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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETFLIX, INC.,
`Petitioner,
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________________
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`Case IPR2018-01630
`Patent No. 9,769,477
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`PATENT OWNER’S SUR-REPLY
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`IPR2018-01630
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`PATENT OWNER’S SUR-REPLY
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`Table of Contents
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`The Reply fatally concedes that the Petition does not explain how a
`POSITA would combine Imai and Pauls, and thus cannot prevail ................. 1
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`I.
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`II.
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`The claims’ recitation of “configured to” requires purposeful design ............ 4
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`III. The Reply fails to show that the combination of Imai and Pauls renders
`obvious limitation 1[B] .................................................................................... 7
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`IV. The Reply fails to demonstrate that the Petition established a motivation
`to combine Imai and Pauls .............................................................................15
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`V.
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`The Petition does not address the tradeoffs inherent in its motivation to
`modify Pauls’s encoders ................................................................................17
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`VI. The Reply’s belated attempt to allege obviousness of Claim 20’s
`limitations must be rejected ...........................................................................21
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`VII. The Reply confirms that the Petition does not explain how a POSITA
`would combine Dawson with Imai and Pauls ...............................................23
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`VIII. Conclusion .....................................................................................................25
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`Exhibit List
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`Exhibit No.
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`2001
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`2002
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`2003
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`2004
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`Description
`Declaration of Kayvan B. Noroozi in Support of Motion for
`Admission Pro Hac Vice.
`Declaration of Kenneth A. Zeger, Ph.D.
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`Transcript of Oral Deposition of James Storer, Ph.D, taken in
`IPR2018-01630 on May 8, 2019.
`Digital Compression and Coding of Continuous-Tone Still
`Images – Requirements and Guidelines (JPEG Standard)
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`I.
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`The Reply fatally concedes that the Petition does not explain how a
`POSITA would combine Imai and Pauls, and thus cannot prevail
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`The Federal Circuit has held that obviousness based on a prior art
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`combination cannot be reached absent a clear explanation or evidence “showing [ ]
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`how the combination of the two references was supposed to work.” Personal Web
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`Tech. v. Apple, 848 F.3d 987, 994 (Fed. Cir. 2017) (emphasis original). As the
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`Federal Circuit explained in Personal Web, “such a clear, evidence-supported
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`account of the contemplated workings of the combination is a prerequisite to
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`adequately explaining and supporting a conclusion that a relevant skilled artisan
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`would [1] have been motivated to make the combination and [2] reasonably expect
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`success in doing so.” Id. (number and emphasis added).
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`In particular, the Federal Circuit has held that a prima facie obviousness
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`showing requires the challenger (1) “to explain how specific references could be
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`combined,” (2) “which combination(s) of elements in specific references would
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`yield a predictable result,” and (3) “how any specific combination would operate or
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`read on” the claims. ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694
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`F.3d 1312, 1327-28 (Fed. Cir. 2012).
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`The Board has repeatedly recognized those requirements, and has repeatedly
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`rejected obviousness allegations that fail to explain how the prior art elements
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`could have been combined to achieve predictable results and arrive at the claimed
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`invention. Dell, Inc. v. Realtime Data, LLC, IPR2016-01002, Paper 71 at 15; Dell,
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`Inc. v. Realtime Data, LLC, IPR2016-00972, Paper 71 at 10-11, 15-16; Commvault
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`Systems, Inc. v. Realtime Data LLC, IPR 2017-2007, Paper 11 at 13.
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`In the POR, Patent Owner demonstrated that the Petition offers no
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`explanation as to how a POSITA would combine Imai and Pauls because it does
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`not explain what would be the “first” or “second” encoders recited by the claims,
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`as is required to show obviousness. POR 35-46. Indeed, Petitioner’s expert failed
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`to provide any explanation on cross-examination. Id. at 38-45.
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`In its Reply, Petitioner fails to address that crucial and dispositive argument.
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`The Reply simply offers no further explanation which encoders included in the
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`combination would be the claimed “first” or “second” encoders. Petitioner thus
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`confirms that no such explanation exists.
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`Petitioner’s failure to address that issue is a dispositive concession.
