Trials@uspto.gov
`571.272.7822
`
`
`Paper 39
`Date: January 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC., and COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-011871
`Patent 9,769,477 B2
`_______________
`
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`1 Comcast Cable Communications, LLC, which filed a petition in IPR2019-
`00786, has been joined as a party to this proceeding.
`
`
`571.272.7822
`
`
`Paper 39
`Date: January 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC., and COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-011871
`Patent 9,769,477 B2
`_______________
`
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`1 Comcast Cable Communications, LLC, which filed a petition in IPR2019-
`00786, has been joined as a party to this proceeding.
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine Petitioner has shown by a
`preponderance of the evidence that claims 1–6, 9–14, 20–22, and 25–27 of
`U.S. Patent No. 9,769,477 B2 are unpatentable.
`I. INTRODUCTION
`A. Procedural History
`Netflix, Inc. (“Petitioner”) filed a Petition2 (Paper 4, “Pet.”)
`
`requesting an inter partes review of claims 1–6, 9–14, 20–22, and 25–27 of
`U.S. Patent No. 9,769,477 B2 (Ex. 1001, “the ’477 patent”). Realtime
`Adaptive Streaming LLC (“Patent Owner”) timely filed a Preliminary
`Response (Paper 19, “Prelim. Resp.”). Pursuant to 35 U.S.C. § 314(a), we
`instituted an inter partes review of all challenged claims on all proposed
`grounds of unpatentability. See Paper 22 (“Dec. to Inst.”), 37.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 26, “PO Resp.”), to which Petitioner filed a Reply (Paper 28,
`“Reply”). Patent Owner then filed a Sur-Reply (Paper 33, “PO Sur-Reply”).
`An oral argument was held on October 15, 2019. A transcript of the
`oral argument is included in the record. Paper 38 (“Tr.”).
`
`
`2 Amazon.com Inc. and Hulu, LLC were part of the Petition originally. 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 original Petitioner in this
`proceeding. Comcast Cable Communications, LLC, which filed a petition in
`IPR2019-00786, has been joined as a party to this proceeding. See Paper 32.
`2
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`
`B. Real Parties-in-Interest
`Petitioner certifies that itself and Netflix Streaming Services, Inc. are
`real parties-in-interest. Pet. 67. Additionally, joined Petitioner, Comcast
`Cable Communications, LLC, certifies that itself and Comcast Corporation
`are real parties-in-interest. See IPR2019-00786, Paper 1, 67.
`C. Related Matters
`Petitioner informs us of multiple pending district court proceedings
`involving the ’477 patent, some of which involve Petitioner. Pet. 67–69.
`Patent Owner informs us of two pending inter partes review petitions
`challenging the ’477 patent, IPR2018-01413 and IPR2018-01630. Paper 15,
`1 (Patent Owner’s Mandatory Notices). We note IPR2018-01413 was
`terminated prior to the issuance of a decision on institution. IPR2018-
`01413, Paper 10.
`
`D. The ’477 Patent
`The ’477 patent was filed on October 6, 2015, and is titled “Video
`Data Compression Systems.” Ex. 1001, code (54). The ’477 patent issued
`on September 19, 2017. Id. at code (45).
`1. Written Description
`The specification is directed to systems and methods 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, 7:66–
`8:3, 9:27–31. The ’477 patent states that “dynamic modification of
`compression system parameters so as to provide an optimal balance between
`execution speed of the algorithm (compression rate) and the resulting
`compression ratio, is highly desirable.” Id. at 1:64–67. The ’477 patent also
`3
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`states that it seeks to “provide[] a desired balance between execution speed
`(rate of compression) and efficiency (compression ratio).” Id. at 8:24–27.
`For example, where the speed of the encoder causes a “bottleneck” because
`“the compression system cannot maintain the required or requested data
`rates,” “then the controller will command the data compression system to
`utilize a compression routine providing faster compression . . . so as to
`mitigate or eliminate the bottleneck.” Id. at 14:14–24. The ’477 patent
`discloses that it can resolve “bottlenecks” in the throughput of a system by
`switching between different compression algorithms applied to data. Id. at
`10:3–8.
`One embodiment of the ’477 patent is shown in Figure 2, reproduced
`below.
