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`IN THE UNITED STATES PATENT AND TRADEMARK
`OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`CISCO SYSTEMS, INC.
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC
`Patent Owner.
`
`
`
`Case: IPR2018-01384
`U.S. Patent No. 8,934,535
`
`
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1-6,
`8-12, 14-17, 19, 21, 22, AND 24 OF U.S. PATENT NO. 8,934,535
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via PTAB E2E
`
`

`

`
`
`I.
`
`TABLE OF CONTENTS
`
`MANDATORY NOTICES ............................................................................. 1
`A.
`Real Party-In-Interest ............................................................................ 1
`B.
`Related Matters ...................................................................................... 1
`C.
`Lead and Back-Up Counsel ................................................................... 5
`D.
`Service Information ............................................................................... 5
`PETITIONER’S STANDING ......................................................................... 5
`II.
`III. RELIEF REQUESTED ................................................................................... 6
`IV. SUMMARY OF REASONS FOR RELIEF REQUESTED ........................... 6
`V.
`SUMMARY OF THE ’535 PATENT ............................................................. 8
`VI. PROSECUTION HISTORY ........................................................................... 9
`VII.
`IDENTIFICATION OF THE CHALLENGE, STATUTORY BASIS FOR
`THE CHALLENGE, AND CLAIM CONSTRUCTION .............................. 10
`A.
`Challenged Claims .............................................................................. 10
`B.
`Claim Construction ............................................................................. 10
`1.
`“data block”/“data blocks” (all challenged claims) .................. 10
`2.
`“access profile” (claims 1 and 14) ............................................ 11
`3.
`“asymmetric data compression” (claims 1, 10, and 12);
`“asymmetric compressors” (claims 15, 16, 24) ........................ 12
`Summary of Grounds For Trial ........................................................... 13
`C.
`D. All Grounds Are Based On Prior Art Patents ..................................... 14
`E.
`Grounds For Trial Are Not Cumulative Of Other Challenges and This
`is Petitioner’s First Challenge ............................................................. 15
`VIII. ORDINARY SKILL AND KNOWLEDGE OF A POSITA ........................ 16
`A.
`POSITA ............................................................................................... 16
`B.
`Technical Background ......................................................................... 16
`IX. SUMMARY OF THE PRIOR ART .............................................................. 17
`X.
`THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 19
`A. Ground 1: Claims 1-2, 9-10, and 14 Are Anticipated By Dvir or
`Alternatively Rendered Obvious By Dvir and Koz ............................ 19
`1.
`Claim 1 ...................................................................................... 19
`
`i
`
`

`

`
`
`B.
`
`Claim 2 ...................................................................................... 26
`2.
`Claim 9 ...................................................................................... 27
`3.
`Claim 10 .................................................................................... 28
`4.
`Claim 14 .................................................................................... 28
`5.
`Ground 2: Claims 3, 4, and 11 Are Anticipated by Dvir, or, In the
`Alternative Obvious Over the Combined Teachings of Dvir (With or
`Without Koz) and Ando ...................................................................... 32
`1. Motivation to Combine ............................................................. 32
`2.
`Claim 3 ...................................................................................... 34
`1.
`Claim 4 ...................................................................................... 35
`2.
`Claim 11 .................................................................................... 35
`Ground 3: Claims 5-6, 12, 15-17, 19, and 22 Are Obvious Over the
`Combined Teachings of Dvir (With or Without Koz) and Hamadani 36
`1. Motivation to Combine ............................................................. 36
`2.
`Claims 5 and 6 ........................................................................... 38
`3.
`Claim 12 .................................................................................... 40
`4.
`Claim 15 .................................................................................... 41
`5.
`Claim 16 .................................................................................... 45
`6.
`Claim 17 .................................................................................... 45
`7.
`Claim 19 .................................................................................... 47
`8.
`Claim 22 .................................................................................... 48
`D. Ground 4: Claim 21 Is Obvious Over the Combined Teachings of
`Dvir (With or Without Koz), Hamadani, and Figueredo .................... 49
`1. Motivation to Combine ............................................................. 49
`2.
`Claim 21 .................................................................................... 52
`Ground 5: Claims 1, 8, 15, and 24 Are Obvious Over Ishii And
`Koz ...................................................................................................... 54
`1. Motivation to Combine ............................................................. 54
`2.
`Claim 1 ...................................................................................... 58
`3.
`Claim 8 ...................................................................................... 61
`4.
`Claim 15 .................................................................................... 62
`5.
`Claim 24 Would Have Been Obvious Over Ishii and Koz ....... 64
`
`C.
`
`E.
`
`ii
`
`

