`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC
`Patent Owner
`
`_________________
`
`Patent No. 9,769,477
`_________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,769,477
`
`
`
`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES ............................................................................. 1
`III.
`PAYMENT OF FEES ..................................................................................... 4
`IV. GROUNDS FOR STANDING ........................................................................ 4
`V.
`PRECISE RELIEF REQUESTED AND GROUNDS RAISED ..................... 4
`VI. LEVEL OF ORDINARY SKILL .................................................................... 5
`VII. OVERVIEW OF THE ’477 PATENT AND THE PRIOR ART .................... 5
`A.
`The ’477 Patent ..................................................................................... 5
`B.
`Prosecution History of the ’477 Patent ................................................. 8
`C.
`Brooks .................................................................................................... 9
`VIII. CLAIM CONSTRUCTION .......................................................................... 15
`IX. DETAILED EXPLANATION OF GROUNDS ............................................ 18
`A. Ground 1: Brooks Anticipates Claims 1, 3, 4, 7, 9, 16, 17, and
`20–22 ................................................................................................... 18
`1.
`Claim 1 ...................................................................................... 18
`2.
`Claim 3 ...................................................................................... 46
`3.
`Claim 4 ...................................................................................... 48
`4.
`Claim 7 ...................................................................................... 49
`5.
`Claim 9 ...................................................................................... 50
`6.
`Claim 16 .................................................................................... 51
`7.
`Claim 17 .................................................................................... 54
`8.
`Claim 20 .................................................................................... 56
`9.
`Claim 21 .................................................................................... 58
`10. Claim 22 .................................................................................... 58
`i
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`

`

`B.
`
`Petition for Inter Partes Review
`Patent No. 9,769,477
`Ground 2: Brooks Renders Obvious Claims 1, 3, 4, 7, 9, 16, 17,
`and 20–22 ............................................................................................ 60
`X. ANY ARGUMENT FOR A DISCRETIONARY DENIAL SHOULD
`BE REJECTED .............................................................................................. 67
`XI. CONCLUSION .............................................................................................. 71
`
`
`
`
`
`
`ii
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`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`
`LIST OF EXHIBITS
`
`Ex. 1001
`
`U.S. Patent No. 9,769,477
`
`Ex. 1002
`
`Declaration of Dr. Jeffrey J. Rodriguez
`
`Ex. 1003
`
`Curriculum Vitae of Dr. Jeffrey J. Rodriguez
`
`Ex. 1004
`
`Prosecution History of U.S. Patent No. 9,769,477
`
`Ex. 1005
`
`U.S. Patent No. 6,920,150 to Pauls et al.
`
`Ex. 1006
`
`U.S. Patent No. 7,143,432 to Brooks et al. (“Brooks”)
`
`Ex. 1007
`
`Provisional Application No. 60/157,468
`
`Ex. 1008
`
`Richardson, H.264 and MPEG-4 Video Compression – Video
`Coding for Next-generation Multimedia
`
`Ex. 1009
`
`U.S. Patent No. 6,031,937 to Graffagnino
`
`Ex. 1010
`
`International Publication No. WO 99/26130 to Kobata
`
`Ex. 1011
`
`U.S. Patent No. 5,774,206 to Wasserman
`
`Ex. 1012
`
`U.S. Patent No. 6,130,880 to Naudus
`
`Ex. 1013 Westwater et al., Real-Time Video Compression Techniques and
`Algorithms, Florida Atlantic University, Kluwer Academic
`Publishers (1997)
`
`Ex. 1014
`
`U.S. Patent No. 6,557,001 to Dvir
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Hoffman et al., RTP Payload Format for MPEG1/MPEG2 Video
`(January 1998)
`Kikuchi et al., RTP Payload Format for MPEG-4 Audio-Visual
`Streams (January 1998)
`U.S. Patent No. 7,010,032 to Kikuchi
`
`Ex. 1018
`
`U.S. Patent No. 6,614,845 to Azadegan
`
`iii
`
`

`

`Ex. 1019
`
`Petition for Inter Partes Review
`Patent No. 9,769,477
`Joint Stipulation to Stay Case Pending Inter Partes Review of
`Proceedings filed in Realtime Adaptive Streaming LLC v. Google
`LLC et al., Case No. 2:18-cv-03629 (C.D. Cal.)
