Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 15
`Entered: December 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`
`Case IPR2018-01170
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`KHAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 15
`Entered: December 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`
`Case IPR2018-01170
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`KHAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2018-01170
`Patent 8,934,535 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Netflix, Inc.1 (“Petitioner”) filed a Petition (Paper 4, “Pet.”) to
`
`institute an inter partes review of claims 15–30 (the “challenged claims”) of
`
`U.S. Patent No. 8,934,535 B2 (Exhibit 1001, “the ’535 Patent”). Realtime
`
`Adaptive Streaming, LLC (“Patent Owner”) has not filed a Preliminary
`
`Response. We have authority under 37 C.F.R. § 42.4(a) and 35 U.S.C.
`
`§ 314, which provides that an inter partes review may not be instituted
`
`unless the information presented in the Petition “shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” Having considered the
`
`arguments and the associated evidence presented in the Petition, for the
`
`reasons described below, we institute inter partes review of all the
`
`challenged claims on all the grounds set forth in the Petition.
`
`B. Related Proceedings
`
`Petitioner informs us that the ʼ535 Patent is involved in the following
`
`litigations:
`
` Realtime Data, LLC v. Echostar Corp., No. 6:17-cv-84 (E.D. Tex.)
`
` Realtime Data LLC d/b/a IXO v. DISH Network Corporation et al.,
`6:17-cv-00421 (E.D. Tex.)
`
` Realtime Adaptive Streaming, LLC v. Sling TV, LLC, No. 1:17-cv-
`2097 (D. Colo.)
`
` Realtime Adaptive Streaming, LLC v. Amazon.com, Inc., No. 6:17-cv-
`549 (E.D. Tex.)
`
`
`1 The Board has granted Amazon.com Inc. and Hulu, LLC’s Joint Motion to
`Terminate Inter Partes Reviews as to Amazon.com, Inc. and Hulu, LLC.
`Paper 14. Thus, Netflix is the sole remaining Petitioner in this proceeding.
`
`2
`
`
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`IPR2018-01170
`Patent 8,934,535 B2
`
` Realtime Adaptive Streaming LLC v. EchoStar Technologies, LLC et
`al., No. 6:17-cv-00567 (E.D. Tex.).
`
` Realtime Adaptive Streaming, LLC v. Hulu, LLC, No. 2:17-cv-7611
`(C.D. Cal.)
`
` Realtime Adaptive Streaming, LLC v. Cisco Systems, Inc., No. 6:17-
`cv-591 (E.D. Tex.)
`
` Realtime Adaptive Streaming, LLC v. Brightcove, Inc., No. 1:17-cv-
`1519 (D. Del.)
`
` Realtime Adaptive Streaming, LLC v. Haivision Network Video, Inc.,
`No. 1:17-cv-1520 (D. Del.)
`
` Realtime Adaptive Streaming, LLC v. Polycom, Inc., No. 1:17-cv-
`2692 (D. Colo.)
`
` Realtime Adaptive Streaming, LLC v. Netflix, Inc., No. 1:17-cv-1692
`(D. Del.)
`
` Realtime Adaptive Streaming, LLC v. Sony Elecs., Inc., No. 1:17-cv-
`1693 (D. Del.)
`
` Realtime Adaptive Streaming, LLC v. Apple, Inc., No. 1:17-cv-2869
`(D. Colo.)
`
` Realtime Adaptive Streaming, LLC v. Adobe Sys. Inc., No. 1:18-cv-
`10355 (D. Mass.)
`
` Realtime Adaptive Streaming, LLC v. Samsung Elec. Co., Ltd., No.
`6:18-cv-00113 (E.D. Tex.)
`
` Realtime Adaptive Streaming LLC v. Wowza Media Systems LLC, No.
`1:18-cv-00927 (D. Colo.)
`
` Realtime Adaptive Streaming LLC v. Google LLC et al, No. 2:18-cv-
`03629 (D.C. Cal.)
`
` Realtime Adaptive Streaming LLC v. Avaya Inc., No. 1:18-cv-01046
`(D. Colo.)
`
` Realtime Adaptive Streaming LLC v. Broadcom Corporation et al.,
`No. 1:18-cv-01048 (D. Colo.)
`
` Realtime Adaptive Streaming LLC v. LG Electronics Inc. et al, No.
