prove that claims 1–14 of the ’535 patent are unpatentable.
`
`II.
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`Summary of ’535 Patent (Ex. 1001) and Challenged Claims
`The ’535 patent relates generally to “data compression and decompression”
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`and to “compressing and decompressing data based on an actual or expected
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`throughput (bandwidth) of a system that employs data compression.” Ex. 1001 at
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`Abstract. The ’535 patent also relates to “the subsequent storage, retrieval, and
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`management of information in data storage devices utilizing either compression
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`and/or accelerated data storage and retrieval bandwidth.” Id. at 1:26–29.
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`The ʼ535 patent explains that data compression algorithms can have varied
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`performance characteristics. Id at 1:32–35. For example, with a typical dictionary-
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`based compression algorithm, the size of the dictionary can affect the performance
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`of the algorithm. Id. at 1:35–38. A large dictionary may yield very good compression
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`ratios but may make the algorithm take a long time to execute.
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`On the other hand, a smaller dictionary may yield a faster compression time
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`but at the expense of lower compression ratio. Id. at 1:38–44. Thus, the patent
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`recognizes that one challenge in employing data compression is selecting the
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`appropriate algorithm from a variety of algorithms for a given application or system.
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`The patent also teaches that the desired balance between speed and efficiency is an
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`U.S. Patent No. 8,934,535
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`important factor in determining which algorithm to select for data compression. The
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`inventors of the ‘535 patent recognized that a system that provides dynamic
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`modification of compression system parameters to provide an optimal balance
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`between speed and compression ratio is highly desirable. Id. at 1:56–60.
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`The ʼ535 patent describes as one example a system for compressing and
`
`decompressing based on the actual or expected throughput (bandwidth) of a system
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`employing data compression and a technique of optimizing based upon planned,
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`expected, predicted, or actual usage. Id. at 7:51–55. A bandwidth sensitive data
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`compression routine may be selected based on access profiles that enable the
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`controller to determine a compression routine associated with a data type of the data
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`to be compressed. Id. at 8:4–8. The access profiles comprise information that enables
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`the controller to select a suitable compression algorithm that provides the desired
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`balance between speed and compression ratio. Id. at 8:8–13.
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`These access profiles may take into account the overall throughput of a system
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`as one factor in deciding whether to use an asymmetric or symmetric algorithm. Id.
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`at 11:25–29. An asymmetric algorithm is one in which the execution time for the
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`compression and decompression routines differ significantly. Id. at 9:64–66.
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`Another factor the access profile may track is the type of data to be processed. Id. at
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`11:29–31. For example, different data types may be associated with different
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`compression algorithms. Id. at 11:35–40.
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`Through its teachings, the ’535 patent describes a system that selects an
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`appropriate compression algorithm to optimize system throughput based on the data
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`being compressed. Id. at 14:27–39.
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`Independent claim 1 of the ’535 patent recites:
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`1. A method, comprising:
`
`[a]
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`determining a parameter or attribute of at least a portion of a data block
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`having audio or video data;
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`[b]
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`selecting an access profile from among a plurality of access profiles
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`based upon the determined parameter or attribute; and
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`[c]
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`compressing the at least the portion of the data block with one or more
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`compressors using asymmetric data compression and information from
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`the selected access profile to create one or more compressed data
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`blocks, the information being indicative of the one or more compressors
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`to apply to the at least the portion of the data block.
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`Claims 2–13 depend directly or indirectly from independent claim 1. The only
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`other challenged claim is independent claim 14. Claim 14 recites:
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`14. A method, comprising:
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`[a]
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`determining a parameter or attribute of at least a portion of a data block;
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`[b]
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`selecting an access profile from among a plurality of access profiles
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`based upon the determined parameter or attribute; and
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`[c]
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`compressing the at least the portion of the data block with one or more
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`compressors utilizing information from the selected access profile to
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`create one or more compressed data blocks, the information being
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`indicative of the one or more compressors to apply to the at least the
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`portion of the data block,
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`[d] wherein the one or more compressors utilize at least one slow compress
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`encoder and at least one fast decompress decoder, and
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`[e] wherein compressing the at least the portion of the data block with the
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`at
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`least one slow compress encoder
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`takes more
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`time
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`than
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`decompressing the at least the portion of the data block with the at least
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`one fast decompress decoder if the time were measured with the at least
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`one slow compress encoder and the at least one fast decompress
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`decoder running individually on a common host system.
