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
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
`____________
`
`Case IPR2018-01169
`Patent 8,934,535
`____________
`
`
`PATENT OWNER’S SUR-REPLY
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`
`
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`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`NETFLIX, INC.,
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
`____________
`
`Case IPR2018-01169
`Patent 8,934,535
`____________
`
`
`PATENT OWNER’S SUR-REPLY
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`
`
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`
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`Table of Contents
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`I. Petitioner’s combination theory rests on a single, unsupported point:
`that a POSITA would use frequency of access of the entire digital
`signal to select encoders for individual pieces cut from the signal. ................... 1
`II. Petitioner’s arguments in reply do not show otherwise: there is still
`insufficient evidence that Ishii’s frequency of access would be
`applied Imai’s system that cuts digital signals into units of frame. ................... 3
`A. Petitioner’s “simple example” is attorney argument and
`regardless does not show why and how POSITA would do it. .................. 3
`B. Petitioner’s arguments about “implementation detail” and the
`alleged level of disclosure in the ’535 patent miss the point. ..................... 6
`III. Regardless, there is insufficient evidence for “why” a POSITA would
`modify Imai to track access frequency of digital signals and use it to
`individually encode units of frame. .................................................................... 7
`IV. Petitioner’s theory also fails because the proposed combination does
`not satisfy the limitations of claim 1. ............................................................... 10
`A. Claim 1 requires selecting an access profile based on
`determining a parameter or attribute of at least a portion of a
`data block. ................................................................................................. 11
`B. Claim 1 requires that “information” derived from a data block be
`used to select a compressor for the same data block. ............................... 12
`V. Petitioner’s theory fails under any construction of “access profile.” ............... 14
`VI. Conclusion ....................................................................................................... 18
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`
`
`i
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`I.
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`Petitioner’s combination theory rests on a single, unsupported point:
`that a POSITA would use frequency of access of the entire digital signal
`to select encoders for individual pieces cut from the signal.
`Although Petitioner’s Imai and Ishii obviousness combination fails for several
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`reasons, the lynchpin of its theory depends on a single point. In granting institution,
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`the Board preliminarily found under the reasonable likelihood standard that:
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`Ishii’s teaching of using access frequency as a factor in selecting an
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`encoder would suggest to a person of ordinary skill that the frequency
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`that a particular audio signal is requested (i.e. accessed) could be used
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`as a factor in selecting the appropriate compression algorithm for the
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`frames created from the audio signals.
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`Inst. Dec. (Paper 20) at 18. Now, under the full record and the heightened evidentiary
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`standard of trial, the Board should determine that this preliminary finding has not
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`been proven by a preponderance of the evidence.
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`On this critical point—whether a POSITA would have modified Imai to track
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`frequency of access of the entire digital signal, cut the signal into myriad units of
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`frame, and then use the access frequency of the entire signal to individually select
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`an encoder for each unit of frame—Petitioner offers no reasoned analysis or
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`evidentiary support. For example, Petitioner fails to discuss: (1) the relationship
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`between Imai’s digital signals and units of frame and how the frequency of access
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`of one may correspond to the other; (2) why tracking and using the frequency of
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`1
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`access of the entire signal would be beneficial for selecting encoders for individual
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`units of frame; and (3) how Imai’s system would account for the access frequency
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`of the entire signal in its decision to select encoders for each unit of frame. In sum,
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`Petitioner fails to show why and how a POSITA would track access frequency for
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`one thing (the entire digital signal) and use that information to select an encoder for
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`a different thing (the individual units of frame created from the signal).
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`
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`In contrast, Patent Owner and its expert, Dr. Zeger, provide detailed opinions
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`and evidence rebutting this exact point. In Imai, the frequency of access of digital
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`signals is different from the frequency of access of units of frame. POR (Paper 26)
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`at 21–22; Zeger Decl. (Ex. 2001) ¶¶ 68–71. Ishii only teaches tracking access
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`frequency of the same data block to be compressed. POR at 22–23; Zeger Decl. ¶¶
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`74–80. Thus, a POSITA would not know based on Ishii how to design a system that
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`tracks frequency of access of Imai’s entire digital signal (not a data block as Ishii is
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`directed to) and use that information to select encoders to individually compress data
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`blocks created from cutting the signal. POR at 23–25; Zeger Decl. ¶¶ 71–72.
