`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`SLING TV L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.
`Petitioners
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________________
`
`Case IPR2018-01342
`Patent 8,934,535 B2
`____________________
`
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`

`

`
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`Introduction ................................................................................................... 1
`The ’535 Patent (Ex. 1001) ........................................................................... 2
`A. Overview of the ’535 Patent ............................................................... 2
`B.
`Claims of ’535 Patent .......................................................................... 5
`C.
`Prosecution of ’535 Patent .................................................................. 7
`Person of Ordinary Skill in The Art .............................................................. 8
`III.
`IV. Claim Construction ........................................................................................ 8
`A.
`“data block” ......................................................................................... 9
`B.
`“parameter” ......................................................................................... 9
`C.
`“asymmetric compressors” / “asymmetric data compression” ......... 11
`D.
`“access profile” ................................................................................. 12
`1. Patent Owner’s proposed construction is correct. .......................................... 13
`2. Petitioner’s proposed construction is incorrect. ............................................. 16
`3. The Board’s preliminary construction from IPR2018-01169 is incorrect. .... 18
`V. Overview of Prior Art .................................................................................. 20
`A. Dvir (Ex. 1004) ................................................................................. 20
`B.
`Ishii (Ex. 1005) .................................................................................. 22
`VI. Ground 1: The Petition’s Dvir-Based Anticipation Theory Fails. .............. 24
`The Petition’s reliance on at least two different embodiments of
`A.
`Dvir fails to meet its burden to show anticipation. ........................... 24
`1. Under Federal Circuit law, an anticipatory reference must disclose all
`elements arranged in the same way as the claim. ......................................... 24
`2. The Petition’s anticipation theory relies on at least two different embodiments
`of Dvir. .......................................................................................................... 25
`3. The Petition fails to prove that Dvir discloses all limitations arranged in the
`same way as the claim. .................................................................................. 27
`The Petition fails to show “determining a parameter or attribute
`of at least a portion of a data block having audio or video data” ...... 29
`1. The Petition fails to show that Dvir discloses a “data block” as required by
`the claim. ....................................................................................................... 29
`
`B.
`
`
`
`i
`
`

`

`C.
`
`D.
`
`B.
`
`B.
`
`
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`
`2. The Petition fails to show that Dvir discloses “determining a parameter or
`attribute of at least a portion of a data block” as required by the claim. ....... 32
`The Petition fails to show “selecting an access profile from
`among a plurality of access profiles based upon the determined
`parameter or attribute.” ..................................................................... 34
`1. Under the correct construction of “access profile,” the Petitioner’s
`anticipation theory fails. ................................................................................ 34
`2. The Petition offers no opinions, evidence, or argument under the Board’s
`preliminary construction of “access profile” from IPR2018-01169. ............ 36
`The Petition fails to show “one or more compressors using
`asymmetric data compression . . .” ................................................... 37
`VII. Ground 2: The Petition’s Dvir-Based Obviousness Theory Fails. .............. 39
`The Petition and Dr. Acton’s obviousness reasoning fails
`A.
`because it incorrectly assumes that Dvir’s compressed video
`would be decompressed far more frequently than it was
`compressed. ....................................................................................... 40
`1. Remote receivers of Dvir’s compressed video would not decompress the
`video more frequently than it was compressed. ............................................ 41
`2. Only one end-user receives each of Dvir’s compressed video transmissions.
` ....................................................................................................................... 42
`3. Dvir incorporates by reference a display monitor that cannot decode a
`received video signal more than once. .......................................................... 44
`Dr. Acton also fails to show that “asymmetric” compression
`would be obvious. ............................................................................. 45
`VIII. Ground 3: The Petition’s Dvir and Ishii Obviousness Theory Fails. .......... 47
`A. Ground 3 fails because Dvir does not anticipate or render
`obvious independent claim 1 of the ’535 patent. .............................. 47
`Ground 3 fails also because there is no motivation to combine
`Dvir and Ishii. .................................................................................... 48
`1. Dvir teaches data compression only for the purpose of transmitting through
`bandwidth limited channels. .......................................................................... 48
`2. Dvir does not teach storage of multimedia data. ............................................ 48
`3. Dvir assumes the multimedia arrives, gets compressed, and transmitted. ..... 49
`4.
`Ishii’s file system compression has nothing to do with Dvir’s teachings. ..... 49
`5.
`Ishii does not teach storage of audio or video data. ....................................... 50
`6.
`Ishii’s system adds computational complexity and storage ........................... 50
`7. Dvir and Ishii have different principles of operation. .................................... 51
`
`
`
`ii
`
`