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`Accordingly, the Board cannot find any claims unpatentable based on the
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`combination of Imai and Pauls on this record. See POR 35-46.
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`Rather than address that crucial issue head on (which it cannot do), the
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`Reply instead attempts to dodge the issue by stating: “Realtime cannot seriously
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`contend that a POSITA would not know how to select or implement video or
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`image compressor encoders that vary in their data compression rates or
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`compression ratios . . . .” Rep. 2. But Patent Owner never so contended. And in any
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`case, that argument is simply a sleight of hand attempt at shifting the burden of
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`proof in this proceeding: the Petition must show how the prior art would have been
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`combined to arrive at the claims; Patent Owner need not prove otherwise. In order
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`to meet its burden, Petitioner must explain “how any specific combination would
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`operate or read on” the claims. ActiveVideo, 694 F.3d at 1327-28. Petitioner
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`continues to refuse to do so here.
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`Thus, simply asking the Board to dream up some combination of encoders
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`that might meet the limitations cannot save Petitioner: it is Petitioner’s burden to
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`show that the Petition demonstrated how the POSITA would have combined the
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`prior art elements to arrive at the claimed invention, and Petitioner has not even
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`attempted to make that showing.
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`Finally, Petitioner asserts—without support or explanation—that “Petitioner
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`has both demonstrated . . . how Pauls (and Dawson) would work with Imai.” Rep.
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`20. On that basis, Petitioner attempts to distinguish Personal Web. Id. But
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`Petitioner’s continued refusal to explain which encoders from the combination
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`would constitute the “first” and “second” encoders recited in the claims belies its
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`assertion.
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`Petitioner also attempts to distinguish Personal Web on the grounds that the
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`Petition’s combination is simpler than the combination in Personal Web and thus
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`“is not the kind of ‘complexity or obscurity… mak[ing] more detailed explanations
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`necessary.’” Rep. 19. If true, Petitioner’s argument would only justify a “[less]
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`detailed explanation.” It is no basis for providing no explanation whatsoever of
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`how the “first” and “second” encoder limitations read on the combined system.
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`Moreover, Petitioner conspicuously makes no attempt to distinguish
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`ActiveVideo, or argue that the Petition satisfies ActiveVideo’s requirement to
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`“explain … how any specific combination would operate or read on the asserted
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`claims.” 694 F.3d at 1327-28.
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`Accordingly, the Board should find that Petitioner has conceded that the
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`Petition has not shown any claim to be unpatentable. See POR 35-46. The Board
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`should uphold the patentability of all challenged claims on that basis.
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`II. The claims’ recitation of “configured to” requires purposeful design
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`In its Response, Patent Owner offered (1) numerous cases from the Federal
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`Circuit and district courts interpreting “configured to” to require purposeful design,
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`(2) examples from the ‘477 patent’s specification showing the same usage of
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`“configured to,” and (3) an explanation of how the claimed invention relies on the
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`predictable and purposeful configuration of the encoders’ compression rates. POR
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`8-12. In its continued attempt to read “configured to” out of the clams, Petitioner
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`addresses only one cited case, does not address the specification’s use of
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`“configured to” at all, and misinterprets the POR’s exemplary description of the
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`claimed invention as “advocating for a limitation absent from the claims.” Rep. 7-
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`8.
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`First, the Reply argues that Aspex Eyewear does not support a purposeful
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`design requirement because the claim term in that case was “adapted to.” Rep. 7-8.
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`But, as the POR explained, the Federal Circuit in Aspex Eyewear equated “adapted
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`to” with “configured to,” which it considered even narrower than “adapted to.”
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`POR 8-9 (citing Aspex Eyewear v. Marchon Eyewear, 672 F.3d 1335, 1349 (Fed.
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`Cir. 2012)). And it concluded that even “adapted to”—which the Court considered
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`broader than “configured to”—required purposeful design and meant “configured
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`to accomplish the specified objective” of the claims. Id. If the broader term,
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`“adapted to,” requires purposeful design, then so too must the narrower term
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`“configured to.” Indeed, the Federal Circuit used “configured to” to convey its
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`narrower interpretation of “adapted to.” Id.