`

`
`
`XI. FEES .............................................................................................................. 65
`XII. CONCLUSION .............................................................................................. 65
`
`
`iii
`
`

`

`
`
`PETITIONER’S EXHIBIT LIST
`
`
`EX. NO. BRIEF DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`U.S. Patent No. 8,934,535 to Fallon et al.
`
`Declaration of Joseph P. Havlicek, Ph.D.
`
`Curriculum Vitae of Joseph P. Havlicek, Ph.D
`
`United States Provisional Application No. 60/268,394 (filed Feb.
`13, 2001)
`
`File History for U.S. Patent No. 8,934,535
`
`U.S. Patent No. 6,309,424 to Fallon
`
`U.S. Patent No. 6,557,001 to Dvir et al. (“Dvir”)
`
`Iskender Agi & Li Gong, An Empirical Study of Secure MPEG
`Video Transmissions, Proc. of the 1996 Symposium on Network
`and Distributed Systems Security, IEEE (1996).
`
`Ke Shen, A Study of Real-Time and Rate Scalable Image and Video
`Compression, Purdue Univ. Thesis (Dec. 1997).
`
`Ke Shen & E. Delp, Parallel Approaches to Real-Time MPEG
`Video Compression, ICPP, Vol. 2 (1996).
`
`Rahul Garg, Methods for Matching Compressed Video to ATM
`Networks (1998).
`
`Krasmit Kolarov, et al., Low Complexity Real-time Video Encoding
`for Soft Set-Top Box Platforms, Technical Program of the Cable 2K
`Conf. (May 2000)
`
`U.S. Patent No. 5,845,083 to Hamadani et al. (“Hamadani”)
`
`U.S. Patent No. 6,195,024 to Fallon
`
`Memorandum Opinion and Order, Realtime Data, LLC v. Actian
`Corp., No. 6:15-cv-463 (E.D. Tex.) (dated Jul. 28, 2016)
`
`iv
`
`

`

`
`
`EX. NO. BRIEF DESCRIPTION
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`Mark Nelson, The Data Compression Book (1992) (excerpts)
`
`John Watkinson, The MPEG Handbook: MPEG-1 MPEG 2
`MPEG-4 (Focal Press 2001) (excerpts)
`
`IBM Dictionary of Computing, 269 (“file”) (1994 McGraw-Hill)
`
`John Morris, MPEG-2: The Main Profile, Chapter 3.11 in Circuits
`and Systems Tutorials, IEEE Press (1995)
`
`U.S. Patent No. 7,257,158 to Figueredo et al. (“Figueredo”)
`
`U.S. Patent No. 5,675,789 to Ishii et al. (“Ishii”)
`
`U.S. Patent No. 5,990,955 to Koz (“Koz”)
`
`U.S. Patent No. 4,467,317
`
`U.S. Patent No. 4,652,856
`
`U.S. Patent No. 4,122,440
`
`U.S. Patent No. 6,341,196 to Ando et al. (“Ando”)
`
`v
`
`

`

`
`
`I. MANDATORY NOTICES
`A. Real Party-In-Interest
`The real party-in-interest in this proceeding is Cisco Systems, Inc. (“Cisco”).
`
`Cisco is the sole party that has funded this Petition and has full and exclusive control
`
`over these proceedings.
`
`B. Related Matters
`While the original provisional patent application says nothing about video
`
`compression, see generally Ex. 1004, Patent Owner has alleged that it covers
`
`standardized video encoding technologies embodied in, for example, the H.264
`
`video standard. Patent Owner has asserted the ’535 patent in at least the following
`
`civil actions:
`
` Realtime Adaptive Streaming LLC v. Samsung Electronics Co., Ltd, et
`
`al., No. 6:18-cv-00113 (E.D. Tex.);
`
` Realtime Adaptive Streaming LLC v. Adobe Systems, Inc., No. 1:18-cv-
`
`10355 (D. Mass.);
`
` Realtime Adaptive Streaming LLC v. Apple Inc., No. 1:17-cv-02869 (D.
`
`Colo.);
`
` Realtime Adaptive Streaming LLC v. Netflix, Inc., No. 1:17-cv-01692
`
`(D. Del.)
`
`1
`
`