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`Neither Imai nor Ishii teach anything about the relationship between the
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`frequency of access of a digital signal and units of frame that result from cutting the
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`signal. POR at 24; Zeger Decl. ¶ 71. And any such relationship would be unknown
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`and not obvious to a POSITA. Id. Thus, a POSITA would not be motivated to design
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`a system that chooses a compressor for each unit of frame based on the access
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`2
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`frequency of the original signal. POR at 25; Zeger Decl. ¶ 72. Such a system would
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`go beyond the teachings of Imai or Ishii, and certainly not be obvious. See id.
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`II.
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`Petitioner’s arguments in reply do not show otherwise: there is still
`insufficient evidence that Ishii’s frequency of access would be applied
`Imai’s system that cuts digital signals into units of frame.
`Petitioner makes several arguments in reply (Reply, Paper 31, at 11–17), but
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`none save its theory. Petitioner does not dispute Dr. Zeger’s detailed opinions that a
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`POSITA would not use access frequency of the entire digital signal to select
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`encoders for each unit of frame. Instead, Petitioner asserts that the “access frequency
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`[of the digital signal] is used to select the compression algorithm applied to a given
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`data block, e.g., a faster algorithm for data blocks for data blocks from files with
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`higher access frequency.” Reply at 13. But Petitioner offers no evidence that such a
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`system would be desirable or actually work. Dr. Zeger explains that it would not.
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`Thus, the evidence remains one-sided in favor of Patent Owner.
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`A.
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`Petitioner’s “simple example” is attorney argument and
`regardless does not show why and how POSITA would do it.
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`Petitioner offers a “simple example” involving two digital signals: The Star
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`Spangled Banner and Bohemian Rhapsody. Reply at 13–14. As an initial matter, this
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`example is new attorney argument. Neither the Petition nor its expert Dr. Storer give
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`any examples of a digital signal cut into data blocks or show it would be beneficial
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`to associate the frequency of the digital signal with individual blocks. This highlights
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`3
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`the lack of detailed expert evidence needed to support Petitioner’s theory. See Estee
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`Lauder v. L’Oreal, 129 F.3d 588, 595 (Fed. Cir. 1997) (“Arguments of counsel
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`cannot take the place of evidence lacking in the record.”).
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`Regardless, nothing in the example disturbs Dr. Zeger’s opinions. As the
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`example acknowledges, each digital signal (e.g., Song 1) is divided into a myriad
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`number of data blocks (Block 1.a, Block 1.b, . . . Block 1.n). The example assumes
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`that a POSITA would automatically attach the access frequency of the song to each
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`individual data block, but Dr. Zeger explains that a POSITA would not do this. As
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`Dr. Zeger explains, within any digital signal the access frequency of each data block
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`may be different from each other and different from the access frequency of the
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`digital signal. POR at 22; Zeger Decl. ¶ 70.
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`To the contrary, a POSITA would readily understand that a particular data
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`block could repeat many within a digital signal as well as within other signals, thus
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`significantly skewing the frequency of access of the data blocks. Zeger Decl. ¶¶ 70–
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`71. Dr. Zeger illustrates this through a figure (id. ¶¶ 71–72):
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`4
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`As the figure shows, even if access frequency of Signal #2 is high and the
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`frequency of Signal #1 is low, it would be erroneous to attach the same access
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`frequency to each data block within the signal. That would result in associating
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`Block C with high frequency and Block A with low frequency. But regardless of
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`how often Signals #1 and #2 are requested, Block A has at least the same actual
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`frequency as Block C—and perhaps substantially higher.
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`Thus, a POSITA would recognize that the frequency of access of a particular
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`digital signal does not indicate nor allow calculation of the frequencies of access of
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`the data blocks contained in that signal. Id. ¶ 72. Imai and Ishii does not teach
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`anything about the relationship between the frequency of access of the signal and
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`the constituent data blocks. Id. ¶ 71. And any such relationship would be unknown
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`and not obvious to a POSITA. Id.