`
`iv
`
`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`
`I.
`
`INTRODUCTION
`Google LLC (“Petitioner”) requests inter partes review (“IPR”) of claims 1,
`
`3, 4, 7, 9, 16, 17, and 20–22 (“the challenged claims”) of U.S. Patent No. 9,769,477
`
`(“the ’477 patent”) (Ex. 1001), which, according to PTO records, is assigned to
`
`Realtime Adaptive Streaming LLC (“Patent Owner”). For the reasons discussed
`
`below, the challenged claims should be found unpatentable and canceled.
`
`II. MANDATORY NOTICES
`Real Parties-in-Interest: Petitioner identifies Google LLC and YouTube
`
`LLC as the real parties-in-interest.1
`
`Related Matters: The ’477 patent is asserted against Google in the following
`
`case: Realtime Adaptive Streaming LLC v. Google LLC et al., Case No. 2:18-cv-
`
`03629 (C.D. Cal.).
`
`Additionally, the ’477 patent has been asserted in the following cases:
`
`Realtime Adaptive Streaming LLC v. Adobe Sys. Inc., Case No. 2:18-cv-09344
`
`(C.D. Cal.); Realtime Adaptive Streaming LLC v. Comcast Cable Commc’ns, LLC
`
`d/b/a Xfinity et al., Case No. 1:18-cv-01446 (D. Colo.); Realtime Adaptive
`
`
`1 Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of
`
`Alphabet Inc. XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest
`
`to this proceeding.
`
`1
`
`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`Streaming LLC v. Charter Commc’ns, Inc. et al., Case No. 1:18-cv-01345 (D.
`
`Colo.); Realtime Adaptive Streaming LLC v. Cox Commc’ns, Inc., Case No. 8:18-
`
`cv-00942 (C.D. Cal.); Realtime Adaptive Streaming LLC v. Advanced Micro
`
`Devices, Inc., Case No. 1:18-cv-01173 (D. Colo.); Realtime Adaptive Streaming
`
`LLC v. Intel Corp., Case No. 1:18-cv-01175 (D. Colo.); Realtime Adaptive
`
`Streaming LLC v. Mitel Networks, Inc., Case No. 1:18-cv-01177 (D. Colo.);
`
`Realtime Adaptive Streaming LLC v. LG Elecs. Inc., et al., Case No. 6:18-cv-
`
`00215 (E.D. Tex.); Realtime Adaptive Streaming LLC v. Avaya Inc., Case No.
`
`1:18-cv-01046 (D. Colo.); Realtime Adaptive Streaming LLC v. Broadcom Corp.
`
`et al., Case No. 1:18-cv-01048 (D. Colo.); Realtime Adaptive Streaming LLC v.
`
`Wowza Media Sys. LLC, Case No. 1:18-cv-00927 (D. Colo.); Realtime Adaptive
`
`Streaming LLC v. Samsung Elecs. Co., et al., Case No. 6:18-cv-00113 (E.D. Tex.);
`
`Realtime Adaptive Streaming LLC v. Adobe Sys. Inc., Case No. 1:18-cv-10355 (D.
`
`Mass.); Realtime Adaptive Streaming LLC v. Apple Inc., Case No. 1:17-cv-02869
`
`(D. Colo.); Realtime Adaptive Streaming LLC v. Sony Elecs., Inc., Case No. 1:17-
`
`cv-01693 (D. Del.); Realtime Adaptive Streaming LLC v. Netflix, Inc. et al., Case
`
`No. 1:17-cv-01692 (D. Del.); Realtime Adaptive Streaming LLC v. Polycom, Inc.,
`
`Case No. 1:17-cv-02692 (D. Colo.); Realtime Adaptive Streaming LLC v.
`
`Brightcove Inc. et al., Case No. 1:17-cv-01519 (D. Del.); Realtime Adaptive
`
`Streaming LLC v. Haivision Network Video Inc., Case No. 1:17-cv-01520 (D.