`6:18-cv-00215 (E.D. Tex.)
`
`3
`
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`IPR2018-01170
`Patent 8,934,535 B2
`
` Realtime Adaptive Streaming LLC v. Advanced Micro Devices, Inc.,
`No. 1:18-cv-01173 (D. Colo.)
`
` Realtime Adaptive Streaming LLC v. Intel Corporation, No. 1:18-cv-
`01175 (D. Colo.)
`
` Realtime Adaptive Streaming LLC v. Mitel Networks, Inc., No. 1:18-
`cv-01177 (D. Colo.)
`
`Pet. 61–63.
`
`Petitioner further informs us that the ʼ535 Patent is involved in the
`
`following inter partes review proceedings:
`
` Unified Patents Inc. v. Realtime Adaptive Streaming LLC, IPR2018-
`00883
`
`
`
`C. The ʼ535 Patent
`
`The ʼ535 Patent relates generally to compressing and decompressing
`
`data based on an actual or expected throughput (bandwidth) of a system.
`
`Ex. 1001, 1:21–25. The ʼ535 Patent explains that data compression
`
`algorithms can have varied performance characteristics. Ex. 1001, 1:32–35.
`
`For example, with a typical dictionary-based compression algorithm, such as
`
`Lempel-Ziv, the size of the dictionary can affect the performance of the
`
`algorithm. Ex. 1001, 1:35–38. A large dictionary may yield very good
`
`compression ratios, but may make the algorithm take a long time to execute.
`
`On the other hand, a smaller dictionary would yield a faster compression
`
`time but at the expense of lower compression ratio. Ex. 1001, 1:38–44.
`
`Thus, one challenge in employing data compression is selecting the
`
`appropriate algorithm from a variety of algorithms for a given application or
`
`system. The desired balance between speed and efficiency is an important
`
`factor in determining which algorithm to select for data compression. A
`
`system that provides dynamic modification of compression system
`
`4
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`IPR2018-01170
`Patent 8,934,535 B2
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`parameters to provide an optimal balance between speed and compression
`
`ratio is highly desirable. Ex. 1001, 1:56–60.
`
`The ʼ535 Patent describes two categories of compression
`
`algorithms—asymmetrical and symmetrical. An asymmetrical data
`
`compression algorithm is “one in which the execution time for the
`
`compression and decompression routines differ significantly.” Ex. 1001,
`
`9:64–66. Thus, in an asymmetrical algorithm, either the compression time is
`
`fast with the decompression time being slow, or vice versa. An example of
`
`an asymmetric algorithm is Lempel-Ziv. Ex. 1001, 10:2–4. A symmetric
`
`compression algorithm, on the other hand, is “one in which the execution
`
`time for the compression and the decompression routines are substantially
`
`similar. Examples of symmetrical algorithms include table-based
`
`compression schemes such as Huffman.” Ex. 1001, 10:5–9. The total
`
`execution time of the compression and decompression portions of
`
`asymmetrical algorithms is typically higher than the total time for
`
`symmetrical algorithms. But an asymmetric algorithm typically achieves
`
`higher compression ratios. Ex. 1001, 10:10–14.
`
`The invention described in the ʼ535 Patent is directed to a system and
`
`method for compressing and decompressing based on the actual or expected
`
`throughput (bandwidth) of a system employing data compression and a
`
`technique of optimizing based upon planned, expected, predicted, or actual
`
`usage. Ex. 1001, 7:51–55. A bandwidth sensitive data compression routine
`
`may be selected based on access profiles that enable the controller to
`
`determine a compression routine associated with a data type of the data to be
`
`compressed. Ex. 1001, 8:4–8. The access profiles comprise information
`
`that enables the controller to select a suitable compression algorithm that
`
`5
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`IPR2018-01170
`Patent 8,934,535 B2
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`provides the desired balance between speed and compression ratio. Ex.
`
`1001, 8:8–13.
`
`These access profiles may take into account the overall throughput of
`
`a system as one factor in deciding whether to use an asymmetric or
`
`symmetric algorithm. Ex. 1001, 11:25–29. Another factor the access profile
`
`may track is the type of data to be processed. Ex. 1001, 11:29–31. For
`
`example, different data types (the type may be determined by a file
`
`extension of the data) may be associated with different compression
`
`algorithms. Ex. 1001, 11:35–40.
