`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
`____________________
`
`Case IPR2019-01035
`Patent 9,769,477
`____________________
`
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`TABLE OF CONTENTS
`Introduction ................................................................................................ 1
`I.
`Summary of Argument ................................................................................ 1
`II.
`III. Person of Skill in The Art ............................................................................. 2
`IV. The ’477 Patent (Ex. 1001) .......................................................................... 4
`V. Claim Construction .................................................................................... 10
`A.
`“throughput” ........................................................................................ 10
`VI. Overview of Prior Art ................................................................................ 11
`A. Overview of Brooks Reference (Ex. 1006) .............................................. 11
`B. Overview of the ’468 Application (Ex. 1007) .......................................... 13
`VII.
`Petitioner’s Ground 1 Anticipation Argument Fails ................................ 14
`VIII. Ground 1: Limitation 1[b]: “wherein a first asymmetric data compression
`encoder of the plurality of different asymmetric data compression encoders is
`configured to compress data blocks containing video or image data at a higher
`data compression rate than a second asymmetric data compression encoder of
`the plurality of different asymmetric data compression encoders” ................... 15
`A. The requirements of Limitation 1[b]. ..................................................... 16
`B. Brooks does not disclose a first encoder configured to compress data at a
`higher compression rate than a second encoder. .......................................... 19
`1. Brooks’ general references to MPEG-class compression standards do
`not disclose different “compression rates” between encoders or algorithms.
`
`21
`2.
`The ’468 Application does not expressly disclose different encoders that
`compress at different compression rates. ...................................................... 28
`C. Petitioner’s anticipation argument fails as a matter of law. ................... 31
`D. A POSITA would not understand that Brooks expressly or inherently
`discloses Limitation 1[b] ............................................................................... 34
`IX. Ground 1: Limitation 20[c] “wherein at least one of the plurality of video
`data compression encoders is configured to utilize an arithmetic data
`compression algorithm” ................................................................................... 36
`
`
`
`i
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`A. Brooks does not disclose or imply arithmetic data compression
`algorithms. ................................................................................................... 36
`B. Petitioner’s reliance on extrinsic evidence to fill in gaps in its anticipation
`theory is improper. ....................................................................................... 44
`C. Petitioner’s anticipation theory fails. .................................................... 45
`X. Petitioner’s Ground 2 Theory (Obviousness Based on Brooks) Fails. ........... 46
`XI. None of the Challenged Claims Are Proven to Be Invalid ........................... 47
`XII.
`Conclusion ............................................................................................. 48
`
`
`
`
`
`
`
`ii
`
`

`

`
`
`
`
`
`EXHIBIT LIST
`
`Pursuant to 37 C.F.R. § 42.63(e), Patent Owner Realtime Adaptive Streaming,
`
`LLC hereby submits its exhibit list associated with the above-captioned inter partes
`
`review of U.S. Patent No. 9,769,477.
`
`2008
`
`2009
`
`2010
`
`2011
`
`Exhibit No. Description
`2007
`Declaration of Kenneth A. Zeger, Ph.D., in Support of Patent
`Owner’s Response
`
`Transcript of February 18, 2020 Deposition of Dr. Jeffrey J.
`Rodriguez
`
`ITU-T Rec. H.262 (1995 E) (Information Technology – Generic
`Coding of Moving Pictures and Associated Audio Information)
`
`ITU-T Rec. H.263 (03/96) (Video Coding for Low Bit Rate
`Communication)
`
`Cote et al., H.263+: Video Coding at Low Bit Rates (IEEE
`Transactions on Circuits and Systems for Video Technology, Vol.
`8, No. 7, November 1998)
`
`Wiegand & Marpe, Context-Based Adaptive Binary Arithmetic
`Coding in the H.264/AVC Video Compression Standard (IEEE
`Transactions on Circuits and Systems for Video Technology,
`2003)
`
`
`2012
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`I.
`
`Introduction
`
`Patent Owner Realtime Adaptive Streaming, LLC (“Realtime” or “Patent
`
`Owner”) submits this response to the Petition (Paper 1) filed by Google LLC
`
`(“Google” or “Petitioner”) requesting inter partes review (“IPR”) of claims 1, 3, 4,
`
`7, 9, 16, 17, 20, 21, and 22 of U.S. Patent No. 9,769,477 (Ex. 1001, the “’477
`
`Patent”). The Board granted institution on all challenged claims on the two asserted
`
`grounds of unpatentability constituting (1) anticipation based on U.S. Patent No.