`
`2
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`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`Del.); Realtime Adaptive Streaming LLC v. Cisco Sys., Inc., Case No. 6:17-cv-
`
`00591 (E.D. Tex.); Realtime Adaptive Streaming LLC v. Hulu, LLC, Case No.
`
`2:17-cv-07611 (C.D. Cal.); and Realtime Adaptive Streaming LLC v. Amazon.com,
`
`Inc. et al., Case No. 6:17-cv-00549 (E.D. Tex.).
`
`Also, the ’477 patent has been the subject of the following inter partes
`
`review proceedings: Netflix, Inc. v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01187 (instituted Feb. 4, 2019); Sony Corp. et al. v. Realtime Adaptive Streaming
`
`LLC, IPR2018-01413 (terminated Jan. 2, 2019); Netflix, Inc. v. Realtime Adaptive
`
`Streaming LLC, IPR2018-01630 (instituted Apr. 19, 2019); and Comcast Cable
`
`Commc’ns, LLC v. Realtime Adaptive Streaming LLC, IPR2019-00786 (filed Mar.
`
`4, 2019).
`
`Counsel and Service Information: Lead counsel: Naveen Modi
`
`(Reg. No. 46,224). Backup counsel: (1) Joseph E. Palys (Reg. No. 46,508),
`
`(2) Phillip W. Citroën (Reg. No. 66,541), and (3) Howard Herr (pro hac vice
`
`admission to be requested). Service information is Paul Hastings LLP, 875 15th St.
`
`N.W., Washington, D.C., 20005, Tel.: 202.551.1700, Fax: 202.551.1705, email:
`
`PH-Google-Realtime-IPR@paulhastings.com. Petitioner consents to electronic
`
`service.
`
`3
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`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`
`III. PAYMENT OF FEES
`The PTO is authorized to charge any fees due during this proceeding to
`
`Deposit Account No. 50-2613.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’477 patent is available for review and Petitioner
`
`is not barred or estopped from requesting review on the grounds identified herein.
`
`V.
`
`PRECISE RELIEF REQUESTED AND GROUNDS RAISED
`The challenged claims should be canceled as unpatentable based on the
`
`following grounds:
`
`Ground 1: Claims 1, 3, 4, 7, 9, 16, 17, and 20–22 are unpatentable under 35
`
`U.S.C. § 102(e) (pre-AIA) based on U.S. Patent No. 7,143,432 to Brooks et al.
`
`(“Brooks”) (Ex. 1006); and
`
`Ground 2: Claims 1, 3, 4, 7, 9, 16, 17, and 20–22 are unpatentable under 35
`
`U.S.C. § 103 (pre-AIA) as obvious over Brooks.
`
`For purposes of this proceeding only, Petitioner assumes the earliest effective
`
`filing date of the ’477 patent is February 13, 2001, which is the filing date of U.S.
`
`Provisional Application No. 60/268,394, to which the ’477 patent claims priority.
`
`(Ex. 1001, Cover Page 2.)
`
`Brooks issued on November 28, 2006, from U.S. Patent Application No.
`
`09/502,409, filed on February 10, 2000, which claims priority to U.S. Provisional
`
`4
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`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`Application No. 60/157,468, filed on October 1, 1999. Thus, Brooks is available as
`
`prior art under 35 U.S.C. § 102(e).
`
`Brooks was not considered by the Patent Office during prosecution of the ’477
`
`patent. (Ex. 1001, Cover (References Cited section); Ex. 1004.)
`
`VI. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the art (“POSITA”) as of the claimed priority
`
`date of the ’477 patent would have had a bachelor’s degree in electrical engineering,
`
`computer science, or the equivalent thereof, and three or more years of experience
`
`with data compression systems and algorithms, including video and image
`
`coding. Significantly more practical experience could also qualify one not having
`
`the aforementioned education as a POSITA while, conversely, a higher level of
`
`education could offset a lesser amount of experience. (Ex. 1002, ¶¶16-17.)2
`
`VII. OVERVIEW OF THE ’477 PATENT AND THE PRIOR ART
`A. The ’477 Patent
`The ’477 patent claims a system for compressing video data based on
`
`throughput, or bandwidth, of a communications channel. (Ex. 1001, 9:27–30,
`
`20:57–21:13 (claim 1).) The focus of the written description is not on the data
`
`
`2 Petitioner submits the declaration of Dr. Jeffrey J. Rodriguez (Ex. 1002), an expert
`
`in the field of the ’477 patent. (Ex. 1002, ¶¶3-11; Ex. 1003.)
