Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 22
` Filed: February 4, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01187
`Patent 9,769,477 B2
`_______________
`
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571.272.7822
`
`
`Paper No. 22
` Filed: February 4, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01187
`Patent 9,769,477 B2
`_______________
`
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`Netflix, Inc. (“Petitioner”) filed a Petition1 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”). Paper 4 (“Pet.”). Realtime Adaptive
`Streaming LLC (“Patent Owner”) filed a preliminary response. Paper 19
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless . . . there is
`a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” After considering the
`Petition, the Preliminary Response, and associated evidence, we conclude
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`showing the unpatentability of at least one claim of the ’477 patent. Thus, we
`authorize institution of an inter partes review of claims 1–6, 9–14, 20–22,
`and 25–27 of the ’477 patent.
`B. Related Proceedings
`Petitioner informs us of multiple pending district court proceedings
`involving the ’477 patent, such 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
`
`
`1 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 Petitioner in this proceeding.
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`terminated prior to the issuance of a decision on institution. IPR2018-01413,
`Paper 10.
`C. The ’477 Patent
`The ’477 patent was filed on October 6, 2015, and is titled “Video
`Data Compression Systems.” Ex. 1001, Title. It describes systems and
`methods directed to a “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 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.
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`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
`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.
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`D. 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
`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
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`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.
`
`E. The Alleged Grounds of Unpatentability and Evidence of Record
`The information presented in the Petition sets forth proposed grounds
`of unpatentability of claims 1–6, 9–14, 20–22, and 25–27 of the ’477 patent
`under 35 U.S.C. § 103 as follows (see Pet. 3):2
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Imai3
`
`Pauls
`
`§ 103
`
`1, 3–5, 12–14
`
`§ 103
`
`1, 3–6, 9–14
`
`Imai and Pauls4
`
`§ 103
`
`1, 3–6, 9–14
`
`
`2 Petitioner supports its challenge with the Declaration of James A. Storer,
`Ph.D. (“Dr. Storer”). Ex. 1003.
`3 Japanese Patent Application Publication No. H11331305, published Nov.
`30, 1999 (Ex. 1005, “Imai”).
`4 European Patent Application Publication No. EP0905939A2, published
`Mar. 31, 1999 (Ex. 1007, “Pauls”).
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`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Imai, Pauls, and Chao5
`
`§ 103
`
`2, 11, 20–22, 25–27
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, we currently 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.6 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (upholding the use of the broadest reasonable interpretation standard
`in an inter partes review). Claim terms generally are 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). To rebut this presumption by acting as a
`lexicographer, the patentee must give the term a particular meaning in the
`specification with “reasonable clarity, deliberateness, and precision.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Limitations, however, are not
`
`
`5 International PCT Patent Application Publication No. WO 98/40842,
`published Sept. 17, 1998 (Ex. 1016, “Chao”).
`6 The revised claim construction standard for interpreting claims in inter
`partes review proceedings as set forth in the final rule published October 11,
`2018 does not apply to this proceeding because the new “rule is effective on
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
`or after the effective date.” Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt.
`42).
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`to be read from the specification into the claims. In re Van Geuns, 988 F.2d
`1181, 1184 (Fed. Cir. 1993). In addition, the Board may not “construe claims
`during [an inter partes review] so broadly that its constructions are
`unreasonable under general claim construction principles.” Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Only terms that
`are in controversy need to be construed, and then 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 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 either term, and states
`that the terms do not require construction in order to resolved the parties’
`dispute. Prelim. Resp. 6.
`We agree with Patent Owner and 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 proposed
`constructions of the claims during trial. A final determination as to claim
`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
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`Owner’s Response, Petitioner’s Reply, or otherwise during trial, as permitted
`by our rules.
`B. Principles of Law
`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).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is unpatentable.”
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
`(citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to
`identify “with particularity . . . the evidence that supports the grounds for the
`challenge to each claim”)). This burden of persuasion never shifts to Patent
`Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes
`review). 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).
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`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 preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`that Petitioner would prevail in establishing that one of the challenged claims
`is unpatentable. Additionally, the Supreme Court held that a decision to
`institute under 35 U.S.C. § 314(b) may not institute review on less than all
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1355–56 (2018). Moreover, in accordance with USPTO Guidance, “if the
`PTAB institutes a trial, the PTAB will institute on all challenges raised in the
`petition.” See Guidance on the Impact of SAS on AIA Trial Proceedings
`(April 26, 2018) (available at https://www.uspto.gov/patents-application-
`process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial)
`(“USPTO Guidance”).
`C. 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).
`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
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`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.