`

`
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`
`C.
`
`The Petition’s Ground 3 theory for claims 3, 4, and 11 fails for
`additional reasons. ............................................................................. 52
`IX. The Petition is time-barred under § 315(b). ................................................ 54
`X.
`Conclusion ................................................................................................... 54
`
`
`
`
`iii
`
`

`

`
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`
`EXHIBIT LIST
`
`
`
`1003
`1004
`1005
`1006
`1007
`
`1008
`1009
`
`1010
`
`Exhibit No.1 Description
`1001
`U.S. Patent No. 8,934,535 to Fallon (“the ’535 Patent”)
`1002
`Prosecution History of the ’535 Patent (“the Prosecution
`History”)
`Declaration of Dr. Scott Acton
`U.S. Patent No. 6,557,001 (“Dvir”)
`U.S. Patent No. 5,675,789 (“Ishii”)
`U.S. Patent No. 6,216,157 (“Vishwanath”)
`Prosecution History of U.S. Patent No. 8,867,610 to Fallon
`(“the ’610 Patent”)
`U.S. Patent No. 6,195,024 to Fallon (“the ’024 Patent”)
`Realtime Data LLC v. Rackspace US, Inc. et al., Dkt. No. 183,
`Case No. 6-16-cv-00961 (E.D. Tex. June 29, 2016)
`Realtime Data LLC v. Actian Corporation et al., Dkt. No. 362,
`Case No. 6-15-cv-00463 (E.D. Tex. May 8, 2015)
`Infringement Contentions for U.S. Patent No.
`8,934,535 from Realtime Adaptive Streaming LLC v. Sling TV
`L.L.C. et al., Case No. 1:17-cv-02097-RBJ (D. Colo.)
`Realtime Data, LLC d/b/a IXO v. Packeteer Inc., et al., No. 6:08-
`cv-00144 Docket No. 371, p. 59 (E.D. Tex. June 22, 2009)
`Held, G. Data Compression: Techniques and Applications,
`Hardware and Software Considerations, John Wiley & Sons,
`1983
`Fahie, John Jacob (1884). A History of Electric Telegraphy, to the
`Year 1837. E. & F.N. Spon.
`Mag, Lond Mechanics. “Mr. Bain’s Electric Printing Telegraph.”
`Journal of the Franklin Institute, of the State of Pennsylvania, for
`the Promotion of the Mechanic Arts; Devoted to Mechanical and
`Physical Science, Civil Engineering, the Arts and Manufactures,
`and the Recording of American and Other Patent Inventions
`(1828-1851) 8.1 (1844): 61.
`
`1 Exhibits 1001–1025 were submitted with the Petition and labeled “DISH1001” to
`“DISH1022.” Exhibits 2001–2009 were submitted with Patent Owner’s Preliminary
`Response. Exhibits 2010–2016 are submitted with Patent Owner’s Response.
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`
`
`i
`
`