`

`
`
` Realtime Adaptive Streaming LLC v. Sony Electronics Inc., 1:17-cv-
`
`01693 (D. Del.);
`
` Realtime Adaptive Streaming LLC v. Polycom, Inc., 1:17-cv-02692 (D.
`
`Colo.);
`
` Realtime Adaptive Streaming LLC v. Brightcove, 1:17-cv-01519 (D.
`
`Del.);
`
` Realtime Adaptive Streaming LLC v. Haivision Network Video Inc.,
`
`1:17-cv-01520 (D. Del.);
`
` Realtime Adaptive Streaming LLC v. Cisco Systems, Inc., 6:17-cv-
`
`00591 (E.D. Tex.);
`
` Realtime Adaptive Streaming LLC v. Hulu, LLC, 2:17-cv-07611 (C.D.
`
`Cal.);
`
` Realtime Adaptive Streaming LLC v. EchoStar Technologies, LLC,
`
`6:17-cv-00567 (E.D. Tex.);
`
` Realtime Adaptive Streaming LLC v. Amazon.com, Inc., 6:17-cv-00549
`
`(E.D. Tex.);
`
` Realtime Adaptive Streaming LLC v. Sling TV LLC, 1:17-cv-02097-
`
`CBS (D. Colo.);
`
` Realtime Data LLC d/b/a IXO v. EchoStar Corp., 6:17-cv-00084 (E.D.
`
`Tex.);
`
`2
`
`

`

`
`
` Realtime Adaptive Streaming LLC v. Comcast Cable Commc’ns, LLC,
`
`1:18-cv-01446 (D. Colo.);
`
` Realtime Adaptive Streaming LLC v. Charter Commc’ns, Inc., 1:18-cv-
`
`01345 (D. Colo.);
`
` Realtime Adaptive Streaming LLC v. Cox Commc’ns, Inc., 8:18-cv-
`
`00942 (C.D. Cal.);
`
` Realtime Adaptive Streaming LLC v. LG Elecs. Inc., 6:18-cv-00215
`
`(E.D. Tex.);
`
` Realtime Adaptive Streaming LLC v. Advanced Micro Devices, Inc.,
`
`1:18-cv-01173 (D. Colo.);
`
` Realtime Adaptive Streaming LLC v. Intel Corp., 1:18-cv-01175 (D.
`
`Colo.);
`
` Realtime Adaptive Streaming LLC v. Mitel Networks, Inc., 1:18-cv-
`
`01177 (D. Colo.);
`
` Realtime Adaptive Streaming LLC v. Avaya Inc., 1:18-cv-01046 (D.
`
`Colo.);
`
` Realtime Adaptive Streaming LLC v. Broadcom Corp., 1:18-cv-01048
`
`(D. Colo.);
`
` Realtime Adaptive Streaming LLC v. Google LLC, 2:18-cv-03629 (C.D.
`
`Cal.);
`
`3
`
`

`

`
`
` Realtime Adaptive Streaming LLC v. Wowza Media Systems LLC, 1:18-
`
`cv-00927 (D. Colo.);
`
`The ’535 patent is also involved in the following IPR proceedings pending at
`
`the PTAB. Petitioner is not a party to any of the following IPR proceedings:
`
` Unified Patents Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-
`
`00883
`
` Hulu, LLC et al. v. Realtime Adaptive Streaming LLC, IPR2018-01169
`
` Hulu, LLC et al. v. Realtime Adaptive Streaming LLC, IPR2018-01170
`
` Sling TV LLC et al. v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01332
`
` Sling TV LLC et al. v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01342
`
`Additionally, U.S. Patent Application No. 15/382,263 is pending and claims
`
`priority through the ’535 patent.
`
`This identification of related matters is based on information that is currently
`
`known to Petitioner based on a reasonably diligent search of publicly available
`
`materials. Patent Owner may be aware of additional proceedings—including
`
`proceedings before the Patent Trial and Appeal Board (“the Board”) or otherwise
`
`before the United States Patent and Trademark Office (“the Office”)—relating to
`
`4
`
`