`
`
`
`4
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`
`
`Figure 2, above, illustrates a method for providing bandwidth
`sensitive data compression. Id. at 13:25–27. The data compression system
`is initialized during a boot-up process after a computer is powered on and a
`default compression/decompression routine is initiated (step 20). Id.
`at 13:31–34. According to the ’477 patent, the default algorithm comprises
`an asymmetrical algorithm, because asymmetric algorithms provide “a high
`compression ratio (to effectively increase the storage capacity of the hard
`disk) and fast data access (to effectively increase the retrieval rate from the
`hard disk).” Id. at 13:35–45. According to the ’477 patent, depending on
`the access profile, it “is preferable to utilize an asymmetrical algorithm that
`5
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`provides a slow compression routine and a fast decompression routine so as
`to provide an increase in the overall system performance as compared to
`performance that would be obtained using a symmetrical algorithm.” Id. at
`12:23–28. The ’477 patent notes that symmetric routines “compris[e] a fast
`compression routine.” Id. at 14:40–43. In one embodiment, the ’477 patent
`discloses a controller “tracks and monitors the throughput . . . of the data
`compression system 12.” Id. at 10:54–57. When the throughput of the
`system falls below a predetermined threshold, the system generates control
`signals to enable/disable different compression algorithms. Id. at 10:55–58.
`2. Illustrative Claims
`As noted above, Petitioner challenges claims 1–6, 9–14, 20–22,
`and 25–27 with claims 1 and 20 being independent. Independent claims 1
`and 22 are illustrative of the challenged claims, and are reproduced below:
`1. A system, comprising:
`a plurality of different asymmetric data compression encoders,
`wherein each asymmetric data compression encoder of the
`plurality of different asymmetric data compression encoders
`is configured to utilize one or more data compression
`algorithms, and
`wherein a first asymmetric data compression encoder of the
`plurality of different asymmetric data compression encoders
`is configured to compress data blocks containing video or
`image data at a higher data compression rate than a second
`asymmetric data compression encoder of the plurality of
`different asymmetric data compression encoders; and
`one or more processors configured to:
`determine one or more data parameters, at least one of the
`determined one or more data parameters relating to a
`throughput of a communications channel measured in
`bits per second; and
`select one or more asymmetric data compression encoders
`from among the plurality of different asymmetric data
`6
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`
`compression encoders based upon, at least in part, the
`determined one or more data parameters.
`Ex. 1001, 20:57–21:13.
`20. A system, comprising:
`a plurality of video data compression encoders;
`wherein at least one of the plurality of video data compression
`encoders is configured to utilize an asymmetric data
`compression algorithm, and
`wherein at least one of the plurality of video data compression
`encoders is configured to utilize an arithmetic data
`compression algorithm,
`wherein a first video data compression encoder of the plurality
`of video data compression encoders is configured to
`compress at a higher compression ratio than a second data
`compression encoder of the plurality of data compression
`encoders; and
`one or more processors configured to:
`determine one or more data parameters, at least one of the
`determined one or more data parameters relating to a
`throughput of a communications channel; and
`select one or more video data compression encoders from
`among the plurality of video data compression encoders
`based upon, at least in part, the determined one or more
`data parameters.
`Id. at 22:20–42.
`
`
`
`7
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`
`E. Evidence of Record and Asserted Challenges to Patentability
`Petitioner asserts the following grounds of unpatentability:
`Claims Challenged
`35 U.S.C. §3
`Reference(s)/Basis
`1, 3–5, 12–14
`103
`Imai4
`1, 3–6, 9–14
`103
`Pauls5
`1, 3–6, 9–14
`103
`Imai, Pauls
`2, 11, 20–22, 25–27
`103
`Imai, Pauls, Chao6
`Pet. 3.
`Petitioner submits (i) the Declaration of James A. Storer, Ph.D.
`(“Dr. Storer”) in Support of Petition for Inter Partes Review (Ex. 1003) and
`(ii) the Declaration of Sylvia D. Hall-Ellis, Ph.D (“Dr. Hall-Ellis”) (Ex.
`1023) regarding the public availability of certain prior art references. Patent
`Owner submits the Declaration of Kenneth A. Zeger, Ph.D. (“Dr. Zeger”) in
`Support of Patent Owner’s Response (Ex. 2002).