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`Dr. Zeger’s opinions apply directly to Petitioner’s “simple example.” What is
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`missing from the example—and indeed the entire record—is any showing that a
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`POSITA would be motivated to build such a system and know it would be beneficial.
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`There is no evidence that a POSITA would recognize that the frequency of access
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`of data blocks can be ascertained or even estimated based on the frequency of the
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`digital signal. Nor is there any evidence about how many data blocks are created
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`from each signal, whether the data blocks are unique or repetitive, and whether the
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`same blocks exist in other signals. Petitioner and Dr. Storer are silent as to all these
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`5
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`points. And without this explanation and evidence, Petitioner cannot meet its burden
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`to prove the combination would be obvious.
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`B.
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`Petitioner’s arguments about “implementation detail” and the
`alleged level of disclosure in the ’535 patent miss the point.
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`Petitioner also criticizes Patent Owner
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`for
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`requiring excessive
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`“implementation detail” and asserts that the ’535 patent itself has limited disclosure
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`about how to calculate/use access frequency. See Reply at 14–17. These arguments
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`miss the point because they do not address Petitioner’s actual combination. The
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`question is whether a POSITA would be motivated and know how to design a system
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`that (a) tracks access frequency of entire digital signals, (b) cut the digital signal into
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`myriad pieces, and (c) then use the access frequency of the entire signal to
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`individually select an encoder for each piece.
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`None of the prior art references or the ’535 patent teach or suggest Petitioner’s
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`combination. Imai does not discuss access frequency at all. And both Ishii and the
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`’535 patent describe determining the access frequency of a particular data block (or
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`file) and then using that access frequency to select an encoder to compress the same
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`data block (or file). See Zeger Decl. ¶¶ 74–82 (Ishii’s encoder selection is based on
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`the frequency of access of the data block to be compressed, not any other data block);
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`’535 patent (Ex. 1001) at 13:1–6 (“the access profile of a give[n] data set is known
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`6
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`a priori or determined prior to compression so to that the optimum category of
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`compression algorithm can be selected”); see also ’535 patent, cl. 1.
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`There is no teaching or suggestion in the ’535 patent (or any prior art) about
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`determining the access frequency of a data block and using it to select encoders for
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`a different data block. Indeed, the ’535 patent’s disclosures about access frequency
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`are plainly inapplicable to the modified Imai system. In Imai, the access frequency
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`of data blocks (or units of frame), cannot be “known a priori” or even “determined
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`prior to compression.” ’535 patent at 13:1–6. This is because Imai’s data blocks are
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`dynamically generated by the frame cutting circuit and immediately compressed
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`using the encoding selecting circuit. See Imai (Ex. 1005) at Fig. 5, [0066], [0102].
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`Thus, Petitioner’s cited cases and arguments about the level of disclosure in
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`the ’535 patent are inapposite. See Reply at 14–16. The ’535 patent provides enough
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`implementation details for using access frequency for a given data block, as does
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`Ishii. But nothing in the record provides any implementation details for using access
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`frequency of a digital signal to encode individual pieces of that signal. Such a
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`technique is not enabled and would not be obvious to a POSITA.
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`III. Regardless, there is insufficient evidence for “why” a POSITA would
`modify Imai to track access frequency of digital signals and use it to
`individually encode units of frame.
`Even if POSITA could conceivably modify the Imai system to track access
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`frequency of the digital signal as Petitioner asserts, there is still zero evidence that a
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`7
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`POSITA would be motivated to do so. See POR at 35–38; Zeger Decl. ¶¶ 107–111.
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`The Federal Circuit has found insufficient and rejected arguments that a POSITA
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`“could combine these references, not that they would have been motivated to do so.”
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`InTouch Tech., Inc. v. VGO Comm., Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)
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`(emphasis added). Here, there is insufficient evidence about “why” a POSITA would
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`be motivated to modify Imai to track access frequency of digital signals and use that
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`information to individually select encoders for pieces of the signal.