`
`The ʼ535 Patent illustrates this concept with three categories of access
`
`profiles. In a first category, the access profile of a particular data type may
`
`specify that the data may be decompressed significantly more times than it is
`
`compressed. This is typical with operating systems, applications, and
`
`websites. Ex. 1001, 12:1–12. In such a situation it may be suitable to utilize
`
`an asymmetric algorithm that provides slow compression routine and a fast
`
`decompression routine. Ex. 1001, 12:14–20. Thus, the compression ratio
`
`achieved by using an asymmetric algorithm with slow compression will be
`
`higher than if a symmetric algorithm was used. Ex. 1001, 12:20–24.
`
`A second category is one in which the data would be compressed
`
`significantly more times than decompressed. Ex. 1001, 12:25–27. This is
`
`typical for automatically updating an inventory database. Here, an
`
`asymmetric algorithm with a fast compression routine and a slow
`
`decompression routine would be most appropriate. Ex. 1001, 12:27–35.
`
`A third category is one in which the data is accessed with a similar
`
`number of reads and writes, and thus would be compressed and
`
`decompressed approximately the same number of times. Ex. 1001, 12:36–
`
`6
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`
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`IPR2018-01170
`Patent 8,934,535 B2
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`39. This is typical of most user-generated data such as documents and
`
`spreadsheets. Ex. 1001, 12:40–41. In this case, a symmetric algorithm that
`
`provides relatively fast compression and decompression would be
`
`preferable. Ex. 1001, 12:41–43.
`
`In this way, the ʼ535 Patent describes a system that automatically
`
`selects an appropriate compression algorithm to optimize system throughput
`
`based on the type of data being installed or stored. Ex. 1001, 14:27–39.
`
`
`
`D. Illustrative Claim
`
`Of the challenged claims, claims 15 and 27 are independent. Claims
`
`16–26 and 30 depend directly or indirectly from claim 15 and claims 28 and
`
`29 depend directly or indirectly from claim 27.
`
`Claim 15, reproduced below, is illustrative:
`
`15. A method, comprising:
`
`determining a parameter of at least a portion of a data
`block;
`
`selecting one or more asymmetric compressors from
`among a plurality of compressors based upon the determined
`parameter or attribute;
`
`compressing the at least the portion of the data block
`with the selected one or more asymmetric compressors to
`provide one or more compressed data blocks; and
`
`storing at least a portion of the one or more compressed
`data blocks.
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 15–30 of the ʼ535 Patent on the following
`
`grounds:
`
`7
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`Basis Challenged Claims Reference(s)
`
`§ 103 15–23 and 30
`
`Imai2
`
`§ 103 24–29
`
`Imai and Ishii3
`
`
`
`F. Level of Ordinary Skill
`
`Petitioner proposes that a person of ordinary skill
`
`would have had a bachelor’s degree in electrical engineering,
`computer science, or a similar field with at least two years of
`experience in data compression or a person with a master’s
`degree in electrical engineering, computer science, or a similar
`field with a specialization in data compression. Ex. 1003 at 65.
`A person with less education but more relevant practical
`experience may also meet this standard.
`
`Pet. 8. For purposes of this Decision, we adopt Petitioner’s proposed level
`
`of ordinary skill.
`
`G. Claim Interpretation
`
`In an inter partes review, we construe claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)4;
`
`
`2 Imai, Japanese Patent Application Publication No. H11331305, published
`Nov. 30, 1999. (Ex. 1004). A Certified English translation of Exhibit 1004
`was submitted as Exhibit 1005. Citations to “Imai” herein refer to the
`translation.
`
`3 Ishii, U.S. Patent No. 5,675,789, Oct. 7, 1997 (Exhibit 1007, “Ishii”).
`
`4 The revised claim construction standard for interpreting claims in inter
`partes review proceedings as set forth in the final rule published October 11,
`2018 does not apply to this proceeding, because the new “rule is effective on
`November 13, 2018 and applies to all IPR, PGR, and CBM petitions filed on
`or after the effective date.” Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`
`8
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`IPR2018-01170
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`
`(upholding the use of the broadest reasonable interpretation standard).