`

`1016
`
`1017
`
`1018
`
`1019
`
`1020
`1021
`
`1022
`1023
`1024
`
`1025
`2001
`
`2002
`2003
`2004
`2005
`
`2006
`2007
`2008
`
`2009
`2010
`2011
`2012
`
`
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`
`Huffman, D. A. (1952). A method for the construction of
`minimum-redundancy codes. Proceedings of the IRE, 40(9),
`1098-1101.
`Shannon, C. E. (1949). Communication theory of secrecy
`systems. Bell Labs Technical Journal, 28(4), 656-715.
`Tekalp, A. M. (1995). Digital video processing. Prentice Hall
`Press.
`Bovik, Alan C. Handbook of image and video processing.
`Academic press, 2009.
`Jim Taylor, DVD Demystified (1998)
`Zhang, Z. L., Wang, Y., Du, D. H. C., & Su, D. (2000). Video
`staging: A proxy-server-based approach to end-to-end video
`delivery over wide-area networks. IEEE/ACM Transactions on
`networking, 8(4), 429-442.
`ISO/IEC 11172-2: 1993
`ISO/IEC 13818-2: 1995
`Gringeri et al., Traffic Shaping, Bandwidth Allocation, and
`Quality Assessment for MPEG Video Distribution over
`Broadband Networks, IEEE Network, (November/December
`1998)
`U.S. Patent No. 6,020,904 (“Clark”)
`Amended Complaint of June 6, 2017, in E.D. Tex. Case No. 17-
`cv-84
`Stipulated Motion in D. Colorado Case No. 17-cv-2097
`Proof of Service of Amended Complaint re: DISH Network LLC
`Proof of Service of Amended Complaint re: Sling TV LLC
`Proof of Service of Amended Complaint re: EchoStar
`Technologies LLC
`Proof of Service of Amended Complaint re: Sling Media LLC
`Defendants' Supplemental Rule 7.1 Disclosure Statement
`Defendants’ Unopposed Application for Extension of Time to
`Answer Complaint
`Defendants’ Invalidity Contentions
`Expert Declaration of Kenneth A. Zeger
`Transcript of Deposition of Scott Acton on May 10, 2019
`Realtime Adaptive Streaming v. Sling, et al., Civil Action No.
`1:17-CV-02097-RBJ, Dkt. 135-1 (D. Colo. Nov. 7, 2018), Expert
`Declaration of Alan Bovik
`
`
`
`ii
`
`

`

`
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`
`Realtime Adaptive Streaming v. Sling, et al., Civil Action No.
`1:17-CV-02097-RBJ, Dkt. 151 (D. Colo. Jan. 11, 2019),
`Markman Order
`U.S. Patent App. Pub. US 2002/0144271 A1 for Appl. No.
`09/197,441 (“Behagen”)
`Transcript of Deposition of Scott Acton on May 10, 2019 in
`IPR2018-01331 on U.S. Patent No. 8,867,610.
`RFC 2435, RTP Payload Format for JPEG-compressed Video,
`October 1998
`
`
`
`iii
`
`2013
`
`2014
`
`2015
`
`2016
`
`
`
`
`
`
`

`

`
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`
`Introduction
`Petitioner Sling TV L.L.C., Sling Media, L.L.C., DISH Network L.L.C.,
`
`
`I.
`
`DISH Technologies L.L.C. (collectively, “Petitioner”) challenges claims 1–6, 8–12,
`
`and 14 of U.S. Patent No. 8,934,535 (Ex. 1001, “’535 patent”). The Petition presents
`
`three grounds of unpatentability (Pet. at 7):
`
`
`
`But as discussed in this Patent Owner’s Response, each of the grounds fail.
`
`The following is a summary of each ground:
`
`• Ground 1: The Petition fails to show that Dvir anticipates claims 1, 2, 9, 10,
`14. The Petition relies on at least two embodiments of Dvir without showing
`that Dvir discloses the ’535 patent limitations arranged or combined in the
`same way as the claim. Further, the Petition fails to show that Dvir discloses
`the limitation “determining a parameter or attribute of at least a portion of a
`data block.” Further, the Petition relies on incorrect constructions of
`“asymmetric” compression and “access profile” and fails to provide any
`evidence or analysis under the correct constructions. Further, Petition fails to
`show that other limitations are disclosed.
`
`• Ground 2: The Petition fails to show that Dvir alone renders obvious claims
`1, 2, 9, 10, 14. The Petition’s Ground 2 theory is limited to its argument that
`“asymmetric” compression would be obvious. But the Petition relies on a
`flawed assumption about video data that is undermined by Dvir itself. Thus,
`the Petition fails to show that “asymmetric” compression would be obvious.
`
`
`
`
`1
`
`