`
`7,143,432 (“Brooks”) (Ex. 1006); and (2) an obviousness combination comprising
`
`Brooks and U.S. Provisional Patent Application 60/157,468 (“’468 Application”)
`
`(Ex. 1007). See Paper 10 (Institution Decision). Patent Owner respectfully submits
`
`that the arguments presented herein and the additional evidence submitted herewith,
`
`such as the testimony from Patent Owner’s expert witness Kenneth A. Zeger (see,
`
`e.g., Ex. 2007, Declaration of Kenneth A. Zeger Ph.D., “Zeger Decl.”), demonstrate
`
`that the challenged claims are not anticipated Brooks, or rendered obvious by Brooks
`
`in view of the ’468 Application.
`
`II.
`
`Summary of Argument
`
`As discussed in this Patent Owner’s Response, each of Petitioner’s two
`
`grounds fail:
`
`• Ground 1: The Petition fails to show that Brooks anticipates challenged
`claims 1, 3, 4, 7, 9, 16, 17, 20, 21, and 22. The Petition’s theory against
`independent claim 1 asserts that Brooks teaches a plurality of asymmetric
`
`
`
`1
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`data compression encoders configured to perform data compression at
`different compression rates. Petitioner argues that Brooks discloses MPEG
`compression standards and argues that a person of ordinary skill would
`have understood an encoder compliant with those standards would have
`had different of compression ratios, and that different compression ratios
`result in different compression rates. However, in the context of video
`compression techniques taught in Brooks, it is not possible to infer a
`relationship between compression ratios and compression rates without
`information wholly absent from and not suggested by Brooks. The
`Petition’s theory against independent claim 20 fails because Brooks does
`expressly disclose the use of an “arithmetic data compression algorithm,”
`nor would a POSITA have understood Brooks to contain such teaching.
`• Ground 2: The Petition fails to show that either Brooks or the ’468
`Application contain disclosures showing (1) different asymmetric data
`compression encoders that perform compression at different compression
`rates, and (2) the use of an arithmetic data compression algorithm
`
`As discussed further below, neither of the Petition’s two grounds establish
`
`invalidity of the challenged claims. Because all grounds fail, Petitioner has not met
`
`its burden to show that any challenged claim is invalid
`
`III. Person of Skill in The Art
`Petitioner and its expert, Dr. Jeffrey J. Rodriguez, propose that a person of
`
`ordinary skill (“POSITA”) would “at the time of the alleged invention of the ’477
`
`patent would have had a bachelor’s degree in electrical engineering, computer
`
`science, or the equivalent, and three or more years of experience with data
`
`
`
`2
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`compression systems and algorithms, including video and image coding.”
`
`Declaration of Jeffrey J. Rodriguez (“Rodriguez Declaration” or “Rodriguez Decl.”),
`
`Ex. 1002, ¶ 16.
`
`Based on Dr. Zeger’s understanding of the state of the art at the time of the
`
`priority date of the ’477 patent as well as his familiarity with the field of data
`
`compression at the time, Patent Owner propose that a person of ordinary skill at the
`
`time of the invention would have had “a bachelor’s degree in electrical engineering,
`
`computer science, or a similar field with at least two years of experience in data
`
`compression” or that such a person would have had “a master’s degree in electrical
`
`engineering, computer science, or a similar filed with a specialization in data
`
`compression.” This is the same level of skill that the experts and the Board adopted
`
`in another IPR on the ’477 patent. See IPR2018-01187, Paper 39 at 12. See Zeger
`
`Decl. ¶ 28.
`
`Patent Owner’s proposal is generally consistent with Dr. Rodriguez’s opinion
`
`for the level of skill, except he describes a person of ordinary skill has having “three
`
`or more years of experience with data compression systems and algorithms,
`
`including video and image coding.” As Dr. Zeger explains, a POSITA would not
`
`necessarily need three years of experience and experience with video and image
`
`coding. See Zeger Decl. ¶¶ 29-30.