`
`5
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`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`compression algorithms themselves, which were well known. (See, e.g., id., 1:37–
`
`38 (“There are a variety of data compression algorithms that are currently
`
`available….”); 4:63–64; see also Ex. 1002, ¶30.) According to the applicants, what
`
`was needed was “a system and method that would provide dynamic modification of
`
`compression system parameters,” which would provide an optimal balance between
`
`the execution speed of the compression algorithm and the compression ratio of that
`
`algorithm. (Ex. 1001, 1:63–67; see also Ex. 1002, ¶¶31-36.)
`
`Many of the examples described in the written description involve interactions
`
`between a processor and a storage device. (See generally Ex. 1001.) For instance,
`
`“a preferred system in which this invention is employed comprises a data storage
`
`controller that preferably uses a real-time data compression system to provide
`
`‘accelerated’ data storage and retrieval bandwidths.” (Id., 9:32–35.) In this
`
`embodiment, “a controller tracks and monitors the throughput (data storage and
`
`retrieval) of a data compression system and generates control signals to
`
`enable/disable different compression algorithms when, e.g., a bottleneck occurs so
`
`as to increase the throughput and eliminate the bottleneck.” (Id., 10:3–9.)
`
`The written description describes available compression algorithms that are
`
`either symmetrical or asymmetrical. (Id., 10:9–30.) An asymmetrical algorithm is
`
`“one in which the execution time for the compression and decompression routines
`
`differ significantly.” (Id., 10:12–15.) “[E]ither the compression routine is slow and
`
`6
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`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`the decompression routine is fast or the compression routine is fast and the
`
`decompression routine is slow.” (Id., 10:16–18.) A symmetrical algorithm is “one
`
`in which the execution time for the compression and the decompression routines are
`
`substantially similar.” (Id., 10:20–23.) A controller selects the appropriate
`
`compression algorithm to use in any particular circumstance, and one factor driving
`
`that selection is “the overall throughput (bandwidth) of the host system.” (Id.,
`
`11:43–47.) “Another factor that is used to determine the compression algorithm is
`
`the type of data to be processed.” (Id., 11:48–49.) In some embodiments, “access
`
`profiles” are used that enable “the controller 11 to select a suitable compression
`
`algorithm based on the data type.” (Id., 11:49–12:3.)
`
`Although much of the specification describes embodiments that involve
`
`adaptive compression based on the performance or capabilities of a disk storage
`
`device within a host system, the claims of the ’477 patent are directed to a different
`
`purported invention. (Compare generally Ex. 1001, 9:25–20:45, with id., 20:57–
`
`21:13 (claim 1).) Instead, these claims are directed to adapting compression based
`
`on the throughput of a communications channel. (See id., 20:57–21:13 (claim 1).)
`
`The written description states that “the present invention may be employed in a data
`
`transmission controller in a network environment to provide accelerated data
`
`transmission over a communications channel (i.e., effectively increase the
`
`transmission bandwidth by compressing the data at the source and decompressing
`
`7
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`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`data at the receiver, in real-time).” (Id., 15:5–13; see also id., 8:36–43 (system
`
`includes a data transmission controller); 16:41–44 (the data storage controller “may
`
`be utilized as a controller for transmitting data (compressed or uncompressed) to and
`
`from remote locations”).) As noted in the specification, “data compression can
`
`reduce the time to transmit data by more efficiently utilizing low bandwidth data
`
`links.” (Id., 4:32–34.)
`
`As demonstrated below, all of the features recited in the challenged claims of
`
`the ’477 patent were well-known in the prior art before the alleged invention of the
`
`’477 patent. (Ex. 1002, ¶¶39-43 (discussing the prior art at issue in this petition);
`
`see also id., ¶¶18-29 (discussing the state of the art), ¶¶44-130 (discussing prior art
`
`disclosures in view of each claim’s limitations).)
`
`B.