`
`
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’477
`patent issued from an application filed after March 16, 2013, we apply the
`AIA versions of the statutory bases for unpatentability.
`4 Japanese Patent Application Publication No. H11331305, published Nov.
`30, 1999 (Ex. 1005, “Imai”).
`5 European Patent Application Publication No. EP0905939A2, published
`Mar. 31, 1999 (Ex. 1007, “Pauls”).
`6 International PCT Patent Application Publication No. WO 98/40842,
`published Sept. 17, 1998 (Ex. 1016, “Chao”).
`8
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`
`II. ANALYSIS
`A. Legal Standards
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
`City, 383 U.S. 1, 17–18 (1966). “[I]t is error to reach a conclusion of
`obviousness until all [the Graham] factors are considered.” Apple v.
`Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc)
`(citations omitted). “This requirement is in recognition of the fact that each
`of the Graham factors helps inform the ultimate obviousness determination.”
`Id.
`
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`9
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`inter partes review). Furthermore, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this final stage, we determine whether a
`preponderance of the evidence of record shows that the challenged claims
`would have been obvious over the cited prior art.
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary
`skill in the art is a hypothetical person who is presumed to have known the
`relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573,
`1579 (Fed. Cir. 1995). The level of ordinary skill in the art may be reflected
`by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001). Factors that may be considered in determining the level of
`ordinary skill in the art include, but are not limited to, the types of problems
`encountered in the art, the sophistication of the technology, and educational
`level of active workers in the field. GPAC, 57 F.3d at 1579. In a given case,
`one or more factors may predominate. Id. Generally, it is easier to establish
`obviousness under a higher level of ordinary skill in the art. Innovention
`Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A
`10
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`less sophisticated level of skill generally favors a determination of
`nonobviousness . . . while a higher level of skill favors the reverse.”).
`Petitioner argues that a person of ordinary skill in the art relevant to
`the ’477 patent 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.” Pet. 6. Petitioner relies on the
`Declaration of Dr. Storer to support its contentions. Dr. Storer proffers the
`same level of skill as that argued by Petitioner but also states that “[a] person
`with less education but more relevant practical experience may also meet
`this standard.” Ex. 1003 ¶ 65.
`Patent Owner does not specifically contest Petitioner’s definition of a
`person of ordinary skill in the art. See generally PO Resp. Dr. Zeger states,
`“I do not disagree with those views [of Dr. Storer], except to add that a
`qualified [person of ordinary skill in the art] would additionally be trained in
`evaluating both the costs and benefits of a design choice.” Ex. 2002 ¶ 24.
`Dr. Zeger further states:
`I would consider anyone who does not recognize those realities
`or who forms design motivations because a particular
`combination of known elements or knowledge in the field is
`possible to not be a [person of ordinary skill in the art], regardless
`of that person’s education, experience, or technical knowledge.
`Likewise, a [person of ordinary skill in the art] in this field would
`not form design motivations because a design may provide some
`benefit without consideration of the relevance of the benefit in a
`specific context, or the costs of the design choice. The ordinarily
`
`
`
`11
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`
`skilled artisan in this field is not impulsive. That person is
`deliberative and considered.
`Id. ¶ 25.
`Based on our review of the ’477 patent, the types of problems and
`solutions described in the ’477 patent and cited prior art, and the testimony
`of Dr. Storer and Dr. Zeger, we find that a person of ordinary skill in the art
`at the time of the claimed invention 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 that such a person would have
`“a master’s degree in electrical engineering, computer science, or a similar
`field with a specialization in data compression.” Our analysis would not
`differ, however, if we adopted Patent Owner’s or Dr. Zeger’s definition.
`C. Claim Construction
`For petitions filed before November 13, 2018, we interpret the claims
`of an unexpired patent that will not expire before issuance of a final written
`decision using the broadest reasonable interpretation in light of the
`specification. See 37 C.F.R. § 42.100(b) (2017); Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016); see also Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11,
`2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
`Under that standard, claim terms are presumed to be given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
`must be set forth with reasonable clarity, deliberateness, and precision. In re
`
`
`
`12
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Limitations, however, are not
`to be read from the specification into the claims. In re Van Geuns, 988 F.2d
`1181, 1184 (Fed. Cir. 1993). Only terms that are in controversy need to be
`construed, and then only to the extent necessary to resolve the controversy.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context
`of an inter partes review).