`

`
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`• Ground 3: The Petition fails to show that the combination of Dvir and Ishii
`renders obvious claims 3–6, 8, 11, and 12. A POSITA would not be motivated
`to combine Dvir and Ishii in the way of the claimed invention. Further, even
`if Dvir and Ishii were combined, the Petition fails to show that that the
`combination discloses all limitations of the claims. Further, the Petition fails
`to show that the dependent claims are obvious.
`
`As discussed further below, none of the Petition’s three grounds establish
`
`
`
`invalidity of the challenged claims. The three grounds are all related and rely on Dvir
`
`as the only or primary reference. Because all grounds fail, Petitioner has not met its
`
`burden to show that any challenged claim is invalid.
`
`II. The ’535 Patent (Ex. 1001)2
`A. Overview of the ’535 Patent
`The ’535 patent claims priority to a provisional application filed on February
`
`13, 2001. The ’535 patent addresses specific problems in the field of compressing,
`
`storing, and transmitting digital data. Those problems include: the “compromise
`
`between efficient data storage, access speed, and addressable data space”; “file
`
`systems [that] are not able to randomly access compressed data in an efficient
`
`manner”; “substantial disk fragmentation and slower access times”; optimizing the
`
`“algorithmic efficiency” of the compressors being used; and “Competing
`
`
`2 See Ex. 2010, Declaration of Kenneth A. Zeger (“Zeger Decl.”) ¶¶ 30–42.
`
`
`
`2
`
`

`

`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`requirements of data access bandwidth, data reliability/redundancy, and efficiency
`
`
`
`
`
`of storage space.” ’535 patent at 5:5–10; 6:31–7:45.
`
`The ’535 patent solved these technological problems and others with a novel
`
`technological solution in data compression using a combination of (1) asymmetric
`
`compressors, (2) two or more compressors, and (3) selecting compressors based on
`
`a parameter such as throughput of a communication channel, and (4) access profiles.
`
`The ’535 patent explains that “access profiles comprise information that enables the
`
`controller to select a suitable compression algorithm that provides a desired balance
`
`between execution speed (rate of compression) and efficiency (compression ratio).”
`
`Id. at 8:8–13. It describes that “the overall throughput (bandwidth) . . . is one factor
`
`considered by the controller 11 in deciding whether to use an asymmetrical or
`
`symmetrical compression.” Id. at 11:25-29. The patent also recognized that using an
`
`asymmetrical algorithm may “provide an increase in the overall system
`
`performance” (id. at 12:14-20), where an “asymmetrical” algorithm is defined to be
`
`a compression algorithm “in which the execution time for the compression and
`
`decompression routines differ significantly.” Id. at 9:63-66.
`
`More generally,
`
`the ’535 patent relates
`
`to “data compression and
`
`decompression” and to “compressing and decompressing data based on an actual or
`
`expected throughput (bandwidth) of a system that employs data compression.” ’535
`
`patent at Abstract. The ’535 patent also relates to “the subsequent storage, retrieval,
`
`
`
`3
`
`

`

`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`and management of information in data storage devices utilizing either compression
`
`
`
`
`
`and/or accelerated data storage and retrieval bandwidth.” Id. at 1:26–29.
`
`The ʼ535 patent explains that data compression algorithms can have varied
`
`performance characteristics. Id. at 1:32–35. For example, with a typical dictionary-
`
`based compression algorithm, the size of the dictionary can affect the performance
`
`of the algorithm. Id. at 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 may yield a faster compression time
`
`but at the expense of a lower compression ratio. Id. at 1:38–44. Thus, the patent
`
`recognizes one challenge in employing data compression is selecting the appropriate
`
`algorithm from a variety of algorithms for a given application or system. The patent
`
`also teaches that the desired balance between speed and efficiency is an important
`
`factor in determining which algorithm to select for data compression. The inventors
`
`of the ’535 patent recognized that a system that provides dynamic modification of
`
`compression system parameters to provide an optimal balance between speed and
`
`compression ratio is highly desirable. Id. at 1:56–60.
`
`The ʼ535 patent describes as one example a system 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. Id. at 7:51–55. A bandwidth sensitive data
`
`
`
`4
`
`

`

`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`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. Id. at 8:4–8. The access profiles comprise information that enables
`
`the controller to select a suitable compression algorithm that provides the desired
`
`balance between speed and compression ratio. Id. at 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. Id.
`
`at 11:25–29. An asymmetric algorithm is one in which the execution time for the
`
`compression and decompression routines differ significantly. Id. at 9:64–66.
`
`Another factor the access profile may track is the type of data to be processed. Id. at
`
`11:29–31. For example, different data types may be associated with different
`
`compression algorithms. Id. at 11:35–40.
`
`Through its teachings, the ’535 patent describes a system that selects an
`
`appropriate compression algorithm to optimize system throughput based on the data
`
`being compressed. Id. at 14:27–39.
`
`B. Claims of ’535 Patent
`Independent claim 1 of the ’535 patent recites:
`
`
`
`1. A method, comprising:
`
`[a]
`
`determining a parameter or attribute of at least a portion of a data block
`
`having audio or video data;
`
`
`
`5
`
`