`Prosecution History of the ’477 Patent
`The application that issued as the ’477 Patent was filed on October 6, 2015,
`
`and claims priority through a chain of continuations back to February 13, 2002, and
`
`to a provisional application filed on February 13, 2001. (Ex. 1001, Cover Page 2.)
`
`Prior to any substantive examination, the applicants filed a preliminary
`
`amendment to replace the claim term “encoder” with “algorithm” on December 11,
`
`2015. (Ex. 1004, 218–229.) Later during prosecution, and after several Notices of
`
`Allowance followed by Requests for Continued Examination, the “algorithm” claim
`
`term was changed to an “encoder…configured to utilize one or more data
`
`8
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`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`compression algorithms” by way of a preliminary amendment filed May 15, 2017.
`
`(Id., 1494–1503.) On January 28, 2016, the Examiner issued a non-final Office
`
`Action objecting to parts of the specification and claims and rejecting all claims as
`
`indefinite under 35 U.S.C. § 112 because the claims were directed to selecting a
`
`compression algorithm “without using the selected algorithm to compress the video
`
`data.” (Id., 261–67.) There were no subsequent rejections, or any rejections based
`
`on prior art. (Id., 1–1785.)
`
`Following an examiner interview on March 23, 2016, and without amending
`
`the claims as suggested by the Examiner in the first Office Action to overcome the
`
`indefiniteness rejection, a Notice of Allowance was mailed on April 26, 2016. (Id.,
`
`1052–59.) A few weeks later an Information Disclosure Statement (“IDS”) was filed
`
`along with a Request for Continued Examination (“RCE”), kicking off a 16-month
`
`period of filing RCEs and accompanying IDSes as well as claim amendments that
`
`led to nine separate Notices of Allowance (“NOA”). (Id., 1103-1115, 1173-1179,
`
`1206-1223, 1244-1250, 1282-1301, 1308-1314, 1348-1367, 1376-1380, 1400-1418,
`
`1440-1444, 1456-1462, 1492-1503, 1513-1524, 1538-1545, 1603-1612, 1640-1658,
`
`1670-1673.) The ’477 patent issued on September 19, 2017. (Id., 1713.)
`
`C. Brooks
`Brooks teaches real time video data formatting that is adaptive to the
`
`capabilities of a communications channel and the requirements of the device that
`
`9
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`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`will receive the video. (Ex. 1006, 3:8–14; see also id., 6:32-7:3, 22:33-53; Ex. 1002,
`
`¶39.) There are several different encoding formats disclosed by Brooks, including
`
`“MPEG-1, MPEG-2, MPEG-4, *.avi, *.mov, *.rm, *.aff, and the like.” (Ex. 1006,
`
`19:48–55; Ex. 1002, ¶39.) Brooks describes and illustrates a computing system
`
`outputting video data to devices that are “coupled to computer network 160 with
`
`different bandwidth limited connections.” (Ex. 1006, 6:24–7:19, FIGS. 1, 5A, 5B;
`
`Ex. 1002, ¶39.)
`
`10
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`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`
`
`
`(Ex. 1006, FIG. 1.)
`
`The system described in Brooks compresses the data differently based at least
`
`in part on the bandwidth of the communications channel. (Id.; Ex. 1002, ¶40.) There
`
`are several implementation examples in Brooks describing how this system would
`
`work in practice. (E.g., Ex. 1006, 6:24–7:19, FIG. 1; Ex. 1002, ¶40.) For instance,
`
`when the communications channel is a DSL connection, and where “the bandwidth
`
`11
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`

`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`is relatively large, network connection 230 is capable of providing computing system
`
`140 with enough video data to display up to a 640×480 pixel color image at 10
`
`frames per second (fps) using an MPEG1 format.” (Ex. 1006, 6:32–41 (also noting
`
`other configurations that can work for this communications channel, such as one that
`
`would yield 320×240 monochromatic images at 30 fps).) Where there is a modem
`
`connection, and the communications channel is limited to 56 kbps, “the bandwidth
`
`is relatively small, [and] network connection 210 is capable of providing computing
`
`system 120 with enough video data to display up to a 160×120 color image at 5 fps
`
`using an MPEG4 format.” (Id., 6:42–51 (also noting other video configurations that
`
`can work for this communications channel, such as one that would yield 80×60 4-
`
`bit images at 25 fps).)