`
`
`
`3
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`Other experts who have submitted declarations in support of petitioners in
`
`inter partes review proceedings concerning the ’477 patent have offered similar
`
`opinions to Dr. Zeger’ concerning the level of skill. In IPR2018-01187 and IPR2018-
`
`01630, for example, Dr. James Storer opined on behalf of the petitioners that a
`
`POSITA in the context of the ’477 patent would have had “at least two years of
`
`experience in data compression.” In IPR2018-01413, Dr. Chandrajit Bajaj provided
`
`a declaration that also opined that a POSITA in the context of the ’477 patent would
`
`have had “two or more years of experience … in analysis, design, or development
`
`related to media compression.”
`
`IV. The ’477 Patent (Ex. 1001)
`The ’477 patent is directed to “a system and method for compressing and
`
`decompressing based on the actual or expected throughput (bandwidth) of a system
`
`employing data compression and a technique of optimizing based upon planned,
`
`expected, predicted, or actual usage.” Ex. 1001, 7:66-8:3, Summary of the Invention.
`
`For example, the patent solves bottlenecks in the throughput of a system by selecting
`
`different compression routines based on the throughput of the system to compress
`
`data before transmission. Id. at 9:58–67. Fig. 1 shows one embodiment:
`
`
`
`4
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`
`
`In another embodiment, the controller 11 uses information comprising a
`
`plurality of data profiles 15 to determine which compression algorithms 13 should
`
`be used by the data compression system 12. Id. at 11:9–12. The compression
`
`algorithms 13 comprise one or more “asymmetric algorithms.” Id. at 11:12–20. See
`
`also Zeger Decl. ¶¶ 33-34.
`
`Another embodiment of the ’477 patent is shown in Figure 2, reproduced here:
`
`
`
`5
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`
`
`Figure 2 illustrates a method for providing bandwidth sensitive data
`
`compression. Ex. 1001, at 13:25-27. The data compression system is initialized
`
`during a boot-up process after a computer is powered on and a default
`
`compression/decompression routine is initiated. Id. at 13:31-34. The default
`
`algorithm is asymmetric, and such asymmetric algorithms provide a “high
`
`
`
`6
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`compression ratio (to effectively increase the storage capacity of the hard disk) and
`
`fast data access (to effectively increase the retrieval rate from the hard disk).” Id. at
`
`13:35-45. See also Paper 39, IPR2018-01187; Zeger Decl. ¶ 36.
`
`The ’477 patent further states that it is “preferable to utilize an asymmetrical
`
`algorithm that provides a slow compression routine and a fast decompression routine
`
`so as to provide an increase in the overall system performance as compared to
`
`performance that would be obtained using a symmetrical algorithm.” Id. at 12:23-
`
`28. Symmetrical routines referenced in the ’477 patent include, for example,
`
`“arithmetic coding,” “dictionary compression, Huffman coding, and run-length
`
`coding.” Id. at 5:11-14. In one embodiment, the ’477 patent discloses a controller
`
`which “tracks and monitors the throughput … of the data compression system 12.”
`
`Id. at 10:54-57. When the throughput falls below a “predetermined threshold,” the
`
`controller “generates control signals to enable/disable different compression
`
`algorithms 13.” Id. at 10:55-58. See Zeger Decl. ¶ 37.
`
`Claim 1 of the ‘477 patent is as follows:
`
`1[pre] A system, comprising:
`
`1[a] a plurality of different asymmetric data compression encoders,
`wherein each asymmetric data compression encoder of the plurality of
`different asymmetric data compression encoders is configured to utilize
`one or more data compression algorithms, and
`
`
`
`7
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`1[b] wherein a first asymmetric data compression encoder of the
`plurality of different asymmetric data compression encoders is
`configured to compress data blocks containing video or image data at a
`higher data compression rate than a second asymmetric data
`compression encoder of the plurality of different asymmetric data
`compression encoders; and
`
`1[c] one or more processors configured to: determine one or more data
`parameters, at least one of the determined one or more data parameters
`relating to a throughput of a communications channel measured in bits
`per second; and
`
`1[d] select one or more asymmetric data compression encoders from
`among the plurality of different asymmetric data compression encoders
`based upon, at least in part, the determined one or more data parameters.
`
`Challenged claims 3, 4, 7, 9, 16, and 17 all depend directly or indirectly from
`
`independent claim 1. For example, dependent claim 3 recites: “The system of claim
`
`1, wherein the throughput of the communications channel comprises: an estimated
`
`throughput of the communications channel.” See Zeger Decl. ¶¶ 38-29.