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`Such a modification would only be desirable if a POSITA knew that the
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`perceived benefit outweighed the attendant costs. As to the benefit, Petitioner makes
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`no showing that the access frequency of the digital signal is a useful criterion for
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`encoding each unit of frame. Petitioner does not assert that the access frequencies of
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`the signal and units of frame are likely to be the same. Only then might the access
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`frequency of the digital signal be a relevant factor for selecting encoders for units of
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`frame. Petitioner does not address these issues, but Dr. Zeger does. He explains that
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`given the differences between digital signals and units of frame, a POSITA would
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`not consider access frequency of the signal to be a useful factor for selecting
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`encoders for each unit of frame. Zeger Decl. ¶¶ 69–72. In his opinion, there are no
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`perceived benefits from using access frequency in this way. See id.
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`At most, Petitioner’s arguments for why a POSITA would want to add access
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`frequency of the digital signal as a factor for encoding units of frame boil down to
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`8
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`generalities without detail. See POR at 36–38, Zeger Decl. ¶¶ 109–111. Petitioner
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`asserts that “more” criteria (regardless of what those criteria are) is a good thing and
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`would lead to “better” encoder selection. See id.1 This lacks reasoned support and is
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`non-specific to what Petitioner’s theory actually requires—using access frequency
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`of the entire signal as a criterion for selecting encoders for individual units of frame.
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`Petitioner’s assertions are akin to opinions that the Federal Circuit has found
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`deficient. See, e.g., ActiveVideo Networks, Inc. v. Verizon Comms. Inc., 694 F.3d at
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`1328 (motivation “to build something better,” “more efficient, cheaper, or”
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`something that “had more features” were too generic to show obviousness); See In
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`re Nuvasive, Inc., 842 F.3d 1376, 1384 (Fed. Cir. 2016) (reversing PTAB’s finding
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`of motivation to combine where there was no articulation why combining references
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`to gain “additional information” would benefit a POSITA).
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`As to the costs of the proposed modification, Petitioner is silent. But Dr. Zeger
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`is not. As he explains, “adding more selection criteria has drawbacks, including
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`adding computational complexity and overload to the system.” Zeger Decl. ¶ 111.
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`This is especially true since Petitioner’s theory requires modifying Imai’s encoding
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`1 See also Pet. (Paper 4) at 19 (to create a “system that is better at optimizing
`compression algorithm selection”), 20 (“a more complete set of compression
`algorithm selection criteria that will improve the system’s ability to choose the most
`suitable algorithm”), 20 (“a POSITA would have considered using a broad variety
`of selection criteria”), 20–21 (“A POSITA would have looked to [Ishii] to learn of
`additional criteria for selecting a suitable compression algorithm.”).
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`9
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`selecting circuit that processes units of frame to somehow track access frequency of
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`digital signals. A POSITA would not want this capability unless it a provided
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`predictable benefits that outweighed the additional complexity. See id.
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`Petitioner does not consider the cost of tracking and using access frequency
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`in the Imai system or assert that it outweighs the generic benefit of having just one
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`more encoder selection criterion. This furthers confirms that Petitioner has shown a
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`POSITA would be motivated to do it. See Winner Int’l Royalty Corp. v. Wang, 202
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`F.3d 1340, 1349 & n.9 (Fed. Cir. 2000) (Motivation to combine requires trade-offs
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`that are “on balance, desirable.” Thus, “the benefits, both lost and gained, should be
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`weighed against one another” before motivation to combine can be found).
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`IV. Petitioner’s theory also fails because the proposed combination does not
`satisfy the limitations of claim 1.
`Petitioner’s theory fails for additional, independent reasons. Even if the
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`proposed Imai-Ishii combination were made, it would not satisfy various limitations
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`of claim 1 of the ’535 patent. See POR at 26–30; Zeger Decl. ¶¶ 83–93. Petitioner
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`does not respond to these arguments in reply. Thus, the Board should credit Patent
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`Owner’s unrebutted arguments and opinions and find that Petitioner has not met its
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`burden to prove unpatentability of challenged claims 1–14.2
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`2 Claims 2–13 are depend directly or indirectly from claim 1. Independent claim 14
`has similar limitations as claim 1. Petitioner’s theory for claim 14 refers back to
`claim 1 (see Pet. at 35) and fails for the same reasons.