`
`Where
`
`the modem connection
`
`is even more constrained, and
`
`the
`
`communications channel is limited to 14.4 kbps, “the bandwidth is small [and]
`
`network connection 220 is capable of providing computing system 130 with enough
`
`video data to display up to a 160×120 256 color (8-bit color) image at 5 fps.” (Id.,
`
`6:52–61 (also noting other video configurations that can work for this
`
`communications channel, such as one that would yield 80×60 16 gray scale (4-bit)
`
`images at 10 fps).) Where there is a wireless communications channel limited to 10
`
`kbps, “the bandwidth is very small [and] wireless network 190 is capable of
`
`providing network appliance 180 with enough video data to display up to a 64×48
`
`12
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`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`black and white image at 3 fps.” (Id., 6:62–7:3 (also noting other video
`
`configurations that can work for this communications channel, such as one that
`
`would yield 32×24 black and white images at 10 fps).) In all of these cases,
`
`“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., 7:7–11 (emphasis added).) Thus,
`
`throughout, Brooks describes and claims a system in which “simultaneous output
`
`video stream[s are] adapted from the input video stream based on both characteristics
`
`of client devices that are to respectively receive the simultaneous output video
`
`streams and channel conditions to the client devices.” (Id., 22:34–53 (claim 7)
`
`(emphasis added); see also id., 21:7–28 (claim 1), 23:33–35 (claim 9), 24:17–38
`
`(claim 16); Ex. 1002, ¶41.)
`
`Brooks illustrates and describes a detailed process for transcoding video data
`
`that includes several layers of processing that can be adaptively applied based on the
`
`desired properties of streams of output video data. (Ex. 1006, 17:14–19:58
`
`(describing the process illustrated in FIGS. 6A and 6B); see also id., FIG. 4
`
`(illustrating different modules for the different layers of data compression
`
`algorithms), 9:50-62; Ex. 1002, ¶42.)
`
`13
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`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`
`
`
`(Ex. 1006, FIGS. 6A, 6B.)
`
`Thus, Brooks describes a compression process that can be adaptive by
`
`customizing at least the color depth, resolution, frame rate, bit rate, and format of
`
`video data. (Id., FIG. 4; Ex. 1002, ¶43.) Additionally, Brooks notes that the
`
`encoding can be adaptive even within a single format. (Ex. 1006, FIG. 4; see also
`
`id., 14:43–50; Ex. 1002, ¶43.) For instance, Brooks notes that in one embodiment,
`
`“for MPEG-1, MPEG-2, and MPEG-4 encoding, it is contemplated that I-frame data
`
`will be compressed.” (Ex. 1006, 14:43–50.) In other embodiments, “P-frames, and
`
`14
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`

`Petition for Inter Partes Review
`Patent No. 9,769,477
`even B-frames may also be compressed.” (Id.)3 Similarly, for non-MPEG
`
`embodiments, Brooks discloses adjusting the bit rate using a quantization scale
`
`factor. (Id., 18:52–62; see also id., 13:51–14:15; Ex. 1002, ¶43.) At bottom, Brooks
`
`describes a flexible system, where various data compression algorithms can be
`
`applied “to provide video data to each device according to that device’s bandwidth
`
`limitations, and in the output format desired.” (Ex. 1006, 7:4–19 (noting that the
`
`video data can even be compressed into “a custom format” where needed); Ex. 1002,
`
`¶43.)
`
`VIII. CLAIM CONSTRUCTION
`The claims of the ’477 patent should be construed under the Phillips standard.
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`37 C.F.R. § 42.100(b); see generally Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
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`Cir. 2005) (en banc). Under Phillips, claim terms are typically given their ordinary
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`and customary meanings, as would have been understood by a POSITA, at the time
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`of the invention, having taken into consideration the language of the claims, the
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`specification, and the prosecution history of record. Phillips, 415 F.3d at 1313; see
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`3 I frames are complete encoded images; P frames are predicted images encoding
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`only changes from the previous frame; B frames are bi-directionally predicted
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`images that encode only the differences between that frame and the immediately
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`preceding and following frames. (Ex. 1002, ¶27.)