`
`Independent claim 20 includes a limitation regarding an arithmetic data
`
`compression algorithm and other differences. Claim 20 recites as follows:
`
`20[pre] A system comprising;
`
`20[a] a plurality of video data compression encoders;
`
`
`
`8
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`20[b] wherein at least one of the plurality of video data compression
`encoders is configured to utilize an asymmetric data compression
`algorithm, and
`
`20[c] wherein at least one of the plurality of video data compression
`encoders is configured to utilize an arithmetic data compression
`algorithm,
`
`20[d] wherein a first video data compression encoder of the plurality of
`video data compression encoders is configured to compress at a higher
`compression ratio than a second data compression encoder of the
`plurality of data compression encoders; and
`
`20[e] one or more processors configured to: determine one or more data
`parameters, at least one of the determined one or more data parameters
`relating to a throughput of a communications channel; and
`
`20[f] select one or more video data compression encoders from among
`the plurality of video data compression encoders based upon, at least in
`part, the determined one or more data parameters.
`
`Claims 21 and 22 depend directly or indirectly from independent claim 20.
`
`For example, dependent claim 21 recites: “The system of claim 20, wherein the
`
`throughput of the communications channel comprises: an estimated or expected
`
`throughput of the communications channel.” See Zeger Decl. ¶¶ 40-41.
`
`
`
`9
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`V. Claim Construction
`A.
`“throughput”
`The Board preliminarily construed “throughput” to mean “bandwidth (i.e.,
`
`amount of data unit per time).” Institution Decision at 20. Patent Owner does not
`
`believe this term requires construction because of the disputes at issue in this IPR.
`
`But if the Board is inclined to adopt this construction, Dr. Zeger’s declaration
`
`provides some additional context regarding the meaning of the term “bandwidth” in
`
`the context of the ’477 patent. See Zeger Decl. ¶ 42.
`
`The word “bandwidth” is used in several different ways by POSITAs. The
`
`three most common usages of “bandwidth,” in Dr. Zeger’s experience, are: (1) the
`
`difference between the largest and smallest frequencies in a band of spectrum, i.e.,
`
`the width of the frequency band (for example, “AM radio stations use 10 KHz
`
`bandwidths.”); and (2) the capacity of a communications channel, measured in bits
`
`per second, i.e., the maximum amount (i.e. an upper bound) of data that could
`
`potentially be transmitted across the channel. For example: “Some fiber optic
`
`internet connections have bandwidths up to 10 Gigabits per second.” And (3)
`
`bandwidth may also be used to refer to the amount of data flowing through a data
`
`channel, which is constricted by the capacity of the channel. See Zeger Decl. ¶ 43.
`
`The Abstract of the ’477 patent uses the phrase “throughput (bandwidth).”
`
`The ’477 patent uses the term “throughput” to mean the third type of “bandwidth”
`
`
`
`10
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`described above: that is, “throughput” in the ’477 patent refers to the amount of data
`
`flowing through a data channel. The ’477 patent states, for example: “In a preferred
`
`embodiment, when the controller determines that the system throughput falls below
`
`a predetermined
`
`throughput
`
`threshold,
`
`the controller commands
`
`the data
`
`compression engine to use a compression routine providing a faster rate of
`
`compression so as to increase the throughput.” ’477 patent, at 8:13-18. “Throughput
`
`of a communications channel” in the context of the ’477 patent does not necessarily
`
`refer to the capacity of a given channel, which does not vary. See ’477 patent, at
`
`8:48-51 (“tracking the throughput of the data processing system to determine if the
`
`first compression rate provides a throughput that meets a predetermined throughput
`
`threshold”); 10:54-55 (“The controller tracks and monitors the throughput (e.g., data
`
`storage and retrieval) of the data compression system”). See Zeger Decl. ¶ 44.
`
`VI. Overview of Prior Art1
`A. Overview of Brooks Reference (Ex. 1006)
`
`“Brooks” refers to U.S. Patent No. 7,143,432 to Brooks et al., which is in the
`
`record as Exhibit 1006.
`
`
`
`1 See Zeger Decl. ¶¶ 45-51.
`
`11
`
`
`
`
`
`
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`Brooks is directed to “systems for transcoding and transforming video
`
`streams.” Ex. 1006, at 3:8-9. Brooks teaches an “apparatus for adapting input
`
`streams of video data to meet desired parameters for output streams of video data”
`
`and “[o]n the fly adaption to desired output parameters [for] display size, frame rate,
`
`bit-depth, bit rate, encoding format, and the like.” Id. at 3:10-14.