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`The Reply also suggests that Aspex is inapplicable because that case relied
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`on the “facts of the case and that patent.” Rep. 8. But here too, the claimed
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`invention and the specification’s use of “configured to” support the requirement of
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`intentional design, as the POR explained. POR 10-12.
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` Next, the Reply suggests that “Realtime also advocates for a limitation
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`absent from the claims – that a system must switch from an encoder with a
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`relatively slow compression rate to an encoder having a faster rate of
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`compression.” Rep. 8. Realtime made no such argument. Rather, the POR offered
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`the specification’s description of switching to a faster encoder to increase
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`throughput as an example of how the claimed system uses the predictable
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`relationships among the speeds of the encoders to increase throughput. POR 11-12.
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`Similarly, Realtime did not argue that it would be “beneficial only to switch from a
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`slower compression rate to a faster compression rate.” Rep. 8. Rather, the POR
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`explained that switching to a slower compression would exacerbate the bottleneck
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`in the situation where the speed of the encoder is causing the bottleneck. See POR
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`3, 11-12. That is the situation in which the specification describes using a faster
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`encoder to increase throughput. See, e.g., Ex. 1001 at 8:12-18, 14:14-24. The
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`Board should reject the Reply’s attempt to erect a strawman.
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`Finally, Petitioner contends that the definition of “configured to”—
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`supported by caselaw and the specification’s usage of the term—is somehow
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`“nebulous” because it “cannot be met by … a difference in compression rates
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`arising as a side effect of some other design choice.” Rep. 7. But the Reply does
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`not explain why the requirement of purposeful design with respect to the encoders’
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`compression rates is too nebulous. To the contrary, the Federal Circuit has equated
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`“adapted to” and “configured to” as meaning “configured to accomplish the
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`specified objective” of the claim, which would likewise exclude any side effects
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`from some other design choice. Aspex Eyewear, 672 F.3d at 1349.
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`Finally, Petitioner makes no attempt to address the additional Federal Circuit
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`and district court cases presented by Patent Owner, which also interpret
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`“configured to” to require purposeful design. See POR 8-10.
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`Accordingly, the Board should reject Petitioner’s attempt to read
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`“configured to” out of the claims.
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`III. The Reply fails to show that the combination of Imai and Pauls renders
`obvious limitation 1[B]
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`As explained in the POR, limitation 1[B] requires (1) “a first asymmetric
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`data compression encoder” that is (2) designed to (3) compress more input data per
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`unit of time than (4) “a second asymmetric data compression encoder.” POR 7-12.
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`The Reply fails to show that those requirements are disclosed in the prior art.
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`The Reply again points to Imai’s disclosure in paragraph [0067] of “a
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`method which requires a larger amount of computation for decoding.” Rep. 3-4.
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`But as Patent Owner’s response explained, compression rate is not defined by the
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`speed or computation necessary for decoding. POR 18-19. Similarly, Petitioner
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`cannot argue that Imai discloses that “ATRAC is given as an example of a faster
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`compression rate encoder” based on Imai’s disclosure that ATRAC is an “example
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`of the coding method, which requires not so large amount of computation for
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`decoding.” Rep. 4 (emphasis added).
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`Dr. Zeger’s statement that “execution speed” is a measure of the speed of
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`data processing is not to the contrary. Rep. 4 (“Realtime cannot dispute that this
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`evidence teaches using encoders with different execution speeds because Dr. Zeger
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`admitted that the plain and ordinary meaning of execution speed of a compression
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`algorithm relates to measuring the amount of computation.”). Imai’s disclosure is
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`that the system should include methods that differ in the amount of computation
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`for “decoding” and thus the relevant execution speed is that of the decoder.
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`“Compression rate” measures the speed of the encoder. POR 18-19.
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`To the extent the Reply argues that Imai’s parenthetical reference, “(such a
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`method usually also requires a larger amount of computation for coding)” discloses
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`limitation 1[B], that argument should be disregarded because it was not included in
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`the Petition. See Pet. 29-30 (arguing that Imai discloses “compression rate”
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`limitation without relying on parenthetical reference to amount of computation for
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`coding); 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in
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`the corresponding opposition, patent owner preliminary response, or patent owner
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`response.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug.