`

`
`
`patent claims encompassing similar subject matter or raising similar issues to those
`
`involved here.
`
`C. Lead and Back-Up Counsel
`Lead Counsel:
`
`Andrew Sommer
`Winston & Strawn LLP
`1700 K St NW
`
`Washington, DC 20006
`
`Backup Counsel:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Phone: (202) 282-5000
`Fax: (202) 282-5100
`asommer@winston.com
`USPTO Reg. No. 53,932
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Phone: (650) 858-6500
`Fax: (650) 858-6550
`llcampbell@winston.com
`USPTO Reg. No. 59,963
`
`Phone: (650) 858-6500
`Fax: (650) 858-6550
`kvidal@winston.com
`USPTO Reg. No. 46,333
`
`
`Louis L. Campbell
`
`Winston & Strawn LLP
`275 Middlefield Rd., Ste. 205
`Menlo Park, CA 94025
`
`
`
`
`
`Katherine Vidal
`
`
`Winston & Strawn LLP
`275 Middlefield Rd., Ste. 205
`Menlo Park, CA 94025
`
`
`
`D.
`Petitioner consents to service by email on the following email address: Cisco-
`
`Service Information
`
`Realtime-IPRs@winston.com.
`
`II.
`
`PETITIONER’S STANDING
`
`Petitioner certifies that the ’535 patent is available for IPR, Petitioner does not
`
`own the ’535 patent, and Petitioner is not barred or estopped from requesting this
`
`proceeding. The ’535 patent was first asserted in a Complaint served on Petitioner
`
`on October 19, 2017, making the Petition timely under 35 U.S.C. § 315(b).
`
`5
`
`

`

`
`
`III. RELIEF REQUESTED
`Cisco requests Inter Partes Review under 35 U.S.C. §§ 311-319 and 37 C.F.R.
`
`§§ 42.1, et seq. of claims 1-6, 8-12, 14-17, 19, 21, 22, 24 of U.S. Patent No.
`
`8,934,535, and cancellation of these claims because they are unpatentable.
`
`IV. SUMMARY OF REASONS FOR RELIEF REQUESTED
`Claims 1-6, 8-12, 14-17, 19, 21, 22, and 24 of the ’535 patent are unpatentable
`
`over prior art references that were not cited to, or considered by, the Office in
`
`allowing the claims of the ’535 patent. Indeed, of the references relied upon in this
`
`Petition, just one was cited during prosecution of the ’535 patent.
`
`The claims of the ’535 patent are directed to methods for evaluating data to
`
`be compressed and then selecting an asymmetric compression technique to compress
`
`the data. See, e.g., Ex. 1001, cl.1. Method claim 1 requires determining a parameter
`
`or attribute of a video data block, selecting an access profile based on the parameter
`
`or attribute, and then compressing the block using asymmetric data compression and
`
`information from the access profile that indicates the compressor(s) to apply. Id..
`
`Method claim 15 is similar, but lacks the concept of an access profile, and adds a
`
`step of storing the compressed data blocks. Id., cl.15. The claimed features were
`
`known and obvious over the prior art.
`
`The ’535 patent does not purport to invent any new compression algorithm;
`
`instead it operates using asymmetric compression algorithms long known in the prior
`
`6
`
`

`

`
`
`art. See Ex. 1002, ¶¶ 34-39, 50. For example, ubiquitous video encoding techniques,
`
`MPEG-1 and MPEG-2, were referred to as “notoriously asymmetric” long before
`
`the earliest filing date. Ex. 1010, p.7; Ex. 1002, ¶¶ 40-42. And, references like Dvir
`
`disclose that “current multimedia data compression methods are most efficient when
`
`adjusted for the type of multimedia data being transmitted.” Ex. 1007, 2:11-13.
`
`Dvir’s methods anticipate—or at the very least render obvious—many of the
`
`challenged claims of the ’535 patent. Dvir’s Figure 1b, annotated below, shows
`
`many aspects of the challenged claims:
`
`
`
`Dvir discloses transmitting MPEG-compressed data to a remote display.
`
`Further, persons of ordinary skill in the art (“POSITA”) knew that MPEG improved
`
`both storage and transmission of video data. Ex. 1013, 1:48-52, Ex. 1019, p.107,
`
`Ex. 1022, 1:12-18; Ex. 1002, ¶ 43. Using Dvir’s techniques and including data
`
`storage would have been an obvious, and straightforward application of Dvir’s
`
`7
`
`