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`III. Level of Ordinary Skill in the Art
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`The Petitioner and its expert, Dr. Storer, propose that a person of ordinary skill
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`in the art (“POSITA”) in the field of art of the ’535 patent at the time of the
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`inventions “would have a bachelor’s degree in mechanical engineering, electrical
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`engineering, computer science, or a similar field with at least two years of experience
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`in data compression or a person with a master’s degree in mechanical engineering,
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`electrical engineering, computer science, or a similar field with a specialization in
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`data compression. A person with less education but more relevant practical
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`experience may also meet this standard.” Ex. 1003, Declaration of James A. Storer
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`(“Storer Decl.”) ¶ 66. For purposes of this IPR proceeding, Patent Owner adopts
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`Petitioner’s definition of the level of ordinary skill. See Ex. 2001, Declaration of
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`Kenneth A. Zeger (“Zeger Decl.”) ¶ 26.
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`IV. Claim Construction of “Access Profile”
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`The Board does not construe any claim terms unnecessary to resolve the
`
`parties’ dispute. 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)). In deciding to institute this IPR,
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`the Board construed only a single term: “access profile.” ID at 11–12. Patent Owner
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`believes this is the only term that requires construction to resolve parties’ dispute.
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`The Petition proposes to construe the term “access profile” to mean
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`“information regarding the number or frequency of reads or writes.” Pet. at 10. The
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`Board adopted this construction for purposes of the institution decision. Id. at 12.
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`But the Board noted that this construction was only for the institution decision and
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`that it “does not preclude the parties from arguing their proposed constructions of
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`the claims during trial.” Id. 9–10. The Board further noted that: “A final
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`determination as to claim construction will be made at the close of the proceeding,
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`after any hearing, based on all the evidence of record.” Id. at 10.
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`A.
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`Patent Owner’s construction comes directly from the ’535 patent.
`
`A POSITA, viewing the claims, specification, and prosecution history would
`
`find that the broadest reasonable interpretation of “access profile” is “information
`
`that enables the controller to select a suitable compression algorithm that provides a
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`desired balance between execution speed (rate of compression) and efficiency
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`(compression ratio).” Zeger Decl. ¶ 38. This construction comes directly from the
`
`’535 patent. See ’535 patent at 8:8–12 (“The 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)”).
`
`Indeed, the Board recognized these features of an access profile in the context
`
`of the ’535 patent. In describing the ’535 patent, the Board found that: “The desired
`
`balance between speed and efficiency is an important factor in determining which
`
`algorithm to select for data compression.” Id. at 5. The Board also found that: “A
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`system that provides dynamic modification of compression system parameters to
`
`provide an optimal balance between speed and compression ratio is highly
`
`desirable.” Id.
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`7
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`B.
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`Petitioner’s construction is incorrect and unsupported
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`IPR2018-01169 POR
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`Petitioner’s construction—“information regarding the number or frequency of
`
`reads or writes”—is not the broadest reasonable interpretation and imports
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`limitations from the specification into the claims. Zeger Decl. ¶ 39. For example, the
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`’535 patent describes access profiles without using any of the words in Petitioner’s
`
`construction. The patent explains that an exemplary embodiment of access profiles
`
`enable the controller to “determine a compression routine that is associated with a
`
`data type of the data to be compressed.” ’535 patent at 8:4–8. The patent further
`
`explains that access profiles comprise information that enables the controller to
`
`select a suitable compression algorithm that provides a desired balance between
`
`speed and compression ratio. Id. at 8:8–12. The patent also describes that the system
`
`may perform compression based on the actual or expected throughput (bandwidth)
`
`and optimize usage. Id. at 7:51–55. Further, the system may select an appropriate
`
`compression algorithm to optimize system throughput based on the data being
`
`compressed. Id. at 14:27–39.
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`These excerpts from the specification say nothing about “the number or
`
`frequency of reads or writes,” much less define an “access profile” as “the number
`
`or frequency of reads or writes.” The specification and prosecution history do not
`
`contain a disclaimer or disavowal that would support Petitioner’s construction.