`
`One embodiment of Brooks is shown in Figure 1, reproduced below.
`
`
`
`Brooks teaches that “gateway computer 100 is configured to receive video
`
`data from computer system 110 and to provide video data to each device according
`
`to that device’s bandwidth limitations, and in the output format desired.” Id. at 7:8-
`
`
`
`12
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`11. Brooks provides that a wide range of media compression formats are envisioned
`
`to be used with embodiments, including “M-JPEG, GIF, MPEG format, H.263
`
`format, Windows Media format, Quicktime format, Real Video format, or the like.”
`
`Id. at 9:60-62; see also id. at 10:8-10 (“JPEG, JPEG-2000, GIF, WBMP, MPEG-1,
`
`MPEG-2, MPEG-4, H.263, *.avi, *.mov, *.rm, *.aff, and the like.”).
`
`Brooks does not expressly discuss or teach several concepts relevant to the
`
`challenged claims: (1) “compression rate,” which is the execution speed of a
`
`compression algorithm; (2) arithmetic compression, which is a form of entropy
`
`encoding. Brooks does not discuss compression algorithms or video compression
`
`algorithms in any detail. It merely lists a dozen or more algorithms in cursory fashion
`
`as indicated in the previous paragraph.
`
`B. Overview of the ’468 Application (Ex. 1007)
`
`The ’468 Application refers to U.S. Provisional Patent Application
`
`60/157,468, filed on October 1, 1999, and is in the record as Exhibit 1007. Brooks
`
`claims priority to the ’468 Application. Dr. Rodriguez asserts that the ’468
`
`Application is incorporated by reference in the specification of Brooks “for all
`
`purpose [sic].” See Rodriguez Decl. ¶ 72. For purposes of this IPR, Patent Owner
`
`assumes the correctness of Dr. Rodriguez’s position that the ’468 Application is
`
`incorporated by reference into Brooks.
`
`
`
`13
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`The ’468 Application and Brooks have similar disclosures, and the ’468
`
`Application “provides additional details regarding the known MPEG encoders
`
`disclosed in Brooks.” Institution Decision, at 36.
`
`VII. Petitioner’s Ground 1 Anticipation Argument Fails
`As discussed further below, Petitioner’s Ground 1 anticipation argument
`
`fails because Brooks does not contain any express, implied, or inherent disclosure
`
`of Limitations 1[b] and 20[c]. “In order to anticipate the claimed invention, a prior
`
`art reference must ‘disclose all elements of the claim within the four corners of the
`
`document,’ and it must ‘disclose those elements “arranged as in the claim.’”
`
`Microsoft Corporation v. Biscotti, Inc., 878 F.3d 1052, 1068-70, 125 U.S.P.Q.2d _
`
`(Fed. Cir. 2017). Petitioner fails to show that these limitations are expressly
`
`disclosed or implied based on the disclosures of Brooks.
`
`Importantly, to establish anticipation, a petitioner is not allowed to “fill in”
`
`missing claim limitations not disclosed in some manner in the reference, by
`
`arguing that one of skill in the art would at once envisage using the missing
`
`limitation. See, e.g., Nidec Motor Corporation v. Zhongshan Broad Ocean Motor
`
`Co. Ltd, 851 F.3d 1270, 1274-75 (Fed . Cir. 2017) (reversing anticipation rejection
`
`made in an IPR proceeding because substantial evidence did not support the
`
`Board’s finding that a certain claim limitation was disclosed in the prior art
`
`reference and the Board erred in construing Kennametal as permitting the Board to
`
`
`
`14
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`find anticipation despite a missing claim limitation if one of skill allegedly would
`
`“at once envisage” the missing limitation); SRI International, Inc. v. Cisco
`
`Systems, Inc., 179 F. Supp. 3d 339, 357-358 (D. Del. 2016), aff'd, 930 F.3d 1295,
`
`1307-08 , (denying summary judgment of anticipation, and sua sponte granting
`
`summary judgment of no anticipation, where prior art reference failed to disclose a
`
`specific claim limitation and rejecting accused infringer's attempt to apply
`
`Kennametal to show that the missing limitation would allegedly be immediately
`
`apparent to one of skill in the art); Wonderland Nurserygoods Co., Ltd. v. Baby
`
`Trend, Inc., 2018 WL 1870676, *2 (Fed. Cir. 2018) (nonprecedential) (in an IPR,
`
`rejecting petitioner's contention that the prior art reference met a claim limitation
`
`requiring a single continuous piece and stating “While it is possible that a single,
`
`continuous piece could be used in Vaiano, that is not the question before us.