`

`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`selecting an access profile from among a plurality of access profiles
`
`
`
`[b]
`
`based upon the determined parameter or attribute; and
`
`[c]
`
`compressing the at least the portion of the data block with one or more
`
`compressors using asymmetric data compression and information from
`
`the selected access profile to create one or more compressed data
`
`blocks, the information being indicative of the one or more compressors
`
`to apply to the at least the portion of the data block.
`
`Claims 2–6 and 8–12 depend directly or indirectly from independent claim 1.
`
`The only other challenged claim is independent claim 14. Claim 14 recites:
`
`14. A method, comprising:
`
`[a]
`
`[b]
`
`determining a parameter or attribute of at least a portion of a data block;
`
`selecting an access profile from among a plurality of access profiles
`
`based upon the determined parameter or attribute; and
`
`[c]
`
`compressing the at least the portion of the data block with one or more
`
`compressors utilizing information from the selected access profile to
`
`create one or more compressed data blocks, the information being
`
`indicative of the one or more compressors to apply to the at least the
`
`portion of the data block,
`
`[d] wherein the one or more compressors utilize at least one slow compress
`
`encoder and at least one fast decompress decoder, and
`
`
`
`6
`
`

`

`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`[e] wherein compressing the at least the portion of the data block with the
`
`
`
`at
`
`least one slow compress encoder
`
`takes more
`
`time
`
`than
`
`decompressing the at least the portion of the data block with the at least
`
`one fast decompress decoder if the time were measured with the at least
`
`one slow compress encoder and the at least one fast decompress
`
`decoder running individually on a common host system.
`
`C.
`Prosecution of ’535 Patent
`The ’535 patent application was filed on September 20, 2013 claiming priority
`
`to a provisional application filed on February 13, 2001. ’535 Prosecution History
`
`(Ex. 1002) at 1–24. On February 26, 2012, the Examiner issued a non-final office
`
`action rejecting claims in view of U.S. Patent No. 6,215,157 to Vishwanath. Id. at
`
`269–79.
`
`On May 27, 2014, Applicant filed claim amendments to incorporate features
`
`identified by the Examiner as allowable, limiting the claims to the use of
`
`“asymmetric” compression algorithms. Id. at 431–48. On December 10, 2014, the
`
`Examiner issued a notice of allowance and found that the claims as amended were
`
`allowable over the prior art. Id. at 548, 585–589. Thus, the Examiner found that none
`
`of the prior art disclosed the ’535 claims, particularly the limitations requiring
`
`“asymmetric” compression algorithms.
`
`
`
`7
`
`

`

`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`One of the prior art references at issue, Ishii, was considered during
`
`
`
`prosecution of the ’535 patent. Ishii was listed on an Information Disclosure
`
`Statement on pages marked “ALL REFERENCES CONSIDERED EXCEPT
`
`WHERE LINED THROUGH.” Id. at 307. Ishii was not marked through. Id. Ishii
`
`was thus considered by the Examiner.
`
`III. Person of Ordinary Skill in The Art
`Petitioner and its expert, Dr. Acton, propose that a person of ordinary skill in
`
`the art (“POSITA”) “would have at least a bachelor’s degree in electrical
`
`engineering, computer engineering, computer science, or the equivalent, and two to
`
`three years of work experience with data compression, storage, retrieval, processing,
`
`and transmission, or the equivalent.” Ex. 1003, Declaration of Scott Acton (“Acton
`
`Decl.”) ¶ 37. For purposes of this IPR proceeding, Patent Owner adopts Petitioner’s
`
`definition of the level of ordinary skill. See Ex. 2010 Declaration of Kenneth A.
`
`Zeger (“Zeger Decl.”) ¶ 43. Patent Owner further notes that a person with less
`
`education or more experience, or vice versa may also meet this standard.
`
`IV. Claim Construction
`The Board does not construe any claim terms unnecessary to resolve the
`
`parties’ dispute. Shenzhen Liown Electronics Co. v. Disney Enterprises, Inc.,
`
`IPR2015-01656, Paper 7 at 10 (Feb. 8, 2016). Petitioner proposed constructions for
`
`three terms: (1) “data block” (Pet. at 16–17); (2) “parameter” (id. at 17–18); (3)
`
`
`
`8
`
`