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`Petition for Inter Partes Review
`Patent No. 9,769,477
`also id. at 1312–16. The Board, however, only construes the claims when necessary
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`to resolve the underlying controversy. Toyota Motor Corp. v. Cellport Sys., Inc.,
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`IPR2015-00633, Paper No. 11 at 16 (Aug. 14, 2015); see also Nidec Motor Corp. v.
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`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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`Except for the term “throughput” addressed below, Petitioner believes that no
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`express constructions of the claims are necessary to assess whether the prior art reads
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`on the challenged claims.4
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`Solely for the purposes of this proceeding, Petitioner addresses the meaning
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`of the term “throughput,” which appears in claims 1, 3, 4, 20, and 21. (Ex. 1001,
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`21:7, 21:18–19, 21:21–22, 22:38, 22:43–44.) Based on the intrinsic record, this term
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`should be interpreted to mean “bandwidth” (i.e., amount of data per unit time). This
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`4 Petitioner reserves all rights to raise claim construction and other arguments in
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`district court as relevant and necessary to those proceedings. For example, Petitioner
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`has not raised all challenges to the ’477 patent in this petition, including invalidity
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`under 35 U.S.C. § 112, and a comparison of the claims to any accused products in
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`litigation may raise controversies that need to be resolved through claim construction
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`that are not presented here given the similarities between the references and the
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`patent.
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`Petition for Inter Partes Review
`Patent No. 9,769,477
`is consistent with the claim language, which states that the “throughput” is
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`“measured in bits per second.” Additionally, the written description of the ’477
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`patent consistently defines throughput as bandwidth. (Id., 1:30 (“actual or expected
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`throughput (bandwidth)”); 7:67–8:1 (same); 9:29–30 (same); 11:43-44 (“the overall
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`throughput (bandwidth)”).) Additionally, throughout the written description, the
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`described embodiments are consistently referred to as providing “bandwidth
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`sensitive” data compression. (Id., 8:4–6 (describing “bandwidth sensitive” data
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`compression); 8:43–45 (same); 9:6–16 (introducing FIGS. 1 and 3; same); 13:26–28
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`(describing FIG. 2; same).) Further still, the concept of bandwidth is also described
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`in the ’477 patent as a concept that applies to communications channels. (Id., 4:32–
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`34 (describing “low bandwidth data links”); 15:7–13 (describing “increas[ing] the
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`transmission bandwidth by compressing the data at the source and decompressing
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`data at the receiver”).)
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`Petition for Inter Partes Review
`Patent No. 9,769,477
`
`IX. DETAILED EXPLANATION OF GROUNDS
`As discussed below, the challenged claims are unpatentable in view of the
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`prior art. (Ex. 1002, ¶¶12-130.)
`
`A. Ground 1: Brooks Anticipates Claims 1, 3, 4, 7, 9, 16, 17, and 20–22
`1.
`Claim 1
`a)
`“A system comprising:”
`The preamble is not limiting, but, even if it is, Brooks discloses a “system,”
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`as recited in claim 1. (See e.g., Ex. 1006, FIGS. 1-4; Ex. 1002, ¶¶45-47.) For
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`instance, Brooks discloses “systems for transcoding and transforming video
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`streams,” where the systems “adapt[] input streams of video data to meet desired
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`parameters for output streams of video data” on the fly. (Ex. 1006, 3:8-14.)
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`In particular, as shown in Figure 1 (annotated below), Brooks discloses a
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`gateway computer 100 (the claimed “system”), which is coupled to computer
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`systems 110-150 via a computer network 160 and via network connections 200-240.
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`(Id., 4:35-43, FIG. 1; see also id., 4:44-57 (disclosing that computer network 160
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`may be any computer network, including the Internet), 5:20-45 (disclosing that
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`computer systems 110, 120, 140 and 150 may be personal computers and that
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`computer system 130 may be PDAs or portable computers); Ex. 1002, ¶46.) Also
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`shown in figure 1, a network appliance 180 (e.g., wireless phones) is coupled to
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`Petition for Inter Partes Review
`Patent No. 9,769,477
`computer system 150 via a wireless network 190 and a video camera 170 is coupled
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`to computer system 110. (Ex. 1006, 4:38-41, 5:46-52, 5:53-59.)