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`14, 2102) (“[A] reply that raises a new issue or belatedly presents evidence will not
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`be considered and may be returned.”).
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`In any event, the parenthetical does not teach limitation 1[B]. First, the
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`parenthetical’s equation of the amount of computation for encoding and decoding
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`suggests it is describing symmetric algorithms. Ex. 1005 at [0067] (“a method
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`which requires a larger amount of computation for decoding (such a method
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`usually also requires a larger amount of computation for coding)”). By contrast, the
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`limitation 1[B] specifically requires “a first asymmetric data compression encoder .
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`. . configured to compress . . . at a higher data compression rate than a second
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`asymmetric data compression encoder.” And the Petition argues that the term
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`“asymmetric data compression encoder” means “encoder(s) configured to utilize a
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`compression algorithm in which the execution time for the compression and
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`decompression routines differ significantly.” Pet. 7. Thus, Imai’s parenthetical is
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`not describing an encoder that could meet the limitations of 1[B].
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`Second, Imai does not disclose that the system should include encoders that
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`differ in their “amount of computation for coding.” Rather, it discloses that the
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`system should include encoders that differ in the “amount of computation for
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`decoding” and that those encoders will often also differ in the amount of
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`computation for coding. Ex. 1005 at [0067] (“a method which requires a larger
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`amount of computation for decoding (such a method usually also requires a larger
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`amount of computation for coding)”) (emphasis added). Thus, the parenthetical
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`likewise fails to disclose a system with (1) “a first asymmetric data compression
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`encoder” that is (2) designed to (3) compress more input data per unit of time than
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`(4) “a second asymmetric data compression encoder” as limitation 1[B] requires.
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`The Reply further implies that Realtime has imposed a requirement that the
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`“compression rate” limitations of 1[B] be disclosed “in haec verba.” Rep. 3
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`(“Realtime cannot demand that the data compression rate limitations (1[b]) be
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`shown in haec verba because its expert admits that ‘data compression rate’ is not a
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`commonly-used term . . .”). But Realtime does not argue that the prior art fails to
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`disclose the term, “compression rate,” but rather that it fails to disclose the claimed
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`invention in any terms. See POR 7-32. In fact, the POR specifically faults the
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`Petition for focusing on Imai’s usage of the term “compression rate” to refer to a
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`concept different from how “compression rate” is used in the claims. POR 16-18.
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`The Reply also argues Imai’s disclosure of “ATRAC2 encoders that operate
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`at different bitrates” discloses limitation 1[B] because “Imai’s differing rates
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`indicate that the different encoders are operating at different data compression
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`rates.” Rep. 4-5. That is a new argument and should be disregarded. See 37 C.F.R.
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`§ 42.23(b). The Petition argued that the disclosed bitrates themselves were the
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`different compression rates: “Imai explains that ATRAC 2 can encode at various
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`compression rates (e.g., ‘64 Kbps, 32K bps, [sic] 24 Kbps’).” Pet. 30 (emphasis
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`added). The use of “e.g.” before the bitrates makes the nature of the argument
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`clear. Now that Dr. Storer has contradicted the Petition’s argument, POR at 19-21,
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`the Reply switches tack.
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`The Reply’s new argument is also incorrect because achieving different
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`output bitrates by modifying an encoder’s compression rate would prevent Imai
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`from achieving its stated goal: encoding in real time, as Dr. Zeger explained. Ex.
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`2002 at ¶¶ 81-86. Thus, Dr. Storer’s suggestion in paragraph 159 of his declaration
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`would break Imai because the transmitted information would not be reproduceable
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`in real time. Id.
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`The Reply also argues that Dr. Zeger’s statements about a “general
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`relationship between data compression rate . . . and the output rate,” show that the
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`compression rates of the various encoders would differ in Imai and Pauls. Rep. 5,
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`6. However, as the quoted portion of Dr. Zeger’s testimony indicates, faster
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`compression rates produce higher output rates “at a given compression ratio.” Ex.