`

`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`“asymmetric compressors” / “asymmetric data compression” (id. 18–19); and (4)
`
`
`
`
`
`“access profile” (id. at 19–20).
`
`As an initial matter, Petitioner provides no opinions of how a POSITA would
`
`understand these terms in the context of the ’535 patent. As Dr. Acton confirmed in
`
`deposition, each of these constructions was provided to him from counsel and he
`
`merely applied them. Further, Dr. Acton did not analyze whether the constructions
`
`were correct and offered no opinions that they were correct.3
`
`A.
`
` “data block”
`
`Petitioner asks the Board to construe “data block” as “a single unit of data,
`
`which may range in size from individual bits through complete files or collection of
`
`multiple files.” Pet. at 16–17. For purposes of this IPR, Patent Owner agrees with
`
`this construction. See Zeger Decl. ¶ 48.
`
`B.
`
` “parameter”
`
`Petitioner asks the Board to construe “parameter” as “any recognizable data
`
`token or descriptor.” Pet. at 17–18. Petitioner’s proposed construction is incorrect
`
`because it is unsupported and is not the broadest reasonable interpretation. A
`
`
`3 See, e.g., Ex. 2011, May 10 Deposition of Scott Acton (“Acton Dep.”) at 19:18–
`20:7 (“A: So in terms of claim construction, I was provided claim construction by
`counsel, and that is paragraphs 40 through 44 of this declaration, and that
`construction or those constructions were provided by counsel, and I did my analysis
`under those constructions. Q: Did you perform any analysis of whether those
`constructions are correct? A: No, that wasn’t the job I was asked to do.”).
`
`
`
`9
`
`

`

`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`POSITA would readily understand “parameter” in the context of the ’535 patent and
`
`
`
`
`
`understand that no construction is necessary. See id. ¶¶ 49–52.
`
`The only purported support that Petitioner offers for its construction is that
`
`“The Eastern District of Texas has adopted the construction of a ‘parameter’ to mean
`
`‘any recognizable data token or descriptor.’” Pet. at 17–18 (citing Exhibit 1012,
`
`Realtime v. Packeteer, Markman Order). But the Eastern District’s finding was about
`
`different claims of a different and unrelated patent, U.S. Patent No. 6,604,158.
`
`Specifically, the court construed the phrase “first parameter indicative of a
`
`compression type to be applied” in claim 1 of the ’158 patent to mean “any
`
`recognizable data token or descriptor that indicates whether to apply lossless or lossy
`
`compression.” Ex. 1010 at 59.
`
`The Eastern District’s finding does not support Petitioner’s construction for
`
`several reasons. First and foremost, the finding was about different claims in a
`
`different and unrelated patent. The finding is not instructive about the ’535 patent
`
`claims or even part of the intrinsic record for the ’535 patent. Second, the finding
`
`was about an entire phrase “the first parameter indicative of a compression type to
`
`be applied,” not the term “parameter” itself. Third, the court did not find any
`
`disclaimer and even if it did, it would not operate on the ’535 patent. A POSITA
`
`would not understand that the ’535 patent has any disclaimer or requires any
`
`particular definition, as Petitioner acknowledges. See Pet. at 17 (“The ’535 Patent
`
`
`
`10
`
`

`

`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`specification uses the term ‘parameter’ . . . in various contexts, but does not provide
`
`
`
`
`
`a specific definition.”); see also Zeger Decl. ¶ 51. Fourth, the court did not find that
`
`Petitioner’s construction is the plain and ordinary meaning (or BRI) of “parameter.”
`
`A POSITA would not find that Petitioner’s construction is the plain and ordinary
`
`meaning or the broadest reasonable interpretation. Id. ¶¶ 51–52.
`
`C.
`
` “asymmetric compressors” / “asymmetric data compression”
`
`Petitioner asks the Board to construe “compression algorithms being
`
`asymmetric” as “an algorithm where compression of data and decompression of that
`
`compressed data take different amounts of time.” Pet. at 18–19. This construction is
`
`incorrect because it is unsupported. See Zeger Decl. ¶¶ 53–55.
`
`The ’535 patent provides an express definition of “asymmetric compressors”
`
`/ “asymmetric data compression” As the patent states: “An asymmetrical data
`
`compression algorithm is referred to herein as one in which the execution time for
`
`the compression and decompression routines differ significantly.” ’535 patent at
`
`9:63–67. A POSITA would readily understand that “asymmetrical compressors” /
`
`“asymmetric data compression” means “compressors / data compression” “in which
`
`the execution time for the compression and decompression routines differ
`
`significantly.” Zeger Decl. ¶ 54. In particular, a POSITA would understand that the
`
`phrase “is referred to herein” means that the ’535 patent is providing a definition for
`
`an asymmetrical data compression algorithm. Id.
`
`
`
`11
`
`