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`10
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`A. Claim 1 requires selecting an access profile based on determining
`a parameter or attribute of at least a portion of a data block.
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`Petitioner’s combination fails to satisfy claim 1 because it relies on a different
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`“parameter or attribute” of “at least a portion of a data block” in Claims 1[a] and
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`1[b]. Claim 1[a] requires “determining a parameter or attribute of at least a portion
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`of a data block.” Claim 1[b] requires “selecting an access profile . . . based upon the
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`determined parameter or attribute.” Claim 1[b] takes antecedent basis from Claim
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`1[a], so the “parameter or attribute” must be the same thing.
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`But Petitioner points to different things to satisfy the claimed “parameter or
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`attribute.” For Claim 1[a], Petitioner needs the parameter or attribute to be of Imai’s
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`unit of frame because that is the alleged “at least a portion of a data block.” Thus,
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`Petitioner points to Imai’s determination of whether a unit of frame contains voice
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`or instrument sounds as the “parameter or attribute.” Zeger Decl. ¶ 84. But Petitioner
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`does not point to anything that involves access frequency of Imai’s digital signals.
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`Id. Thus, when it comes to Claim 1[b], there is no showing that the parameter or
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`attribute (of the unit of frame) is used to select an access profile. Id. ¶ 86. Under
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`Petitioner’s theory, the access profile is the access frequency of the digital signal.
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`For Claim 1[b], Petitioner points to Ishii’s use of file type and number of
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`accesses as the “determined parameter or attribute.” Id. ¶ 89. This is different from
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`any parameter or attribute of Imai’s unit of frame in Claim 1[a]. Further, Ishii’s
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`11
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`teaching is about a parameter or attribute of the data block to be compressed. It does
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`not involve a parameter or attribute of Imai’s digital signals, such as access
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`frequency. Thus, there is no showing that the access profile (access frequency of the
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`signal) is selected “based upon the determined parameter or attribute.” Id. ¶ 90.
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`B. Claim 1 requires that “information” derived from a data block be
`used to select a compressor for the same data block.
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`Petitioner’s combination also fails to satisfy claim 1’s requirement that
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`information derived from “at least a portion of the data block” be used to select a
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`compressor for the same “at least a portion of the data block.” Claims 1[a] and 1[b]
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`make clear that access profile information is determined based on “at least a portion
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`of the data block.” See ’535 cl. 1 (“determining a parameter or attribute of at least a
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`portion of a data block . . . selecting an access profile . . . based upon the determined
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`parameter or attribute.”). An access profile is information, as everyone agrees.
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`Further, claim 1[c] makes clear that the access profile information is used to
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`select a compressor to compress the same “at least the portion of the data block.”
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`See ’535 cl. 1 (“compressing the at least the portion of the data block with . . .
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`information from the selected access profile . . . the information being indicative of
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`the one or more compressors to apply to the at least the portion of the data block.”).
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`Thus, under the plain language of claim 1, access profile “information” is
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`derived from “at least a portion of a data block” and used to select a compressor for
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`12
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`the same “at least a portion of the data block.” Importantly, such information does
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`IPR2018-01169 Sur-reply
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`not come from something outside the data block being compressed, such as a
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`superset of the data block or other data blocks. Zeger Decl. ¶ 92.
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`Petitioner’s proposed combination cannot satisfy these requirements. Under
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`Petitioner’s theory, access profile “information” is access frequency of the entire
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`digital signal and thus must be derived from the entire signal. This is inconsistent
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`with the claimed “at least a portion of the data block” to be compressed, which is
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`Imai’s units of frame. Under Petitioner’s theory, access profile information is
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`derived from one thing (the entire signal) but used to select a compressor for a
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`different thing (the units of frame). But claim 1 requires the “at least a portion of the
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`data block” to be the same thing.