`

`
`
`techniques for their intended purpose—i.e., compression of video data based on the
`
`type of data to be displayed.
`
`As shown in detail below, the challenged claims recite no more than the
`
`simple, straightforward combination of known prior art methods used for their
`
`intended purposes. Thus, the Board should cancel the challenged claims.
`
`V.
`
`SUMMARY OF THE ’535 PATENT
`
`The ’535 patent relates to data compression and decompression methods. Ex.
`
`1001, Abstract. It explains that data compression was known to have “unique
`
`benefits” in reducing data transmission time and allowing for more data to be stored
`
`in a fixed memory size. Id., 4:20-27. There were several known types of data
`
`compression, including asymmetrical compression (where “the execution time for
`
`the compression and decompression routines differ significantly”) and symmetrical
`
`compression (where those execution times are “substantially similar”). Id., 9:60-
`
`10:10.
`
`The ’535 patent does not purport to invent any new compression algorithm.
`
`Instead, it describes a system that analyzes data (e.g. to determine a data type), and
`
`then selects between one or more known compression algorithms. Specifically, it
`
`discloses using “data profiles” to “determine which compression algorithms” to
`
`apply. Id., 11:6-8. The data profiles may “associate[] different data types (based
`
`on, e.g., a file extension) with preferred one(s) of the compression algorithms.” Id.,
`
`8
`
`

`

`
`
`11:35-38. The patent provides an example of this association between access
`
`profiles and compression algorithms:
`
`
`
`Id., col.12.
`
`VI. PROSECUTION HISTORY
`The ’535 patent application, filed on September 20, 2013, ultimately claims
`
`priority to a provisional dated February 13, 2001. Ex. 1001, p.1.
`
`During prosecution, applicant (Realtime’s parent company) submitted 170
`
`pages of Information Disclosure Statements (“IDS”) disclosing over 1500 prior art
`
`references. The first and only substantive rejection by the examiner was non-final
`
`and issued February 26, 2014, rejecting certain claims under § 112 grounds,
`
`rejecting certain claims over U.S. Patent No. 6,216,157 (“Vishwanath”), and
`
`allowing 13 claims as is or if rewritten in independent form. Ex. 1005, pp.269-79.
`
`9
`
`

`

`
`
`Applicant responded on May 27, 2014, amending or canceling all pending
`
`claims, and adding seven new claims. Applicant stated it was amending claims to
`
`recite features included in dependent claims the examiner indicated would be
`
`allowable if rewritten in independent form. Id., p.431-48. Realtime made no
`
`argument with respect to Vishwanath.
`
`After several further claim amendments, the final Notice of Allowance issued
`
`December 10, 2014, without any further substantive prosecution. Id., p.585-89.
`
`VII. IDENTIFICATION OF THE CHALLENGE, STATUTORY BASIS
`FOR THE CHALLENGE, AND CLAIM CONSTRUCTION
`A. Challenged Claims
`Claims 1-6, 8-12, 14-17, 19, 21, 22, and 24 of the ’535 patent are challenged.
`
`B. Claim Construction
`The challenged claims should be given
`
`their broadest reasonable
`
`interpretation (“BRI”) in light of the specification. See Cuozzo Speed Techs., LLC
`
`v. Lee, 136 S.Ct. 2131 (2016). Additionally, because the constructions proposed
`
`herein are based on the BRI, they do not necessarily apply to proceedings using
`
`different claim construction standards. See Samsung Electronics Co., Ltd v. Virginia
`
`Innovation Sciences, Inc., IPR2013-00569, Paper 9 at *2, Oct. 30, 2013.
`
`“data block”/“data blocks” (all challenged claims)
`1.
`“Data block” means “a single unit of data, which may range in size from
`
`more than one bit through complete files or collections of files.” A similar
`
`10
`
`