`
`“Under a broadest reasonable interpretation, words of the claim must be
`
`given their plain meaning, unless such meaning is inconsistent with the
`
`specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
`
`F.3d 1056, 1062 (Fed. Cir. 2016). Only terms that are in controversy need to
`
`be construed, and only to the extent necessary to resolve the controversy.
`
`See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`
`2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`
`Cir. 1999).
`
`Petitioner proposes to construe “asymmetric compressors” and
`
`“compressors using asymmetric data compression” as “a compression
`
`algorithm in which the execution time for the compression and
`
`decompression routines differ significantly.” Pet. 8–9. Petitioner further
`
`proposes to construe “data block” as “a unit of data comprising more than
`
`one bit.” Pet. 9. Patent Owner has not provided proposed constructions for
`
`either term.
`
`We determine that an explicit construction of the claims is not
`
`necessary for the purposes of determining whether there is a reasonable
`
`likelihood that the Petitioner would prevail with respect to at least one of the
`
`claims challenged in the Petition. This determination does not preclude the
`
`parties from arguing their proposed constructions of the claims during trial.
`
`Indeed, the parties are hereby given notice that claim construction, in
`
`general, is an issue to be addressed at trial. A final determination as to claim
`
`
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R.
`pt. 42).
`
`9
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`IPR2018-01170
`Patent 8,934,535 B2
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`construction will be made at the close of the proceeding, after any hearing,
`
`based on all the evidence of record. The parties are expected to assert all
`
`their claim construction arguments and evidence in the Petition, Patent
`
`Owner’s Response, Petitioner’s Reply, or otherwise during trial, as
`
`permitted by our rules.
`
`II. DISCUSSION
`
`A. Obviousness over Imai
`
`1. Overview of Imai
`
`Imai is related to encoding and transmitting digital signals to the
`
`receiving side where they are decoded and reproduced in real time.
`
`Ex. 1005 ¶ 1. Real time encoding, transmitting, and decoding can present
`
`several problems though. For example, the transmission rate of the network
`
`can vary and drop below the data rate of the coded data which leads to the
`
`encoded digital signals arriving too late. Ex. 1005 ¶ 3. The hardware
`
`capabilities or decoding method of the receiving device can also slow down
`
`real time decoding of the received signals. Ex. 1005 ¶ 4. To address these
`
`problems, Imai includes a plurality of coding methods and selects the
`
`appropriate coding method to encode the digital signals, or part of the digital
`
`signals, based on certain relevant factors. Ex. 1005 ¶ 7. The digital signals
`
`Imai is particularly concerned with are audio signals, and the plurality of
`
`coding methods can include PCM, ADPCM, layers 1, 2, 3, of MPEG,
`
`ATRAC, ATRAC2, and HVXC. See Ex. 1005 ¶ 67. The factors that can
`
`affect which coding method is used include the processing capability of the
`
`receiving device (see Ex. 1005, Fig. 9, ¶¶ 88–99), transmission rate of the
`
`network (see Ex. 1005 ¶¶ 145–166), and the audio content of the audio
`
`signals (see Ex. 1005 ¶¶ 101–102). For example, Imai describes a situation
`
`10
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`where the audio signal is predominantly voice, in which case HVXC may be
`
`appropriately used as the coding method. On the other hand, if the audio
`
`signal is predominantly instrument sounds, then ATRAC may be
`
`appropriately used as the coding method. Ex. 1005 ¶ 102.
`
`Imai discloses at least two embodiments of its invention. The first,
`
`illustrated in Figure 5, is an embodiment where audio signals are encoded
`
`(compressed) using a chosen encoder and transmitted to the client. See, e.g.,
`
`Ex. 1005 ¶¶ 65–74. This embodiment is referred to by the Petitioner as the
`
`“compress and transmit embodiment.” See, e.g., Pet. 47. The second,
`
`illustrated in Figure 16, is an embodiment where the audio signal is encoded
`
`using each of the available encoding methods and the resulting output is
`
`stored on the server. See, e.g., Ex. 1005 ¶¶ 165–171. This embodiment is
`
`referred to by Petitioner as the “compress and store embodiment.” See, e.g.,
`
`Pet. 48.