`
`Zeger Decl. ¶ 40. A POSITA would not understand that the inventors made a clear
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`and unmistakable disclaimer of claim scope requiring an “access profile” to be
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`“information regarding the number or frequency of reads or writes.” Id.
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`C.
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`Petitioner does not contend that “access profile” has a plain and
`ordinary meaning, or that its construction is that meaning.
`
`Petitioner does not contend that “access profile” has a plain and ordinary
`
`meaning, much less argue that its construction is the plain and ordinary meaning. Id.
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`¶ Zeger Decl. ¶ 41–42. For example, Petitioner’s expert, Dr. Storer could not recall
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`any instance of a POSITA using the term “access profile.”2 Nor was Dr. Storer aware
`
`of any technical dictionaries or publications that used the term “access profile.”3
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`D. The ’535 claims do not support Petitioner’s construction
`
`The Petition argues that its proposed construction “is supported by the claim
`
`language” without explaining why. Pet. at 11. Regardless, the Petition is wrong.
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`Zeger Decl. ¶ 43. For example, claim 1 does not use or suggest any of the words in
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`Petitioner’s construction. The claim says nothing about “number or frequency of
`
`
`2 See Ex. 2002, Transcript of Deposition of James A. Storer on March 13, 2019
`(“Storer Deposition” or “Storer Dep.”) at 34:7–34:35 (“Q: So if someone at your
`data compression conference used the term access profile, you wouldn’t know what
`that means more specifically? A: . . . I don’t recall an instance of someone using the
`term. . . .”), 35:1(“Q: You don’t recall an instance of someone using the term access
`profile? A: Not specifically, sitting here.”).
`3 See Storer Dep. at 36:16–22 (“Q: Are you aware of any technical dictionaries that
`use or define the term access profile? A: It wouldn’t surprise me if the term was
`used, perhaps. I don’t have a specific recollection sitting here.”), 37:8–12 (“Q: Are
`you aware of the term access profile being used or discussed in any technical papers
`or publications? A: I don’t have a specific recollection sitting here.”).
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`reads or writes.” To the contrary, claim 1 of the ’535 patent describes selecting a
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`suitable asymmetric data compression encoder based on the access profiles. Thus,
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`the claim language supports Patent Owner’s construction, which is “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).”
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`Nor do the dependent claims support Petitioner’s construction. Id. ¶ 44. Claim
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`8 of the ’535 patent, which depends from claim 1, recites “selecting the one or more
`
`compressors based upon a number of reads of at least a portion of a first compressed
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`data block that was created from the at least the portion of the data block.” ’535
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`patent, cl. 8. This indicates that the broader claim 1 is not limited to a method that
`
`uses “a number of reads.” Further, claim 8 does not indicate that “a number of reads”
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`is related to “access profile”—for example, it does not recite “wherein the access
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`profile comprises a number of reads.”
`
` Further, the phrase “number of reads” in claim 8 is about “a portion of a first
`
`compressed data block that was created,” so it is not necessarily a parameter or
`
`attribute of the uncompressed data. Claim 1 describes that the “access profile” is
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`selected based on a parameter or attribute of the data before it is compressed.
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`E.
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`Petitioner’s construction is based on importing limitations from
`embodiments contrary to Federal Circuit law.
`
`As primary support for its construction, Petitioner relies on the embodiment
`
`described in columns 11 and 12 of the ’535 patent. Zeger Decl. ¶ 45. But the
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`embodiment is merely an example of the invention, as the Petition and Dr. Storer
`
`acknowledge. See Storer Dep. at 90:5–12 (“Q: [The table from columns 11–12 is]
`
`an example or an embodiment from the patent, correct, from the ’535 patent? A: It’s
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`an example used when the ’535 patent is trying to explain what it means by access
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`[profile], yes.”). And as matter of Federal Circuit law, it is improper to construe a
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`term by importing limitations from an embodiment. See JVW Enters. v. Interact
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`Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005) (forbidding importation
`
`“from examples or embodiments appearing only in a patent’s written description,
`
`even when a specification describes very specific embodiments of the invention or
`
`even describes only a single embodiment”).