`Petitioner proposes to construe “asymmetric data compression
`encoders” as “an encoder(s) configured to utilize a compression algorithm in
`which the execution time for the compression and decompression routines
`differ significantly.” Pet. 7. Petitioner further proposes to construe “data
`block” as “a unit of data comprising more than one bit.” Id. at 8. Patent
`Owner has not provided proposed constructions for these terms, and states
`that the terms do not require construction in order to resolve the parties’
`dispute. PO Resp. 7. We agree with Patent Owner and determine that an
`explicit construction of these claim terms is not necessary for the purposes
`of our analysis.
`Nevertheless, although neither party proposes an express construction
`of the term “configured to,” it appears throughout the claims and its meaning
`is central to the application of the prior art to the claims. We discuss its
`interpretation below, in context.
`D. Alleged Obviousness of Claims 1, 3–5, and 12–14 of the ’477 Patent in
`View of Imai
`Petitioner contends claims 1, 3–5, and 12–14 of the ’477 patent are
`unpatentable under 35 U.S.C. § 103 as obvious in view of Imai. Pet. 15–35.
`
`
`
`13
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`Patent Owner disputes Petitioner’s contentions. PO Resp. 7–36. For
`reasons that follow, we determine Petitioner has established by a
`preponderance of the evidence that claims 1, 3–5, and 12–14 of the ’477
`patent are unpatentable under 35 U.S.C. § 103 as obvious in view of Imai.
`1. Overview of Imai (Ex. 1005)
`Imai is a Japanese Patent Application7 titled “Transmitting apparatus
`and transmitting method, receiving apparatus and receiving method, as well
`as providing medium.” Ex. 1005, Title. 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. According to Imai, real time
`encoding, transmitting, and decoding can present several problems though.
`Id. ¶¶ 3–5. 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. Id. ¶ 3. The hardware capabilities or decoding
`method of the receiving device can also slow down real time decoding of the
`received signals. Id. ¶ 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. Id. ¶ 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.
`Id. ¶ 67. The factors that can affect which coding method is used include the
`
`
`7 The original application is in Japanese and provided in the record as
`Exhibit 1004. A certified English language translation of Imai is provided in
`the record as Exhibit 1005. All citations to Imai in the Petition, Patent
`Owner Response, and this Decision are made to Exhibit 1005.
`14
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`processing capability of the receiving device (see id. at Fig. 9, ¶¶ 88–99),
`transmission rate of the network (see id. ¶¶ 145–166), and the audio content
`of the audio signals (see id. ¶¶ 101–102). For example, Imai describes a
`situation where the audio signal is predominantly voice, in which case
`HVXC may be appropriately used as the coding method. Id. ¶ 102. On the
`other hand, if the audio signal is predominantly instrument sounds, then
`ATRAC may be appropriately used as the coding method. Id.
`One embodiment of a coding unit in Imai is illustrated in Figure 5,
`reproduced below.
`
`
`As shown above in Figure 5, audio signals are encoded using a chosen
`encoder 531-53N. Id. ¶ 66, Fig. 5. According to Imai, the encoders are
`constructed to encode the audio signal with different coding methods from
`each other. Id. ¶ 67. Selection instructing unit 55 then decides the
`appropriate coding methods corresponding to encoders 531 to 53N, and
`instructs encoding selecting circuit 56 to select the decided coding method.
`Id. ¶ 70. Imai discloses that switch 52 may be changed midway through a
`sequence of continued encoding of the audio signal, so one portion of the
`
`
`
`15
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`audio signal is encoded with one coding method while another part of the
`audio signal is encoded with another coding method. Id. ¶ 72. Imai further
`discloses that header inserting circuit 54 adds, to the coded data of each
`frame, an ID indicating the coding method selected to encode the frame. Id.
`The coded data added with the ID in header inserting circuit 54 is supplied
`to multiplexing unit 42 and transmitted to a client. Id. ¶ 74.
`Another embodiment of a coding unit in Imai is illustrated in
`Figure 16, reproduced below. See, e.g., id. ¶¶ 165–171.