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`1029 at 148:13-24 (emphasis added). Where—as in Imai and Pauls—the system
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`obtains varying output bitrates by modifying the compression ratio, POR 15-29,
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`the differing output bitrates do not necessarily result from any difference in
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`compression rate. Dr. Zeger’s statement is not to the contrary.
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`Finally to the extent there exist any differences in the compression rates of
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`the Imai’s or Pauls encoders, those would be chance side effects of the choice to
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`include multiple encoders because of their different compression ratios, which
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`would not meet limitation 1[B]. See POR 13-15. Petitioner points to no indication
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`that any resulting differences in compression rates would be by design.
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`The Reply also argues that Pauls discloses limitation 1[B] because of its
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`references to different encoders, compression ratios, and output bitrates. Rep. 6-7.
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`As explained in the POR, none of those disclosures pertain to compression rate.
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`POR 26-31.
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`Next, the Reply relies on the Board previously crediting Dr. Storer’s
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`testimony that POSITA’s knowledge of “concerning the performance of well-
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`known H.263, MPEG, and MPEG2 encoders” would be sufficient to disclose
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`limitation 1[B]. Rep. 6-7 (citing Ex. 1003 ¶¶169-70). But as the POR explained,
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`Dr. Storer later contradicted his testimony in paragraphs ¶¶169-70 that a POSITA
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`would know the relative compression rates of those encoders by refusing to state
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`which of any of the encoders named in Imai or Pauls would be faster than any
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`other. POR 38-45. In particular, while Dr. Storer’s ¶ 170 implies that H.263
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`typically has a lower compression rate than MPEG because it has an “input video
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`data rate appreciably lower than . . . used with an MPEG or MPEG 2 encoder,” he
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`refused to say on cross examination whether H.263 or MPEG encoders were
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`typically faster. Ex. 2003 at 96:19-97:5 (“[Y]ou could very well have a faster -- an
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`H.263 coder that was faster than -- they worked faster on the same data as an
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`MPEG coder and vice versa -- okay?”). The Reply makes no attempt to address Dr.
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`Storer’s refusal to provide the relative compression rates of any encoder. The
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`Board should not credit Dr. Storer’s testimony that a POSITA would know the
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`compression rates of any encoder when he refuses to provide the relative
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`compression rates after repeated questioning.
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`The Reply also relies on the Board’s reasoning that because “Imai
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`specifically discloses that the encoders are constructed to encode the audio signal
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`with different coding methods from each other” “the different rates of encoding
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`would not be happenstance.” Rep. 10 (citing ID at 34). As the POR explains, any
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`difference in compression rates arising from the choice to include multiple
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`encoders because they have different compression ratios or output bitrates cannot
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`satisfy limitation 1[B] because the resulting variation in compression rates is a
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`chance side effect of the choice to include multiple encoders for some other
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`reason—their compression ratios or output bitrates. POR 7-12, 25-26. Petitioner
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`therefore cannot rely on prior art disclosures of including multiple encoders
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`without regard to their compression rates.
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`The Reply also quotes several paragraphs of Dr. Storer’s deposition
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`testimony in order to argue that Imai “takes into consideration both speed and
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`compression ratio and other factors.” Rep. 11-13. But Dr. Storer’s testimony is
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`unsupported because he never points to anything in Imai that discloses taking
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`compression rate into consideration. The Board should reject Dr. Storer’s attempt
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`to argue that compression rate is an important consideration in Imai while failing to
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`point to anything from Imai describing or even mentioning the desirability of
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`including encoders based on their compression rates.
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`The Reply also criticizes the POR’s explanation of why Dr. Storer’s
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`suggested modification is inconsistent with Imai’s purpose. It states, “the opinions
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`Realtime points to describe one way of modifying the compression rate of an
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`encoder, not Dr. Storer’s opinion for how Imai teaches switching between
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`encoders.” Rep. 12. But Realtime’s argument is that Dr. Storer’s suggested
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`modification—“adjusting the output rate of the compression encoder . . .