`

`
`
`construction was adopted for other Fallon patents in other proceedings. Ex. 1015,
`
`p.40. The only difference is that because a single bit cannot be compressed, as
`
`required in the ’535 claims, the size of the “data block” is limited to “more than one
`
`bit.”
`
`Though “data block” is not expressly defined in the specification, U.S. Patent
`
`No. 6,195,024, which the ’535 patent incorporates by reference, supports the
`
`proposed construction. Ex. 1001, 5:33-38; see Advanced Display Sys., Inc. v. Kent
`
`State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (“[i]ncorporation by reference”
`
`integrates “material from various documents into a host document”). The ’024
`
`patent states that “the system processes the input data stream in data blocks that may
`
`range in size from individual bits through complete files or collections of multiple
`
`files.” Ex. 1014, 15:6-9. “Data blocks” means more than one “data block.”
`
`2.
`“access profile” (claims 1 and 14)
`“Access profile” means “a profile (1) having information used in data
`
`compression and (2) being associated with one or more characteristics of data to
`
`be compressed.”1 The claim language reveals that an access profile includes
`
`information used in compression and is chosen based on some parameter or attribute
`
`
`1 This construction is provided under the BRI. Cisco may later demonstrate that,
`
`under Phillips, a narrower construction is proper.
`
`11
`
`

`

`
`
`of data to be compressed. See Ex. 1001, cl.1 (“selecting an access profile . . . based
`
`upon the determined parameter or attribute”; “compressing . . . using . . . information
`
`from the selected access profile . . .”), cl.14 (same). The’535 patent likewise
`
`supports that the “access profile” contains these attributes. The specification
`
`demonstrates that access profiles “enable[] the controller to determine a compression
`
`routine that is associated with a data type of the data to be compressed.” Ex. 1001,
`
`8:4-9. Access profiles “enable the controller to select a suitable compression
`
`algorithm.” Id., 8:9-11. The ’535 patent explains that access profiles can be
`
`associated with the type of data to be compressed (e.g., website, operating system,
`
`application program, database, word processing document, spreadsheet). Id., 12:1-
`
`46. Based on the intrinsic evidence, a POSITA would understand the BRI of “access
`
`profile” to reflect that: (1) it must have information used in data compression, and
`
`(2) it must be associated with characteristics of the data, such as data type or access
`
`frequency.
`
`3.
`
`“asymmetric data compression” (claims 1, 10, and 12);
`“asymmetric compressors” (claims 15, 16, 24)
`
`Applicants defined “asymmetric data compression” to mean “a compression
`
`algorithm in which the execution time for the compression and decompression
`
`routines differ significantly,” under which either “the compression routine is slow
`
`and the decompression routine is fast or the compression routine is fast and the
`
`decompression routine is slow.” Ex. 1001, 9:63-10:2. This definition is
`
`12
`
`