`
`
`As shown above in Figure 16, the audio signal is encoded into coded
`date by encoders 531–53N and stored in storage 911–91N. Id. ¶ 167.
`According to Imai, when a request for an audio signal is issued from client
`terminal 3, encoding selecting circuit 56 controls read-out unit 92 in
`accordance with an instruction based on the encoding schedule provided
`from selection instructing unit 55. Id. ¶ 169.
`
`
`
`16
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`
`2. Analysis of Cited Art as Applied to Independent Claim 1
`a. “a plurality of different asymmetric data compression encoders,
`wherein each asymmetric data compression encoder of the
`plurality of different asymmetric data compression encoders is
`configured to utilize one or more data compression algorithms”
`Independent claim 1 recites “a plurality of different asymmetric data
`compression encoders, wherein each asymmetric data compression encoder
`of the plurality of different asymmetric data compression encoders is
`configured to utilize one or more data compression algorithms.” Ex. 1001,
`20:58–63.
`Petitioner contends Imai teaches this limitation, because Imai
`discloses “a plurality of coding methods corresponding to the encoders 531
`to 53N” and “[the] encoders 531 to 53N employ ‘different coding methods
`from each other’ and are thus different encoders.” Pet. 16 (citing Ex. 1005
`¶ 67; Ex. 1003 ¶ 113). According to Petitioner, “Imai’s encoders comprise a
`plurality of different asymmetric data compression encoders that utilize data
`compression algorithms” because the cited “MPEG layers 1, 2, and 3, and
`the ATRAC and ATRAC 2 compression algorithms are each different
`asymmetric data compression algorithms that are each used by Imai’s
`encoders.” Id. at 17 (citing Ex. 1005 ¶¶ 67, 70; Ex. 1003 ¶¶ 117–118).
`Petitioner further contends that Imai’s teaching is equally applicable
`to video. Id. at 19 (citing Ex. 1005 ¶ 172). According to Petitioner, a person
`of ordinary skill in the art would have known to use Imai’s teachings for
`video data because video is an “asymmetric application” that realizes the
`same benefits from compression with asymmetric encoders and algorithms
`as other media, such as audio. Id. at 19 (citing Ex. 1003 ¶¶ 122–123;
`Ex. 1012, 5). Petitioner notes that asymmetric application for
`17
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`compression/decompression was known in the art because the MPEG family
`of audio compression algorithms, discussed in Imai, uses a slow, complex
`algorithm for compression and a simpler algorithm for decompression. Id.
`(citing Ex. 1003 ¶ 120; Ex. 1009, 81; Ex. 1010, 7).
`Patent Owner does not address specifically this limitation of
`independent claim 1, but nonetheless the burden remains on Petitioner to
`demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
`Based on the entire record before us, including Imai’s teaching that
`encoders 531 to 53N use different coding methods from each other and are
`thus different encoders (see Ex. 1005 ¶¶ 67, 70), we determine Petitioner has
`shown by a preponderance of the evidence that Imai’s disclosure satisfies the
`challenged claim limitation.
`b. “first asymmetric data compression encoder” “configured
`to compress data blocks containing video or image data at a
`higher data compression rate than” a “second asymmetric
`data compression encoder”
`Claim 1 recites “wherein a first asymmetric data compression encoder
`of the plurality of different asymmetric data compression encoders is
`configured to compress data blocks containing video or image data at a
`higher data compression rate than a second asymmetric data compression
`encoder of the plurality of different asymmetric data compression encoders.”
`Ex. 1001, 20:64–21:3.
`Petitioner contends Imai renders this limitation obvious because Imai
`teaches using a plurality of asymmetric data compression encoders 531
`to 53N. Pet. 20. Petitioner argues that a person of ordinary skill in the art
`would have found it obvious that “a first encoder of a plurality of
`
`
`
`18
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`asymmetric data compression encoders in Imai would compress data blocks
`at a higher data compression rate than a second encoder for several reasons.”