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`particularly if the compression ratio of the encoder is fixed,” Pet. 31—is
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`inconsistent with the way Imai teaches switching between encoders: Imai teaches
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`compressing the data more not faster or slower. POR 21-26. The POR argued that
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`any attempt to modify the compression rate of the encoder while keeping the
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`compression ratio fixed would be ineffective—regardless of how that is done. Id.
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`Notably, the Reply does not dispute the ineffectiveness of Dr. Storer’s suggested
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`modification.
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`Finally, the Reply reiterates its argument that the prior art discloses
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`limitation 1[B] merely because it teaches including multiple encoders, and it is
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`“exceedingly unlikely” that those encoders will all have identical compression
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`rates. Rep. 13-16. As explained in the POR, differences in compression rates that
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`arise as a side effect of including multiple encoders to address multiple data types,
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`compression ratios, or output bitrates cannot meet limitation 1[B]. POR 7-15, 25-
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`26, 30-31. As with the Petition, the Reply points to no indication from the prior art
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`that Imai or Pauls would use encoders with different compression rates because
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`they are designed to have different compression rates. Petitioner thus cannot show
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`that the prior art discloses limitation 1[B].
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`IV. The Reply fails to demonstrate that the Petition established a motivation
`to combine Imai and Pauls
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`It is not sufficient to allege that the prior art could be combined; rather, the
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`petition must show why it would be combined. Personal Web, 848 F.3d at 993-94
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`(“Obviousness concerns whether a skilled artisan not only could have made but
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`would have been motivated to make the combinations or modifications of prior art
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`to arrive at the claimed invention.”) (emphasis original; internal citations and
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`quotations omitted).
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`In its Response, Patent Owner demonstrated that the Petition does not
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`explain why a POSITA would use the particular encoders mentioned in Pauls when
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`modifying Imai to compress video data. POR 49-58. The POR explained that the
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`Petition’s purported motivation to combine—based on (1) Imai’s suggestion that
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`its teachings could be combined with video encoders, (2) similarities between the
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`references, and (3) the alleged simplicity of the modification—amounted only to a
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`reasons why a POSITA would “look towards” Pauls and not any reason why a
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`POSITA would make the suggested combination: including Pauls’ particular
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`encoders in Imai’s system. Id.
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`Petitioner’s Reply does not address those criticisms, and instead only repeats
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`that (1) Imai indicates that its teachings are applicable to video, (2) Pauls is similar
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`to Imai, and (3) Pauls discloses video encoders. Rep. 16-17. The Board should thus
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`conclude that the Petition does not provide any reason why a POSITA would make
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`the proposed combination.
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`Petitioner also attempts to distinguish Personal Web on the grounds that the
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`combination there was more complicated than Petitioner’s. Rep. 19-20 (“Here, the
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`combination simply substitutes one element from a similar technology . . . .”). But
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`Personal Web’s holding pertains to the definition of the motivation to combine in
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`the obviousness inquiry; it is not limited to only complex combinations. See 848
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`F.3d at 993-94 (“Obviousness concerns whether a skilled artisan not only could
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`have made but would have been motivated to make the combinations ….”)
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`(emphasis original; internal citations and quotations omitted). Put simply, by
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`alleging that a POSITA would only “look towards” Pauls, the Petition alleges only
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`that a POSITA could have included Pauls’ encoders in Imai. A proper motivation
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`to combine includes an explanation of why a POSITA would have done so. Id.
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`Ground 1 therefore fails for the additional reason that it contains no reason a
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`POSITA would make the combination it proposes.
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`V. The Petition does not address the tradeoffs inherent in its motivation to
`modify Pauls’s encoders
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`A mere motivation to consider the possibility of a particular combination is
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`not adequate evidence of a motivation to combine the prior art in the manner
`
`necessary to arrive at the claimed invention. Personal Web Tech. v. Apple, 848
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`F.3d at 993-94 (“Obviousness concerns whether a skilled artisan not only could
`
`have made but would have been motivated to make the combinations or
`
`modifications of prior art to arrive at the claimed invention.”) (emphasis original;
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`internal citations and quotations omitted).