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`(Ex. 1002, ¶46; Ex. 1006, FIG. 1 (annotated).)
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`
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`Petition for Inter Partes Review
`Patent No. 9,769,477
`Video data may be streamed from video camera 170, computing system 110,
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`or gateway computer 100 to computer systems 120-150 and network appliance 180.
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`(Ex. 1006, 6:8-11, 7:4-11.) As discussed in more detail below, gateway computer
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`100 “provide[s] [the] video data to each device according to that device’s bandwidth
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`limitations, and in the output format desired.” (Id., 7:4-11; Ex. 1002, ¶47.)
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`b)
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`“a plurality of different asymmetric data compression
`encoders,”
`Brooks discloses that the gateway computer 100 (“system”) includes “a
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`plurality of different asymmetric data compression encoders,” as recited in claim 1.
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`(Ex. 1002 ¶¶48-70.) For instance, as shown in Figure 3 (annotated below), Brooks
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`discloses that gateway computer 100’s processing unit 340 (shown in FIG. 2)
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`includes a transcoder 420 (shown in FIG. 3). (Ex. 1006, 7:24-28, 7:35-45, 8:26-33,
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`11:27-34, FIGS. 2-3.) According to Brooks, “transcoder block 420 retrieves
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`incoming data from frame buffer 410…reduces the bandwidth of the data, and forms
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`a stream of output data in a desired format” based on the “bandwidth requirements
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`and the desired output format” received from control block 450. (Id., 11:27-33, FIG.
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`20
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`3.)
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`Petition for Inter Partes Review
`Patent No. 9,769,477
`
`(Ex. 1002, ¶¶48-49; Ex. 1006, FIG. 3.)
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`As shown in Figure 4 (annotated below), transcoder block 420 includes an
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`encoder block 560, which performs the process of encoding the output data into a
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`desired format. (Id., 11:62-12:4, 14:35-59, FIG. 3; Ex. 1002, ¶50.)
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`
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`Petition for Inter Partes Review
`Patent No. 9,769,477
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`
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`(Ex. 1002, ¶50; Ex. 1006, FIG. 4 (annotated).) For example, in one embodiment,
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`encoding block 560 may be “embodied as an MPEG encoder” (e.g., MPEG-1,
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`MPEG-2, and MPEG-4). (Ex. 1006, 14:38-50; see also id., 14:56-59.) Brooks
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`further explains that encoder block 560 may comprise many different types of data
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`compression encoders in order to achieve the desired output format, including
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`encoders in the public domain:
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` Encoder block 560 “may include dedicated hardware encoders.” (Id.,
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`14:40-42.)
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` Encoder block 560 may output data in “alternative formats,” such as “*.avi
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`format video, *.mov format video, streaming video such as in the *.rm
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`Petition for Inter Partes Review
`Patent No. 9,769,477
`format from Real Networks, or *.aff format from Microsoft, or the like.
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`Such formats may be in the public domain, or proprietary.” (Id., 14:51-
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`55.)
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` “[T]he encoding format may include MPEG-1, MPEG-2, MPEG-4, *.avi,
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`*.mov, *.rm, *.aff, and the like.” (Id., 19:48-50.)
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` “One system may only provide MPEG-4 and Quicktime encoding.” (Id.,
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`19:50-53.)
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` “In other embodiments, additional encoding formats, and streaming media
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`formats may also be supported.” (Id., 19:53-55.)
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` “One embodiment of an encoder is based primarily upon hardware
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`encoders, however, these encoders may also be implemented by software
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`routines.” (Id., 19:56-58.)
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` “Further, control block 450 also receives information regarding what
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`format the output stream of data should be encoded in, such as M-JPEG,
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`GIF, MPEG format, H.263 format, Windows Media format, Quicktime
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`format, Real Video format, or the like.” (Id., 9:57-62.)
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` “Further, the requesting device will also inform gateway system 100 which
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`output video format should be used to encode the data. For example, JPEG,
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`JPEG-2000, GIF, WBMP, MPEG-1, MPEG-2, MPEG-4, H.263, *.avi,
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`*.mov, *rm,