`
`Instead, we ask whether Vaiano discloses a single, continuous piece. Substantial
`
`evidence does not support the Board's finding that it does.”).
`
`VIII. Ground 1: Limitation 1[b]: “wherein a first asymmetric data
`compression encoder of the plurality of different asymmetric data
`compression encoders is configured to compress data blocks containing
`video or image data at a higher data compression rate than a second
`asymmetric data compression encoder of the plurality of different
`asymmetric data compression encoders”
`Petitioner fails to show that claim limitation 1[b] is satisfied. Brooks does not
`
`teach “a first asymmetric data compression encoder … configured to compress data
`
`
`
`15
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`blocks containing video or image data at a higher data compression rate than a
`
`second asymmetric data compression encoder.” See Zeger Decl. ¶ 52.
`
`A. The requirements of Limitation 1[b].
`Limitation 1[b] requires a plurality of “different asymmetric data compression
`
`encoders” including a “first asymmetric data compression encoder” and a “second
`
`asymmetric data compression encoder.” It further requires that the first encoder “is
`
`configured to compress data blocks containing video or image data at a higher data
`
`compression rate” than the second encoder. A POSITA would understand higher
`
`data compression rate to mean to faster compression speed, i.e., an encoder that
`
`compresses more units of data per unit of time. See Zeger Decl. ¶ 53.
`
`A POSITA would further understand the “configured to” language to mean
`
`that the relationship between the first and second encoders’ compression rates cannot
`
`arise by chance or as a side effect of some other design choice. Zeger Decl. ¶ 54. In
`
`other words, a POSITA would understand the claim’s recitation of “configured” to
`
`require that the “first encoder” must compress at a higher rate than the “second
`
`encoder” because it is configured, i.e., designed to do so. Id. For the same reasons,
`
`a system that has the capability or possibility of having two encoders with
`
`differences in compression rates would not disclose the first encoder and second
`
`encoder “configured to” as required by the claim. Id.
`
`
`
`16
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`The ‘477 patent’s specification supports that understanding, as it uses
`
`“configured to” to convey a purposeful design as opposed to a side effect or
`
`accidental arrangement. See Zeger Decl. ¶ 55. For instance, the specification
`
`describes design features that can more efficiently use space on a disk, followed by
`
`the statement: “In this way, a system can be configured to achieve greater speed,
`
`while not sacrificing disk space.” Ex. 1001 at 18:26-41. See also Zeger Decl. ¶ 55.
`
`The specification also describes a “programmable logic device” being
`
`“configured for its environment.” Id. at 16:37-40. A POSITA would understand that
`
`a “programmable” device is not “configured for its environment” on accident, but
`
`rather is intentionally programmed to operate in a specific and consistent manner
`
`with its environment in mind. Zeger Decl. ¶ 56.
`
`In both examples the “configuring” is an intentional design choice through
`
`programmed logic rather than a chance occurrence. Zeger Decl. ¶ 57. And the design
`
`is for the specific purpose for which the “system” or “programmable logic device”
`
`is “configured,” i.e., to “achieve greater speed” or be programmed “for its
`
`environment.” Id. The configuring aspect of the invention is not the side effect of a
`
`design choice with some other purpose. Id.
`
`A person of ordinary skill would also understand that the usage of “configured
`
`to” cannot be met by an accidental difference in compression rates or a difference in
`
`compression rates arising as a side effect of some other choice because the invention
`
`
`
`17
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`relies on the predictable relationship between the compression rates of the two
`
`recited encoders. Zeger Decl. ¶ 58. The invention would not work if the relationship
`
`were reversed. Id.
`
`The specification describes switching from an encoder having a relatively
`
`slow compression rate to one having a “faster rate of compression” when the
`
`“throughput falls below a predetermined threshold” “so as to increase the
`
`throughput.” Ex. 1001 at 8:12-18. If the configuration of the encoders were reversed,
`
`the opposite would occur: the system would switch from the relatively fast encoder
`
`to the relatively slow encoder, which would reduce the throughput and exacerbate
`
`the bottleneck at the encoder that the invention seeks to remedy. See Zeger Decl. ¶
`
`59.