`

`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`Indeed, Petitioner submitted an expert declaration on claim construction in
`
`
`
`district court from Dr. Alan Bovik. Dr. Bovik opined on this term in the ’535 patent
`
`and agreed with my construction. As Dr. Bovik stated:
`
`[T]he applicant of the [’535 patent] chose to expressly define the “symmetry”
`or “asymmetry” of an algorithm in terms of run-time. The patent defined an
`asymmetrical compression algorithm as “one in which the execution time for
`the compression and decompression routines differ significantly.” I agree with
`the positions recently taken by Dr. Zeger and Realtime in this litigation that
`the [’535] patent[] provide an express definition of this term.
`
`Ex. 2012 (Declaration of Dr. Bovik) ¶ 32.
`
`Based on the express definition in the ’535 patent, as well as agreement
`
`between both sides’ experts, the District of Colorado adopted the parties’ agreed
`
`construction. See Ex. 2013 (Realtime v. Sling, Markman Order) at 11 (“This is the
`
`sole claim term that the parties agree on the construction”). The court construed an
`
`“asymmetric” compression algorithm as a “compression algorithm in which the
`
`execution time for compression and decompression differ significantly.” Id. at 13.
`
`D.
`
`“access profile”
`
`Petitioner asks the Board to construe “access profile” as “information that
`
`enables a controller to determine a compression routine that is associated with a data
`
`type of the data to be compressed.” Pet. at 19–20. Petitioner’s proposed construction
`
`is incorrect. Instead, the Board should adopt Patent Owner’s proposed construction,
`
`which is: “information that enables the controller to select a suitable compression
`
`
`
`12
`
`

`

`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`algorithm that provides a desired balance between execution speed (rate of
`
`
`
`
`
`compression) and efficiency (compression ratio).” Zeger Decl. ¶¶ 57–77.
`
`1.
`Patent Owner’s proposed construction is correct.
`A POSITA viewing the claims, specification, and prosecution history would
`
`find that the broadest reasonable interpretation of “access profile” is “information
`
`that enables the controller to select a suitable compression algorithm that provides a
`
`desired balance between execution speed (rate of compression) and efficiency
`
`(compression ratio).” Zeger Decl. ¶ 58. This construction comes directly from the
`
`’535 patent. ’535 patent at 8:8–12.
`
`The construction is also consistent with how access profiles are used in the
`
`’535 patent. Zeger Decl. ¶ 59. The patent describes that the system may perform
`
`compression based on the actual or expected throughput (bandwidth) and optimize
`
`usage. Id. at 7:51–55. Further, the system may select an appropriate compression
`
`algorithm to optimize system throughput based on the data being compressed. Id. at
`
`14:27–39. By allowing the controller to select a suitable compression algorithm that
`
`provides a desired balance between compression speed and efficiency, access
`
`profiles allow the system to optimize system throughput.
`
`Patent Owner’s construction is also supported by the claims. Zeger Decl. ¶ 60.
`
`For example, claim 1 of the ’535 patent describes selecting a suitable asymmetric
`
`data compression encoder based on the access profiles. See ’534 patent, cl. 1
`
`
`
`13
`
`

`

`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S RESPONSE
`
`(selecting an access profile . . . compressing the at least the portion of the data block
`
`
`
`
`
`with one or more compressors using asymmetric data compression and information
`
`from the selected access profile . . . the information being indicative of the one or
`
`more compressors to apply to the at least the portion of the data block”). Because
`
`access profiles provide information that enables the controller to select a suitable
`
`compression algorithm based on compression speed and efficiency, it is indicative
`
`of which compres