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`In the proposed combination, the digital signals are not the same as units of
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`frame, and there is no evidence that information about the access frequency of the
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`entire signal is contained or reproduced within (or can be derived from) each unit of
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`frame. Zeger Decl. ¶ 93. Imai’s frame cutting circuit merely cuts the digital signal
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`into pieces without creating or modifying the data. Id. At least, Petitioner would have
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`to present an entirely new theory (wholly absent from the record) about how the
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`access frequency of the entire signal is stored with some portion of each unit of
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`frame. Id. Such a system would be unknown and certainly not obvious. See id.
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`13
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`V.
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`Petitioner’s theory fails under any construction of “access profile.”
`The foregoing arguments apply to any proposed construction of “access
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`profile.” In this IPR, Petitioner and Patent Owner propose different constructions for
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`“access profile,” and the Board in an IPR on a related patent (IPR2019-00209 on
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`the’046 patent) preliminary adopted a third construction (Inst. Dec., Paper 7 at 10):
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`Patent Owner’s Proposal
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`Constructions for “Access Profile”
`Petitioner’s Proposal
`“information regarding the number or frequency of
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`reads or writes”
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`“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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`“information, such as the number or frequency of
`reads or writes, that enables the controller to select a
`suitable compression algorithm”
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`Board’s Preliminary
`Construction for Related
`’046 Patent
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`Everyone agrees that an “access profile” is a type of “information.” And under
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`any construction, Petitioner’s obviousness theory remains the same: that access
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`frequency of digital signals in the Imai-Ishii combination is the claimed “access
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`profile.” See Pet. at 28 (“Thus, Ishii’s use of a “file type” and “number of accesses”
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`(which are each an “attribute or parameter”) of a file to select an “access frequency”
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`(which is an “access profile”) of either high, medium, or low satisfies the limitation
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`of “selecting an access profile from among a plurality of access profiles based on the
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`determined parameter or attribute.”).
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`14
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`Indeed, Petitioner’s entire theory is that a POSITA would have applied Ishii’s
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`teachings about access frequency to Imai’s digital signals in the combined system.
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`See Pet. at 18 (“The combined system would improve upon Imai’s system by adding
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`the capability to track the frequency with which Imai’s digital signals are
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`requested by the client[.]”). Petitioner’s expert Dr. Storer testified to the same. Storer
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`Dep. (Ex. 2002) at 118:6–118:12 (“Q: when you’re talking about capability to track
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`the frequency, you’re talking about the frequency of the digital signal, for example
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`a song is requested, correct, or video? A: Yeah.”). The Board correctly recognized
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`the point in its Institution Decision. See Inst. Dec. at 17 (“Petitioner appears to be
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`relying on the frequency of requests for Imai’s digital signals, not requests for the
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`frames that are created from those signals, in its combination.”).
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`The Petition and Dr. Storer do not point to anything else in Imai or Ishii as
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`satisfying the claimed “access profile.” Nor do they point to anything else that would
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`satisfy “access profile” in the context of other claim limitations. See ’535 cl. 1
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`(“determining a parameter or attribute of at least a portion of a data block . . .
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`selecting an access profile . . . based upon the determined parameter or attribute”).
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`Nor do they propose any other Ishii-Imai combination (much less show motivation
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`to combine) where the “access profile” is something else.
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`Thus, regardless of Board’s construction for “access profile,” Petitioner’s
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`theory remains the same. Petitioner asserts that access frequency digital signals in
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`15
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`the proposed Imai-Ishii combination is the claimed “access profile.” And for the
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`reasons discussed above, Petitioner’s theory fails.
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`In reply, Petitioner attempts to offer a new argument for why Ishii satisfies
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`“access profile” under Patent Owner’s construction. See Reply at 7–11. Although
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`the Board need not delve into this argument in rejecting Petitioner’s theory, it fails
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`for several independent reasons. First, it is new attorney argument that is missing
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`from either the Petition or Dr. Storer’s declaration. See Wasica Finance GMBH v.
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`Continental Auto. Systems, 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather than
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`explaining how its original petition was correct, Continental’s subsequent arguments
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`amount to an entirely new theory of prima facie obviousness absent from the
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`petition. Shifting arguments in this fashion is foreclosed by statute, our precedent,
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`and Board guidelines.”) (internal citations omitted).