`At this stage of the proceeding, Patent Owner does not contest
`Petitioner’s definition of a person of ordinary skill in the art. See generally
`Prelim. Resp.
`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, for purposes of this Decision we adopt and apply Petitioner’s
`definition of a person of ordinary skill in the art. Specifically, 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.” Pet. 6.
`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.
`Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 6–25. For
`reasons that follow, we determine Petitioner has demonstrated a reasonable
`likelihood of demonstrating that the challenged claims would have been
`obvious under 35 U.S.C. § 103 in view of Imai.
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`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
`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
`
`
`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, Preliminary
`Response, and this Decision are made to Exhibit 1005.
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`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 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
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`As shown above in Figure 16, the audio signal is encoded into coded date by
`encoders 531–53N and store 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.
`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
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`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 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.
`At this stage of the proceeding and based on the record before us, we
`are persuaded Petitioner has shown adequately for purposes of institution that
`Imai’s disclosure of “a plurality of coding methods corresponding to the
`encoders 531 to 53N” where encoders 531 to 53N use “different coding
`methods from each other” satisfies the challenged claim limitation.
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`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 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).
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`
`Petitioner further argues 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 better match the
`incoming data stream to the throughput of the communication channel. Id. at
`22 (citing Ex. 1003 ¶ 143).
`Petitioner then argues 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 contends Petitioner fails to specific which encoder of
`Imai is the “first encoder” and which one is the “second encoder” as required
`by the claim so Petitioner’s challenge is inadequate. Prelim. Resp. 9–10.
`Patent Owner further contends Petitioner fails to explain how Imai teaches a
`“first asymmetric data compression encoder” configured to compress data “at
`
`17
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`a higher data compression rate” than the “second asymmetric data
`compression encoder.” Id. at 11–21. According to Patent Owner, the term
`“configured to” means that the “first encoder” must, by design, compress at a
`higher rate than the “second encoder.” Id. at 12 (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.”). Patent Owner then argues that 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 and the invention would not function if the relationship was
`reversed. Id. at 14. 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. (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. Patent
`Owner concludes that the mere possibility that Imai may have encoders with
`different compression rates fails to meet the required “configured to”
`limitation. Id. at 17–18.
`Patent Owner further contends that the Petition fails to show Imai
`teaches compression rates (i.e., speed of compression measured by input data
`compressed per unit of time). Prelim. Resp. 18–19. According to Patent
`
`18
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`Owner, the cited teachings do not pertain to the encoders’ “compression rate”
`and fails to show the use of encoders with varying compression rates. Id. at
`20–21. Patent Owner further asserts that the Petition points to no evidence of
`Imai teaching lowering the output rate by modifying the speed of
`compression, as Claim 1 requires or offering any reason why a person of
`ordinary skill in the art would solve the problem of a slow network by
`varying the compression rate as opposed to the compression ratio. Id. at 22.
`Patent Owner argues that the Petition’s suggested approach of modifying the
`speed of compression would be ineffectual at best and counterproductive at
`worst in view of Imai’s solution of increasing the degree of compression. Id.
`at 23.
`
`At this stage of the proceeding, we are not persuaded by Patent
`Owner’s arguments because Petitioner has identified Imai’s teachings
`regarding encoders 531 to 53N that are specifically “constructed” to encode a
`signal use “different coding methods from each other.” See Pet. 20–22;
`Ex. 1005 ¶ 67. We are satisfied by the Petition’s citations to these encoders
`and Imai’s teachings regarding the function of encoders 531 to 53N that would
`render one of them a “first encoder” and another one a “second encoder” are
`required by the claim. See Ex. 1005 ¶¶ 67–69. Imai specifically discloses
`that the encoders are constructed to encode the audio signal with different
`coding methods from each other, thus, the different rates of encoding would
`not be happenstance. Id. ¶ 67. Imai then discloses a plurality of coding
`methods with different compression speeds, such as PCM, ADPCM, layers 1,
`2, 3, of MPEG, ATRAC, ATRAC2, and HVXC. Id. Imai also teaches that
`selection instructing unit 55 decides the appropriate coding methods
`corresponding to encoders 531 to 53N, and instructs encoding selecting circuit
`
`19
`
`
`
`IPR2018-01187
`Patent 9,769,477 B2
`
`56 to select the decided coding method. Id. ¶ 70. We also find Petitioner’s
`rationale for selecting different encoders in Imai with higher and lower data
`compression rates to better match the transmission rate of the communication
`channel (see Pet. 22) to be adequate for institution. Accordingly, at this stage
`of the proceeding and based on the record before us, we are satisfied
`Petitioner has shown adequately that Imai teaches a “first encoder” that is
`“configured to”
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