`
`2. Independent Claim 15
`
`Claim 15 recites “[a] method comprising: determining a parameter of
`
`at least a portion of a data block; selecting one or more asymmetric
`
`compressors from among a plurality of compressors based upon the
`
`determined parameter or attribute; compressing the at least the portion of the
`
`data block with the selected one or more asymmetric compressors to provide
`
`one or more compressed data blocks.” Petitioner argues Imai determines
`
`parameters or attributes of a data block by “consider[ing] the level of the
`
`voice as compared to a level of the instrument sounds in a portion of a data
`
`block[.]” Pet. 20 (citing Ex. 1005 ¶ 102). Petitioner also argues Imai
`
`teaches selecting an asymmetric compressor based upon the determined
`
`parameter or attribute. This is because, according to Petitioner, Imai teaches
`
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`that some encoding methods, such as HVXC are more suitable for voice,
`
`while others, such as ATRAC are more suitable for instrument sounds.
`
`Pet. 25 (citing Ex. ¶ 102). At least MPEG layers 1, 2, and 3, ATRAC and
`
`ATRAC2 are asymmetric compressors, according to Petitioner. Pet. 22–23
`
`(citing Ex. 1003 ¶¶ 117–122). Finally, Petitioner argues Imai teaches
`
`compressing at least a portion of the data block with the selected
`
`compressor. In Imai, the “entire frame is compressed by one of the
`
`compressors . . . including each portion of the data block,” according to
`
`Petitioner. Pet. 26–27 (citing Ex. 1005 ¶ 70).
`
`Claim 15 recites “storing at least a portion of the one or more
`
`compressed data blocks.” Petitioner argues Imai renders this limitation
`
`obvious for several reasons. Pet. 27–35. First, Petitioner argues it would
`
`have been obvious to store compressed data at the server. See Pet. 31–35.
`
`Petitioner points out that Imai discloses a compress and store embodiment
`
`where the audio signals are encoded using every one of the available coding
`
`methods (not just one selected coding method) and stored at the server.
`
`Pet. 27–28 (citing Ex. 1005 ¶¶ 165–168). Thus, Petitioner points out that
`
`Imai’s “real-time transmission system can be improved by storing the
`
`compressed data blocks.” Pet. 28 (citing Ex. 1005 ¶¶ 165–170). Although
`
`in this embodiment, the audio signals are compressed using every coding
`
`method, Petitioner argues it would have been obvious to modify this
`
`embodiment to narrow the universe of compression algorithms to those that
`
`are most appropriate. Pet. 31. For example, only the appropriate
`
`compression method for voice or for instruments could be used depending
`
`on the content of the audio signal. Pet. 31. Thus, Petitioner argues, it would
`
`12
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`have been obvious to store the output of only one or more selected encoders
`
`based on parameters of the data block. Pet. 32 (citing Ex. 1003 ¶ 136).
`
`Second, Petitioner argues it also would have been obvious to store the
`
`compressed data at the client. Petitioner argues that Imai describes its
`
`clients as having storage devices such as RAM 23. Pet. 29 (citing Ex. 1005
`
`Fig. 3, ¶¶ 54–55). According to Petitioner, “[a] POSITA would have
`
`understood that the client process of receiving and decoding compressed
`
`data would typically involve storing the compressed data blocks in a storage
`
`medium, such as RAM 23, at the client.” Pet. 29 (citing Ex. 1003 ¶ 131).
`
`Petitioner points out that Imai discloses yet another embodiment where the
`
`audio signals are encoded using every one of the available coding methods,
`
`but instead of all being stored at the server, they are transmitted to the client
`
`and stored at the client for later access “when real-time reproduction is not
`
`required.” Pet. 30 (citing Ex. 1005 ¶ 171). However, as Petitioner indicates,
`
`this embodiment teaches transmitting the compressed output from “all” of
`
`Imai’s compression algorithms. Pet. 30. According to Petitioner, “[i]t
`
`would have been obvious to a POSITA to select the most appropriate
`
`encoder based on the parameters or attributes of the data and to compress
`
`and store that data at the client to facilitate non-real time reproduction at the
`
`client.” Pet. 30 (citing Ex. 1003 ¶ 132).