`

`
`
`controlling—Applicants acted as
`
`lexicographers by explicitly stating
`
`that
`
`“asymmetrical data compression . . . is referred to herein as,” clearly signaling their
`
`intent to so define the term. See Renishaw PLC v. Marposs Societa’ per Azioni, 158
`
`F.3d 1243, 1249 (Fed. Cir. 1998) (“the definition selected by the patent applicant
`
`controls” when the applicant provides “an explicit definition in the specification for
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`a claim term”). Therefore, “asymmetric data compression” means “a data
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`compression algorithm in which the execution time for the compression and
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`decompression routines differ significantly.”
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` Accordingly, “asymmetric
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`compressor” means “a compressor that applies asymmetric data compression” as
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`that term is construed herein.
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`Summary of Grounds For Trial
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`C.
`The following prior art is presented as a basis for cancelling the challenged
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`claims: (1) U.S. Patent No. 6,557,001 to Dvir et al. (“Dvir”) (Ex. 1007); (2) U.S.
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`Patent No. 5,845,083 to Hamadani et al. (“Hamadani”) (Ex. 1013); (3) U.S. Patent
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`No. 7,257,158 to Figuredo et al. (“Figueredo”) (Ex. 1020); (4) U.S. Patent No.
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`5,675,789 to Ishii et al. (“Ishii”) (Ex. 1021); (5) U.S. Patent No. 5,990,955 to Koz
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`(“Koz”); and (6) U.S. Patent No. 6,341,196 to Ando et al. (“Ando”).
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`The following grounds for trial are presented:
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` Ground 1: Claims 1-2, 9-10, and 14 are unpatentable under § 102(e)
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`as being anticipated by Dvir and under § 103(a) as being obvious over
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`Dvir and Koz;
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` Ground 2: Claims 3-4 and 11 are anticipated by Dvir under § 102(e)
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`and obvious over the combined teachings of Dvir and Ando with or
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`without Koz;
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` Ground 3: Claims 5-6, 12, 15-17, 19, and 22 are unpatentable under §
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`103(a) as being obvious over the combined teachings of Dvir and
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`Hamadani with or without Koz;
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` Ground 4: Claim 21 is unpatentable under § 103(a) as being obvious
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`over the combined teachings of Dvir, Hamadani, and Figueredo with or
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`without Koz; and
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` Ground 5: Claims 1, 8, 15, and 24 are unpatentable under § 103(a) as
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`being obvious over the combined teachings of Ishii in view of Koz.
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`D. All Grounds Are Based On Prior Art Patents
`Dvir was filed as a U.S. patent application on November 12, 1999 and issued
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`as a patent, making it prior art under § 102(e). Ex. 1007, cover.
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`Hamadani issued as a U.S. patent on December 1, 1998, making it prior art
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`under § 102(b). Ex. 1013, cover.
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`14
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`
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`Ando was filed as a U.S. patent application on May 14, 1999 and issued as a
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`patent, making it prior art under § 102(e). Ex. 1026, cover.
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`Figueredo was filed as a U.S. patent application on May 17, 1999 and issued
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`as a patent, making it prior art under § 102(e). Ex. 1020, cover.
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`Ishii issued as a U.S. patent on October 7, 1997, making it prior art under §
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`102(b). Ex. 1021, cover.
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`Koz was issued as a U.S. patent on November 23, 1999, making it prior art
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`under § 102(b). Ex. 1022, cover.
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`E. Grounds For Trial Are Not Cumulative Of Other Challenges and
`This is Petitioner’s First Challenge
`
`This is Cisco’s first challenge to the claims of the ’535 patent. This Petition,
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`and the grounds presented herein, are not cumulative of other challenges currently
`
`pending, which were filed by unrelated parties without input from Cisco and relied
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`on other prior art and/or different prior art combinations. See IPR2018-00883,
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`IPR2018-01169, IPR2018-01170, IPR2018-01332, and IPR2018-01142. For
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`example, Hamadani, Ando, and Figueredo have not been cited in any previous
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`petition before the Board. Additionally, none of the references relied upon in this
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`Petition were applied against the challenged claims during prosecution. Indeed, just
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`one reference (Ishii) was even cited during prosecution. Finally, no patent owner
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`preliminary response or institution decisions have been filed in any other pending
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`IPRs. The Board should resolve the non-cumulative issues presented herein and not
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`exercise discretion under §§ 314(a), 325(d) to deny this Petition.
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`VIII. ORDINARY SKILL AND KNOWLEDGE OF A POSITA
`A.
`POSITA
`As of February 2001 (earliest possible filing date), a POSITA in the field of
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`the ’535 patent would have had (1) a bachelor’s degree in computer science,
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`computer engineering, electrical and computer engineering, electrical engineering,
`
`or electronics and four years of experience working with data compression; or (2) a
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`graduate degree focusing on data compression and two years of experience working
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`with data compression. See Ex. 1002, ¶¶ 29-33. Additional education or industrial
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`experience could compensate for a deficit in one of the prior requirements. Id. This
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`level of ordinary skill is reflected by references cited herein, the state of the art, and