`Id. Petitioner notes that the ’477 patent uses the term “data compression
`rate” to refer to the execution or algorithmic speed of a compression
`encoder. Id. at 20–21 (citing Ex. 1001, 2:63–67, 8:10–18, 14:11–38;
`Ex. 1003 ¶ 124). Based on the disclosure of the ’477 patent, Petitioner then
`argues that Imai meets the claim limitation because it includes asymmetric
`compression encoders that have different execution speeds, and compares
`and contrasts different asymmetric data compression encoders in terms of
`their “compression rate,” and identifies several asymmetric data
`compression algorithms that “provide[] a high compression rate,” referring
`to MPEG layer 3 and ATRAC 2 as “example[s].” Id. at 21 (citing Ex. 1005
`¶ 68; Ex. 1003 ¶¶ 138–139).
`Petitioner further contends that Imai teaches a first encoder using an
`asymmetric compression algorithm (MPEG layer 3) configured to compress
`data at a higher compression rate than a second encoder using another
`asymmetric algorithm (ATRAC 2). Pet. 22 (citing Ex. 1005 ¶¶ 67–69).
`Petitioner notes that “Imai explains that ATRAC 2 can encode at various
`compression rates (e.g., “64 Kbps, 32K bps, 24 Kbps”).” Id. (citing
`Ex. 1005 ¶ 69; Ex. 1003 ¶¶ 139, 142). According to Petitioner, a person of
`ordinary skill in the art “would have appreciated from Imai’s various
`teachings that the different asymmetric data compression encoders have
`different data compression rates, with some encoders having higher rates
`than others.” Id. (citing Ex. 1003 ¶¶ 138–139). And Petitioner asserts a
`person of ordinary skill in the art “would have also found it obvious to select
`among different encoders having higher and lower data compression rates to
`19
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`better match the incoming data stream to the throughput of the
`communication channel.” Id. at 22 (citing Ex. 1003 ¶ 143).
`Petitioner then contends that although Imai’s examples are directed to
`audio data, “it would have been obvious to perform the step using data
`blocks containing video” because Imai discloses that “the present invention
`is also applicable to other signals, such as video signals, other types of time-
`series signals, and signals being not in time series.” Id. at 24 (citing
`Ex. 1005 ¶ 172; Ex. 1003 ¶ 146).
`
`Patent Owner contests Petitioner’s reliance on Imai to meet the
`limitations of claim 1 for several reasons. Patent Owner first contends
`Petitioner fails to specify which encoder of Imai is the “first encoder” and
`which is the “second encoder,” as required by the claim, so Petitioner’s
`challenge is inadequate. PO Resp. 10–16. According to Patent Owner, the
`“Petition must identify a specific first encoder that is configured to compress
`at a higher rate than a specific second encoder.” Id. at 10. Patent Owner
`argues Petitioner “fail[s] to specify a particular ‘first’ encoder and a ‘second’
`encoder, as the claims require.” Id. at 11 (citing Ex. 2002 ¶ 41).
`Patent Owner then argues that the term “configured to” means that the
`“first encoder” must, by design, compress at a higher rate than the “second
`encoder.” Id. at 18–19 (citing Aspex Eyewear, Inc. v. Marchon Eyewear,
`Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (construing “adapted to” in the
`narrower sense of “configured to,” “made to,” or “designed to,” rather than
`in the “broader sense” of “capable of” or “suitable for.”); Sur-Reply 4–6.
`According to Patent Owner, the “configured to” limitation cannot be met by
`an accidental difference in compression rates because the invention relies on
`the predictable relationship between the compression rates of two encoders
`20
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`and the invention would not function if the relationship was reversed. PO
`Resp. 20. Patent Owner cites to the ’477 patent to support its position,
`because the specification describes switching from an encoder having a
`relatively slow compression rate to one having a “faster rate of compression”
`when the “throughput falls below a predetermined threshold” “so as to
`increase the throughput.” Id. at 21 (citing Ex. 1001, 8:12–18). Patent
`Owner argues that “[i]f the arrangement or configuration of the encoders
`were reversed, the opposite would occur: the system would switch from the
`relatively fast encoder to the relatively slow encoder, reducing the
`throughput and exacerbating the bottleneck it was seeking to alleviate.” Id.;
`Sur-Reply 6. Patent Owner concludes that the mere possibility that Imai
`may have encoders with different compression rates fails to meet the
`required “configured to” limitation. PO Resp. 23–24; Sur-Reply 6–7.
`Patent Owner further contends Petitioner fails to explain how Imai
`teaches a “first asymmetric data compression encoder” configured to
`compress data
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