`
`Based on our review of the current record, we are persuaded Imai
`
`teaches the limitations of claim 15. In particular, we are persuaded that the
`
`content of the audio signals, namely whether they have predominantly voice
`
`or predominantly instrument sounds, is a parameter or attribute of a data
`
`block. By selecting ATRAC as the coding/compression method when the
`
`audio signals have predominantly instrument sounds, Imai teaches or
`
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`suggests selecting an asymmetric compressors from among a plurality of
`
`compressors based upon the determined parameter or attribute of the audio
`
`signals. See Ex. 1003 ¶ 119 (citing Ex. 1008 (explaining that “most of the
`
`audio codecs rely on the so-called asymmetric encoding principle” and that
`
`ATRAC architecture has the benefit of “asymmetric complexity”)).
`
`We agree with Petitioner it would have been obvious to store the
`
`audio signals compressed with an asymmetric compressor at the server. In
`
`Imai’s “compress and store embodiment” the server has a storage means for
`
`storing compressed audio signals. Ex. 1005 ¶¶ 165–170. Petitioner
`
`articulates a reason with rational underpinning for incorporating such storage
`
`means with Imai’s compress and transmit embodiment that stems directly
`
`from Imai itself—namely, to make the processing simpler by already having
`
`the encoded signals ready when a subsequent request for the audio signal is
`
`received. Pet. 34. Thus, in the modified combination, an audio signal that
`
`has been compressed with an appropriate asymmetric compression algorithm
`
`as disclosed in Imai’s “compress and transmit embodiment” (e.g., an audio
`
`signal with predominantly instruments sounds being compressed using
`
`ATRAC) would be stored at the server, using storage means disclosed in the
`
`“compress and store embodiment,” for later retrieval when another request
`
`for that audio signal is received. We agree that such a combination teaches
`
`or suggests the limitations of claim 15.
`
`Accordingly, at this stage of the proceeding, we find Petitioner has
`
`demonstrated a reasonable likelihood that it will succeed in showing claim
`
`15 is unpatentable over Imai.
`
`
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`14
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`3. Dependent Claims 16–23 and 30
`
`Claims 16–23 and 30 depend either directly or indirectly from claim
`
`15. Based on a review of the current record at this stage of the proceeding,
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`Petitioner appears to have made a sufficient showing that Imai teaches or
`
`suggests the limitations of these dependent claims by providing an analysis
`
`of each limitation and a comparison of the limitations to the teachings of
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`Imai. See Pet. 35–47. We note, Patent Owner has not provided a
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`preliminary response to these arguments at this stage of the proceeding.
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`B. Obviousness over Imai and Ishii
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`1. Overview of Ishii
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`Ishii is related to a file compression processor that records image and
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`text data to a recording media after data compression. Ex. 1007, 1:10–15.
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`Ishii’s file compression processor comprises a file status monitor that keeps
`
`track of the current available capacity on the file unit and an upper limit
`
`threshold value of available capacity that is always to be ensured. Ex. 1007,
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`Abstract, 1:56–60. When the current available file capacity is greater than
`
`the threshold value, files are not compressed and, in some embodiments,
`
`certain files with high access frequency are decompressed. Ex. 1007, 6:65–
`
`7:3. When the current available file capacity is below the threshold the
`
`system searches for files with a lower access frequency and compresses
`
`them. An appropriate data compression method is selected based on access
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`frequency and file type. Ex. 1007, 5:43–50, 5:60–65. For example, a
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`compression method with shorter compression and decompression times is
`
`selected for files that are accessed frequently and a compression method
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`with a higher compression ratio (and typically longer compression times) is
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`selected for files with lower access frequency. Ex. 1007, 6:12–17.
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`2. Claims 24–29
`
`Petitioner argues claims 24–29 are unpatentable over Imai combined
`
`with Ishii. Pet. 47–60. Claims 24–29 add limitations that take the number
`
`of “reads” of data block, or compressed data block, into account when
`
`compressing, recompressing, or decompressing the data blocks. Petitioner
`
`relies on Ishii for teaching that the number of reads of a data block can be
`
`used as a factor, along with the other factors disclosed in Imai, to select an
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`appropriate compression algorithm.