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`Dr. Havlicek’s experience in academia and work on data compression systems. Id.
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`Reference to a POSITA herein refers to a person with these or similar qualifications.
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`Technical Background
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`B.
`By February 2001, data compression was a mature field. Numerous
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`techniques for encoding video data were known, as the ’535 patent admits, and could
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`trace their origins back to the 1940s. Ex. 1002, ¶¶ 34-39, Ex. 1001, 5:1-5. For
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`example, MPEG-2 was a known video compression standard that was asymmetric
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`because “encoding requires substantially more computational power than decoding.”
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`Ex. 1008, p.1. The prior art also disclosed that data compression had benefits in both
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`storing and transmitting data, which the ’535 patent again admits. Ex. 1002, ¶ 43;
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`Ex. 1022, 1:12-18; Ex. 1001, 2:44-46. The ’535 patent does not purport to describe
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`any new compression algorithm, but only describes methods for selecting and using
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`known compression algorithms.
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`IX. SUMMARY OF THE PRIOR ART
`Before the earliest filing date, it was well known in the art that a system could
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`select a compression algorithm based on data type, network conditions, and/or
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`storage space available. For example, Dvir discloses a system for “rapid video data
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`compression and transmission.” Ex. 1007, Abstract. Specifically, Dvir identified a
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`need for “automatically selecting a particular type of multimedia data compression
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`method, according to the type of multimedia data which is to be transmitted . . . such
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`that multimedia data is efficiently compressed.” Id., 2:43-46. Dvir addressed this
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`need by disclosing a system with a “compression profile manager” that contained
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`different profiles associated with different compression algorithms. Id., Fig. 1a.
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`According to Dvir, that system samples video data to determine a parameter, then
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`identifies the profile associated with that parameter, and then performs compression
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`using the algorithm associated with the profile:
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`17
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`
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`Id., Fig. 1b (annotated), 2:64-3:8. Dvir specifically discloses the use of MPEG
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`encoding. Id., 5:14-22. Koz discloses further implementation details of MPEG
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`encoding, including that “MPEG is asymmetric-compression requires more effort
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`than decompression.” Ex. 1022, 2:10-11. Dvir further discloses that it may be used
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`to transmit data from a DVD. Id., 5:45-51. And Ando discloses further
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`implementation details of DVD, including that video is stored on DVDs as multiple
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`files. Ex. 1007, 1:22-27 (discussing “files stored . . . on the DVD storage medium”).
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`Hamadani discloses a system for compressing video data, like Dvir, and
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`explains that video is compressed for either transmission or storage. Ex. 1013, 1:13-
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`20, 3:62-65. As one example, Hamadani discloses that data may be compressed and
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`then stored so that a user can access that data at a later time. Id., 7:48-8:2.
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`Figueredo discloses a video-on-demand system that, like Hamadani, stores
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`video for transmission to the user at a later time. Ex. 1020, Abstract, 4:6-14.
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`18
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`
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`Specifically, Figueredo explains that video may be transmitted later based on
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`network conditions. Id., 7:28-38.
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`Ishii describes a “file compression processor” that compresses image data.
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`Ex. 1021, Abstract. Ishii explains that it selects the compression algorithm based on
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`the available space in the storage device. Id., 1:49-55. Koz, as noted above,
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`describes compressing video data using MPEG encoding. Ex. 1022, 2:10-11.
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`X. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Ground 1: Claims 1-2, 9-10, and 14 Are Anticipated By Dvir or
`Alternatively Rendered Obvious By Dvir and Koz
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`Dvir anticipates claims 1-3, 9-10, and 14. In the alternative, Dvir and Koz
`
`would have rendered claims 1-3, 9-10, and 14 obvious.
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`1.
`
`Claim 1
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`Dvir discloses, and therefore anticipates, each limitation of claim 1. To the
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`extent that the Board finds that Dvir fails to disclose that its compression is
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`“asymmetric,” Dvir in view of Koz discloses this element because Koz discloses that
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`MPEG compression (the type of compression used in Dvir) is asymmetric, and a
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`POSITA would have been motivated to combine these references for the reasons
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`discussed below in claim element [1Ci].
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`a.
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`[1P]: “A method comprising:
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`Dvir discloses a “method for rapid video data compression,” and thus
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`discloses this part of the claim. See Ex. 1007, 1:12-16 (referring to “a . . . method
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`for multimedia data compression and transmission”), 2:42-48; 2:66-3:21; 4:22-24.
`
`b.
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`[1A]: “determining a parameter or attribute of at least a
`portio