`
`In Patent Owner’s view, the predictable arrangement of the encoders in the
`
`prior art is crucial. A difference in two encoders’ compression rates that is not
`
`specifically planned would not suffice for the “first asymmetric data compression
`
`encoder” and the “second asymmetric data compression encoder” to serve their
`
`purposes. See Zeger Decl. ¶ 60. Thus, limitation 1[b] has the following requirements:
`
`(1) “a first asymmetric data compression encoder” that is (2) designed to or
`
`configured to (3) compress at a greater “compression rate” (more input data per unit
`
`of time) than (4) “a second asymmetric data compression encoder.” Id. ¶ 61.
`
`
`
`18
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`B.
`
`Brooks does not disclose a first encoder configured to compress
`data at a higher compression rate than a second encoder.
`Brooks does not disclose or teach a first encoder configured to compress data
`
`at a higher compression rate than a second encoder. As an initial matter, Brooks
`
`mentions compression ratios in passing and does not contain any disclosure about
`
`compression rates or speeds. Brooks is not concerned with encoders’ compression
`
`speed or optimizing compression speed against considerations such as compression
`
`ratio. See Zeger Decl. ¶ 62. Further, Brooks does not disclose or teach configuring
`
`two encoders such that the first has a higher compression rate than the second
`
`encoder. To the extent that any encoders are configured or selected, that
`
`configuration or selection is not based on compression rate. Id.
`
`For the claim limitation “configured to compress data blocks … at a higher
`
`data compression rate than a second asymmetric data compression encoder,” Dr.
`
`Rodriguez contends that Brooks teaches “MPEG-1, MPEG-2, MPEG-4, and H.263
`
`encoders” and that these encoders are “configured to utilize one or more data
`
`compression algorithms, each having a unique compression profile and level.”
`
`Rodriguez Decl. ¶ 77. Though Brooks does not expressly contain any teaching about
`
`“profile” and “level” settings, Dr. Rodriguez contends that it was “well known to a
`
`person of ordinary skill” that the MPEG standards contained profile and level
`
`definitions. Id. ¶ 74. Those profile and level settings, Dr. Rodriguez states, result in
`
`“different compression ratios” and thus would “typically” result in “different
`
`
`
`19
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`compression processing rates” and thus satisfy the claim element. Id. ¶ 77; see also
`
`See Zeger Decl. ¶ 63.
`
`Separately, Dr. Rodriguez contends that the ’468 Application teaches
`
`“MPEG-4 using I and P frames (resulting in more compression) will burden the CPU
`
`more than MPEG using only I frames (resulting in less compression).” The ’468
`
`Application comments, in a footnote, as follows:
`
`The output video format is dependent on the processing capabilities of
`the CPU. In particular, in order to achieve 64kbps or less, we expect
`that both I & P MPEG-4 frames are needed; this w ill burden the CPU
`(amount?). If the CPU cannot support the computation of B & P frames,
`then only I frame MPEG video will be generated at either low frame
`rates or higher bandwidths.
`Ex. 1007, at 7; see also id. at 18. According to Dr. Rodriguez, this language from
`
`the ’468 Application establishes that, given a particular input, encoding “using
`
`different combinations of I, B, and/or P frames” is a disclosure of not only “different
`
`compression ratios” but also “different compression rates” and thus allegedly
`
`satisfies the claim. Rodriguez Decl. ¶ 78-79. See Zeger Decl. ¶ 64.
`
`Dr. Rodriguez’s opinions about both Brooks and the ’468 Application are
`
`incorrect, for the reasons explained below. None the disclosures cited by Petitioner
`
`contain any express, implied, or inherent disclosure of the requirements of
`
`Limitation 1[b].
`
`
`
`20
`
`

`

`
`
`
`
`IPR2019-01035 (’477 Patent)
`
`1.
`
`Brooks’ general references to MPEG-class compression
`standards do not disclose different “compression rates”
`between encoders or algorithms.
`As an initial matter, the specification of the ’477 patent makes clear that “data
`
`compression rate” refers to the “execution speed of the algorithm.” Ex. 1001, at 1:63-
`
`67. This is the plain and ordinary meaning of the phrase “compression rate” in the
`
`context of the ’477 patent – i.e., the speed of the compression algo