`
`Thus, a POSITA would not understand that “access profile” requires
`
`limitations from exemplary embodiments. Zeger Decl. ¶ 45. Nor would a POSITA
`
`find that this exemplary embodiment constitutes disclaimer or disavowal of claim
`
`scope. Id.; see Thorner v. Sony Computer Enter. Am. LLC, 669 F.3d 1362, 1365–
`
`1367 (Fed. Cir. 2012) (disclaimer must be “clear and unmistakable”). The Petition
`
`does not point to any lexicography or disclaimer that supports its construction.
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`11
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`Further, even the example supports Patent Owner’s construction and does not
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`support Petitioner’s construction. Zeger Decl. ¶¶ 46–48. The example shows three
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`access profiles: (1) fewer writes than reads, (2) more writes than reads, and (3)
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`similar writes and reads. Id. ¶ 47:
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`
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`’535 patent at 12:47–67.
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`As both the Board and Dr. Storer acknowledge, each “access profile” in this
`
`example contains information about both reads and writes. See ID at 12 (“it is true
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`that the three access profile examples provided in the ’535 patent each keep track of
`
`the frequency of both reads and writes”); Storer Dep. at 91:8–11 (“Q: so each of
`
`these [examples] have information about reads and writes? A: In this example, each
`
`of them list number of reads and number of writes.”).
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`12
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`Petitioner’s construction is inconsistent with this example because it is about
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`the number of reads or writes. In contrast, Patent Owner’s construction is consistent
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`with this example. Zeger Decl. ¶ 49. It reflects that the “access profile” is specific
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`information that is used to select a suitable compression. The particular example
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`shows that access profiles can contain information about writes and reads relative to
`
`each other and can indicate one of three types of compressors. Thus, in this example,
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`an access profile is used to select a suitable compressor.
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`F.
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`Petitioner’s construction is substantively wrong.
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`Petitioner’s construction should also be rejected because it is substantively
`
`incorrect. Id. ¶ 50. Under Petitioner’s construction, an access profile could contain
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`information only about reads or only about writes. This information in isolation
`
`would be insufficient to select a suitable compressor. It would not indicate an
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`asymmetrical versus symmetrical compressor (or what type of asymmetrical
`
`compressor). It also runs counter to the patent’s description of the purpose of the
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`access profile, which is to allow the controller to select “the type of compression
`
`algorithm that would produce optimum throughput.” Id. at 45:47–49. For example,
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`the “number of reads” in isolation is not necessarily an access profile. A
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`characteristic solely related to decompression (i.e., number of reads) is not used by
`
`the controller to determine the suitable compression algorithm to balance
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`compression speed and efficiency.
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`Petitioner’s construction would also exclude embodiments. Zeger Decl. ¶ 51.
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`U.S. Patent No. 8,934,535
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`A construction that excludes embodiments is “rarely, if ever, correct.” SanDisk
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`Corp. v. Memorex Prod., Inc., 415 F.3d 1278, 1285 (Fed. Cir. 2005). For example,
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`the specification states that an access profile may comprise a data type alone if the
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`data type is used to select a suitable compression algorithm. ’535 patent at 11:35–38
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`(“the data profiles may comprise a map that associates different data types (based
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`on, e.g., a file extension) with preferred one(s) of the compression algorithms 13.”).
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`Petitioner’s construction about “reads or writes” would exclude this embodiment.
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`Finally, Petitioner’s construction—“information regarding the number or
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`frequency of reads or writes”—is vague and incomplete because it does not identify
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`the number or frequency of reads or writes of what. Zeger Decl. ¶ 52. At a minimum,
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`Petitioner’s construction should be revised to say, “information regarding the
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`number or frequency of reads or writes of the data to be compressed.”
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`V.