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`A motivation to combine cannot be established where the combination
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`would result in tradeoffs, and the petition fails to consider—much less evaluate—
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`the countervailing harms or losses from the proposed tradeoff. Winner Int'l Royalty
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`Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000) (“Trade-offs often concern
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`what is feasible, not what is, on balance, desirable. Motivation to combine requires
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`the latter.”). Thus, “the benefits, both lost and gained, should be weighed against
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`one another” before a motivation to combine can be found. Id. at 1349 n.8.
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`The POR explained that modifying Pauls’ encoders to use an arithmetic
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`mode or include an additional arithmetic encoder would entail costs in the form of
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`reduced speed and compatibility, and that the Petition provides no explanation for
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`why a POSITA would make the alleged modifications despite those disadvantages.
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`POR 60-61. The Reply provides no explanation of why a POSITA would make the
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`modification in light of the costs. Instead, Petitioner argues that it has no burden to
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`justify its motivation to combine because the caselaw cited in the POR is
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`inapplicable. Rep. 18-19. Petitioner’s interpretation of the caselaw is again
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`incorrect.
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`First, the Reply argues that “Winner was decided under the TSM test of yore
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`. . . and its analysis pertains to an obsolete approach to the obviousness inquiry”
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`and that it imposes “the same sort of ‘rigid rule’ that improperly limits the
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`questions of obviousness that the Supreme Court rejected in KSR.” Rep. 18.
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`However, KSR explicitly stated that it was not calling into question all Federal
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`Circuit caselaw under the TSM test. 550 U.S. at 422. KSR specifically listed
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`conceptions of the TSM test that allowed implicit teachings to constitute a
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`motivation to combine as examples of “broader conceptions[s] of the TSM test”
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`that were not called into question. Id. (listing as examples “Our suggestion test is
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`in actuality quite flexible and not only permits, but requires, consideration of
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`common knowledge and common sense” and “There is flexibility in our
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`obviousness jurisprudence because a motivation may be found implicitly in the
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`prior art. We do not have a rigid test that requires an actual teaching to combine . .
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`. ”). And the Winner Court applied such a broad conception of the TSM test:
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`“Evidence of a suggestion, teaching, or motivation to combine prior art references
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`may flow, inter alia, from the references themselves, the knowledge of one of
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`ordinary skill in the art, or from the nature of the problem to be solved.” 202 F.3d
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`at 1348. Thus, KSR does not limit Winner.
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`Moreover Winner’s conclusion that a motivation to combine should address
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`tradeoffs is based on the notion that “Trade-offs often concern what is feasible, not
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`what is, on balance, desirable. Motivation to combine requires the latter.” Id. at
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`1349. That understanding of motivation to combine is equivalent to the Federal
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`Circuit’s post-KSR understanding. See, e.g., Personal, 848 F.3d at 993-94 (Fed.
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`Cir. 2017) (“Obviousness concerns whether a skilled artisan not only could have
`
`made but would have been motivated to make the combinations or modifications of
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`prior art to arrive at the claimed invention.”) (emphasis original; internal citations
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`and quotations omitted). Thus, Winner is entirely consistent with KSR.
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`Second, the Reply argues that “Realtime distorts [Winner]” because the
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`Court’s “call for ‘benefits, both lost and gained, should be weighed against one
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`another’ is a caution not to ignore the benefits of making a combination rather than
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`dictating a rigid balancing test.” Rep. 18. But Realtime does not argue that the
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`benefits should be ignored. Rather, the POR explained that the Petition ignores the
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`costs. POR 60-61. Winner states that a proper motivation to combine should
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`address “both.” 202 F.3d at 1349 n.8. (“Instead, the benefits, both lost and gained,
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`should be weighed against one another.”). The Petition does not address the
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`admitted costs of its modification, and the Reply does not argue otherwise.
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`The Reply also contends that Apple v. Realtime Data is inapplicable because
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`the patent owner in that case “provided evidence . . . which contradicted the
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`petitioner’s rationale for combination.” Rep. 19. But here too, Patent Owner has
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`provided evidence—Petitioner’s own evidence—that contradicts its motivation to
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`combine
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