`
`Petitioner argues a person of ordinary skill in the art would have
`
`combined Imai with Ishii because both are directed to systems that select a
`
`compression algorithm from a plurality of algorithms, including asymmetric
`
`algorithms, based on a variety of factors. Pet. 48–49. According to
`
`Petitioner, the combination of Ishii with Imai “would improve upon Imai’s
`
`system by adding the capability to track the frequency with which Imai’s
`
`digital signals are requested by the client as taught by Ishii. The
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`combination would further allow for modification of Imai’s compression
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`algorithm selection logic to consider the frequency of access as taught by
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`Ishii.” Pet. 47–48. Petitioner argues that a person of ordinary skill would
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`have been motivated to combine Ishii with Imai because “the combination
`
`involves combining prior art elements (the selection criteria in Imai with the
`
`selection criteria of Ishii) in similar devices (data compression /
`
`decompression systems) to create an improved system with predictable
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`results (a data compression system that better optimizes compression
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`algorithm selection).” Pet. 48 (citing Ex. 1003 ¶ 178).
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`In Imai, the factors considered in determining which compression
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`algorithm to select includes “the content of the data, the data type, the
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`processing ability of the client, and the throughput of a communications
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`channel.” Pet. 49 (citing Ex. 1005 ¶¶ 88–102, 149–160). In Ishii, the factors
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`considered “include a ‘data attribute (whether it is text data or binary data)’
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`and “access frequency.” Pet. 49. According to Petitioner, “[t]he combined
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`system yields the predictable result of having a more complete set of
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`compression algorithm selection criteria that will improve the system’s
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`ability to choose the most suitable algorithm for compressing a given data
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`set.” Pet. 49 (citing Ex. 1003 ¶¶ 179–180).
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`Based on a review of the current record we find Petitioner has
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`“articulated reasoning with some rational underpinning” for combining
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`known elements in the manner required by the claim. In re Magnum Oil
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`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
`
`burden of proving obviousness . . . [t]he petitioner must . . . articulate
`
`specific reasoning, based on evidence of record, to support the legal
`
`conclusion of obviousness.” (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 418 (2007)). Petitioner explains that Imai and Ishii both are directed to
`
`systems that select a compression algorithm from a plurality of algorithms,
`
`including asymmetric algorithms, based on a variety of factors. Pet. 48–49.
`
`Petitioner also explains that Ishii includes frequency of access as one factor
`
`when selecting a compression algorithm and that this factor could be added
`
`to Imai’s other factors by one or skill in the art. Petitioner provides
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`motivation for doing so by indicating that the modified system would have a
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`more complete set of selection criteria resulting in an improved ability to
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`select the most suitable compression algorithm. Pet. 49.
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`Further Petitioner appears to have made a sufficient showing that the
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`combination of Imai and Ishii teaches or suggests the limitations of claims
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`24–29 by providing an analysis of each limitation and a comparison of the
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`limitations to the teachings of Imai and Ishii. See Pet. 47–60. Patent Owner
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`has not provided a response to these arguments at this stage of the
`
`proceeding.
`
`CONCLUSION
`
`For the foregoing reasons, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that it will succeed in showing claims
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`15–30 are unpatentable under 35 U.S.C. § 103. The Supreme Court has held
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`that a final written decision under 35 U.S.C. § 318(a) must decide the
`
`patentability of all claims challenged in the petition. SAS Institute, Inc. v.
`
`Iancu, 138 S.Ct. 1348 (2018). Accordingly, we institute an inter partes
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`review of all challenged claims under all grounds set forth in the Petition.
`
`Our determination at this stage of the proceeding is based on the
`
`evidentiary record currently before us. This decision to institute trial is not a
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`final decision as to patentability of any claim for which inter partes review
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`has been instituted. Our final decision will be based on the full record
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`developed during trial.
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`For the reasons given, it is:
`
`ORDER
`
`ORDERED that an inter partes review is instituted on all challenged
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`claims under all challenged grounds; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ʼ535 Patent is hereby instituted commencing on the
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`entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.
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`19
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`IPR2018-01170
`Patent 8,934,535 B2
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`PETITIONER:
`
`Harper Batts
`hbatts@sheppardmullin.com
`
`Eliot Williams
`Eliot.williams@bakerbotts.com
`
`Jennifer Nall
`Jennifer.nall@bakerbotts.com
`
`Christopher Ponder
`cponder@sheppardmullin.com
`
`
`PATENT OWNER:
`
`Neil Rubin
`nrubin@raklaw.com
`
`Kent Shum
`kshum@raklaw.com
`
`
`
`
`
`20
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`
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