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`Summary of Prior Art
`A. Overview of Imai Primary Reference (Ex. 1005)
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`Imai is directed to encoding audio data for transmission to enable real time
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`decompression and reproduction at a client. See Pet. at 12; Ex. 1005 at Abstract
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`(“Problem to be solved” is to “decode and reproduce the digital audio signals in real
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`time.”). Imai achieves this through the embodiment depicted in Fig. 5:
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`In the Fig. 5 embodiment, the system receives a request for audio data from a
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`client. Pet. at 12; Ex. 1005 at [0066]. The “frame cutting circuit” 51 cuts the audio
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`input signal into “units of frame” having predetermined length, e.g., suitable for
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`encoding or transmission via the network. Id. at [0066]. Each frame is then sent to
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`switch 52, which selects one encoder from among encoders 531 to 53N for each frame
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`using the encoding selection circuit 56. Id. The selection circuit chooses one encoder
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`for each frame based on portions of the audio signal, e.g., if it has instrument sounds
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`or vocal sounds. See Pet. at 13; Ex. 1005 at [0102]. After the frames are encoded,
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`they are transmitted via the network where they are later decompressed/reproduced
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`at the client. Ex. 1005 at [0064].
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`15
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`Imai describes a separate embodiment in Fig. 16 with a different structure.
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`U.S. Patent No. 8,934,535
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`Unlike the Fig. 5 embodiment which performs encoding “in response to each request
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`for the audio signal,” the Fig. 16 embodiment encodes the audio signal in advance.
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`Id. at [0167] (“audio signal is previously encoded into coded data”):
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`Specifically, in the Fig. 16 embodiment, the “frame cutting circuit” 51 cuts
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`the audio data into “units of frame.” Id. at [0167], [0168]. But then each outputted
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`frame is processed by all the encoders 531 to 53N. Id. at [0168]. And each encoded
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`version of each frame is stored in storage units 911 to 91N. Id. The encoding and
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`storage occur automatically, and there is never any encoder selection before applying
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`all the encoders and storing the encoded data.
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`16
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`These processing operations can occur in advance. Id. at [0167]. Later, when
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`a client requests an audio signal, the encoding selection circuit 56 controls reading
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`the encoded data from the storage unit. Id. at [0169]. The selection circuit selects
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`one of the storage units 911 to 91N corresponding to the instruction and then reads
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`the encoded data from the selected storage. Id. After the encoded data is read, it is
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`transmitted to the client via the network. Id.
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`B. Overview of Ishii Secondary Reference (Ex. 1007)
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`Ishii is directed to a file compression processor that enables effective file
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`utilization. See Ex. 1007 at Abstract. Ishii achieves this through the embodiment
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`depicted in Figure 1:
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`In this embodiment, the file compression processor 110 includes a file status
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`monitor 101, which compares the current available capacity on the file unit to record
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`files and the threshold value predetermined as the upper limit of the available
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`capacity. Id. The file compression portion 105 compresses a file on the file unit when
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`the file status monitor 101 judges that the current available capacity is smaller than
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`the threshold. Id. The file attribute controller 132 stores the control information for
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`the files recorded on the file unit including the last access date, the number of
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`accesses, whether the file is already compressed or not. The search portion 102
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`searches for files not yet compressed with low access frequency based on the control
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`information so as to select files to be compressed.
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`Ishii looks for files that have low access frequency relative to other files, and
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`this informs the compression method to be applied. Id. at 5:45–50, 7:24-31. “The
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`file compression method with a shorter decompression time is selected for files with
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`higher access frequency and the file compression method with a higher compression
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`ratio is selected for files with lower access frequency.” Id. at 7:25-34. Although Ishii
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`mentions decompression speed, it does not mention compression speed. The process
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`of monitoring the available file capacity to determine which files should be
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`compressed and decompressed is a continuous one. Id. at Figs.5-7 (depicting the
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`monitoring loop that always returns to step. 210). Thus, files may be compressed,
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`uncompressed, and recompressed as the file storage device is used.
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`Ishii was considered during prosecution of the ’535 patent. Ishii was listed on
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`an IDS on pages marked “ALL REFERENCES CONSIDERED EXCEPT WHERE
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`LINED THROUGH.” See Ex. 2002 at 307. Ishii was not marked through. Id. Ishii
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`was thus considered by the Examiner.
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`VI. The Petition’s Obviousness Theory for Claim 1 Fails4
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`For claim 1, the Petition presents a single ground of invalidity: obviousness
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`based on Imai as the primary reference and Ishii as the secondary reference. Pet. 18,
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`22. Because the proposed Ima