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`Second, Petitioner asserts that Patent Owner’s construction is “broader” than
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`Petitioner’s construction and that Patent Owner’s construction includes “data type.”
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`See Reply at 7–10. Neither are correct. Although Patent Owner’s construction is
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`different from Petitioner’s construction, Patent Owner never asserted it is broader or
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`includes Petitioner’s construction. Nor has Patent Owner argued that its construction
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`necessarily encompasses data type. Patent Owner merely explained that “an access
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`profile may comprise a data type” if, in a particular system, it satisfies the limitations
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`of Patent Owner’s construction. POR at 14 (emphasis added). Neither Patent Owner,
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`16
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`Petitioner, or the Board in IPR2019-00209 includes “data type” in the construction
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`for access profile. To the extent Petitioner wants to argue that data type alone is an
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`access profile, it waived that argument by failing to propose a construction or offer
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`opinions or evidence under that construction.
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`Third, Ishii’s use of “file type” cannot be the claimed “access profile.” The
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`Petition is absolutely clear that Ishii’s file type is the claimed “parameter or
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`attribute”—not the access profile. See Pet. at 28 (“Thus, Ishii’s use of a “file type”
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`and “number of accesses” (which are each an “attribute or parameter”) of a file to
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`select an “access frequency” (which is an “access profile”)[.]). The “parameter or
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`attribute” and “access profile” must be different because the access profile is selected
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`based on the determined attribute or parameter. Ishii’s file type cannot be both.
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`Further, Petitioner offers no theory for why and how a POSITA would be
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`motivated to combine Ishii’s use of file type into the proposed Imai-Ishii
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`combination. This is especially necessary because Imai already describes selecting
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`encoder based on properties of the audio data block, such as whether it contains
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`voice or instrument sounds. Imai at [102]. There is no showing that Ishii’s use of file
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`type, such as “whether it is text data or binary data,” would be applicable to Imai’s
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`audio system. And Petitioner has never pointed to anything in Imai as satisfying the
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`claimed “access profile.” See Pet. at 27–28.
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`17
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`VI. Conclusion
`For the reasons above, the Board should find that Petitioner has not met its
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`burden to prove that claims 1–14 of the ’535 patent are unpatentable and should find
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`the claims patentable over the single instituted ground.
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`Dated: July 5, 2019
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`/s/ Neil A. Rubin
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`Respectfully submitted,
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`Neil A. Rubin (Reg. No. 67,030)
`Kent Shum (Reg. No. No. 61,117)
`Philip X. Wang (Reg. No. 74,621)
`Reza Mirzaie (Reg. No. 69,138)
`C. Jay Chung (Reg. No. 71,007)
`Attorneys for Patent Owner
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`nrubin@raklaw.com
`kshum@raklaw.com
`pwang@raklaw.com
`rmirzaie@raklaw.com
`jchung@raklaw.com
`rak_realtimedata@raklaw.com
`
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`18
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`CERTIFICATION REGARDING WORD COUNT
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`Pursuant to 37 C.F.R. §42.24(d), Patent Owner certifies that there are 4,420
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`words in the paper excluding the portions exempted under 37 C.F.R. §42.24(a)(1).
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`Dated: July 5, 2019
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`
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`/s/ Neil A. Rubin
`
`Neil A. Rubin (Reg. No. 67,030)
`Kent Shum (Reg. No. No. 61,117)
`Philip X. Wang (Reg. No. 74,621)
`Reza Mirzaie (Reg. No. 69,138)
`C. Jay Chung (Reg. No. 71,007)
`Attorneys for Patent Owner
`
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`nrubin@raklaw.com
`kshum@raklaw.com
`pwang@raklaw.com
`rmirzaie@raklaw.com
`jchung@raklaw.com
`rak_realtimedata@raklaw.com
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`IPR2018-01169 Sur-reply
`U.S. Patent No. 8,934,535
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on July
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`5, 2019, by filing this document through the Patent Trial and Appeal Board End to
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`End system as well as delivering a copy via electronic mail upon the following
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`attorneys of record for the Petitioner:
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