IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`NO. 2-18-cv-00551-JRG-RSP
`
`§§§§§§§§§§
`
`UNILOC 2017
`
`v.
`
`GOOGLE LLC,
`
`Plaintiff
`
`Defendant.
`
`INVALIDITY CONTENTIONS OF
`DEFENDANT GOOGLE LLC
`
`Defendant Google LLC (“Defendant” or “Google”), by its attorneys, makes these
`
`Invalidity Contentions concerning U.S. Patent No. 7,012,960 (“the Asserted Patent”), to Plaintiff
`
`Uniloc 2017 LLC and Uniloc USA, Inc. (“Plaintiff” or “Uniloc”) in connection with the above-
`
`referenced action, pursuant to the Docket Control Order entered by the Court (Dkt. No. 45) and
`
`Local Patent Rule (“P.R.”) 3-3.
`
`Google’s Invalidity Contentions herein reflect Google’s knowledge as of this early date in
`
`the present action. Google reserves the right, to the extent permitted by the Court and the applicable
`
`statutes and rules, to modify and/or supplement its Invalidity Contentions in response to becoming
`
`aware of additional prior art or information regarding prior art, any modification or
`
`supplementation of Plaintiff’s Infringement Contentions, any claim construction by the Court, or
`
`as otherwise may be appropriate.
`
`The Docket Control Order and the Patent Rules contemplate that these Invalidity
`
`Contentions would be prepared and served in response to Plaintiff’s Infringement Contentions.
`
`However, Plaintiff’s Infringement Contentions are insufficient because they lack proper and
`
`1
`
`Google v. Uniloc, IPR2020-00757
`Uniloc's Exhibit 2001
`
`

`

`complete disclosure as to how Plaintiff contends that Google infringes the Asserted Claims. By
`
`way of example, and without limitation, these deficiencies were detailed in letters to Plaintiff from
`
`Google on July 9, 2019. Due to Plaintiff’s failure to provide proper and complete disclosure of its
`
`Infringement Contentions under P.R. 3-1, Google reserves the right to seek leave from the Court
`
`to amend these Invalidity Contentions should Plaintiff be allowed by the Court to amend its
`
`Infringement Contentions or its apparent claim constructions. Google also reserves the right to
`
`amend these Invalidity Contentions in light of positions that Plaintiff or their expert witnesses may
`
`assert concerning claim construction, infringement, and/or invalidity issues.
`
`Google’s Exhibits attached hereto cite to particular teachings and disclosures of the prior
`
`art as applied to features of the asserted claims. However, persons having ordinary skill in the art
`
`generally may view an item of prior art in the context of other publications, literature, products,
`
`and understanding. As such, the cited portions of prior art identified herein are exemplary only.
`
`Google may rely on the entirety of the prior art references listed herein, including un-cited portions
`
`of those prior art references, and on other publications and expert testimony shedding light on
`
`those prior art references, including as aids in understanding and interpreting the cited portions, as
`
`providing context thereto and as additional evidence that the prior art discloses a claim limitation.
`
`Google will also rely on documents, products, testimony, and other evidence to establish
`
`bases for and motivations to make combinations of certain cited references that render the asserted
`
`claims obvious. Google may rely upon corroborating documents, products, testimony, and other
`
`evidence including materials obtained through further investigation and third-party discovery of
`
`the prior art identified herein, that describes the invalidating features identified in these
`
`contentions; evidence of the state of the art in the relevant time period (irrespective of whether
`
`such references themselves qualify as prior art to the Asserted Patent), including prior art listed on
`
`2
`
`

`

`the face of the Asserted Patent and/or disclosed in the specification (“Admitted Prior Art”); and/or
`
`expert testimony to provide context to or aid in understanding the cited portions of the identified
`
`prior art.
`
`The references discussed in the Exhibits herein disclose the elements of the asserted claims
`
`explicitly or inherently, and/or they may be relied upon to show the state of the art in the relevant
`
`time frame. To the extent the attached claim charts cite to a reference for each element or limitation
`
`of an asserted claim, Google contends that such reference anticipates that claim. In addition, to the
`
`extent that the attached claim charts cite to additional references, Google contends, in the
`
`alternative, that the asserted claim is rendered obvious for the reasons set forth in the attached
`
`charts. To the extent suggested obviousness combinations are included in the attached claim charts,
`
`they are provided in the alternative to Google’s anticipation contentions and are not to be construed
`
`to suggest that any reference included in the combinations is not by itself anticipatory.
`
`For purposes of these Invalidity Contentions, Google identifies prior art references and
`
`provides element-by-element claim charts based, in part, on the apparent claim constructions
`
`advanced by Plaintiff in its Infringement Contentions. The citation of prior art herein and the
`
`accompanying Exhibits are not intended to reflect Google’s claim construction contentions, which
`
`will be disclosed in due course in accordance with the Docket Control Order, and may instead
`
`reflect Plaintiff’s apparent (and potentially erroneous) claim constructions based on its
`
`Infringement Contentions. Nothing stated herein shall be treated as an admission or suggestion
`
`that Google agrees with Plaintiff regarding either the scope of any of the asserted claims or the
`
`claim constructions advanced in the Infringement Contentions. Moreover, nothing in these
`
`Invalidity Contentions shall be treated as an admission that any of Google’s accused technology
`
`meets any limitations of the claims.
`
`3
`
`

`

`Pursuant to P.R. 3-3 and 3-4, Google has provided disclosures and related documents
`
`pertaining to only the asserted claims as identified by Plaintiff in its Infringement Contentions.
`
`See Bates Nos. Goog-UNI551-PA-00000001–GOOG-UNI551-PA-00003918. Google will further
`
`supplement its P.R. 3-4 document production should it later find additional, responsive documents,
`
`such as documents produced by third parties in response to discovery requests. Much of the art
`
`identified below reflects common knowledge and the state of the art prior to the filing date of the
`
`Asserted Patent.
`
`Each of the asserted claims1 of the Asserted Patent is anticipated by and/or obvious in view
`
`of one or more items of prior art identified herein, alone or in combination. Specific examples of
`
`this anticipation and obviousness, along with the motivation to combine the selected prior art, are
`
`set forth in Section IV. Google further reserves the right to assert additional theories of invalidity
`
`not addressed or required to be disclosed in its P.R. 3-3 invalidity contentions.
`
`In addition to the prior art identified below and the accompanying invalidity claim charts,
`
`Defendant also incorporates by reference any prior art disclosed at any time by parties in the
`
`present litigation or by any party to any other past, present, or future litigation or U.S. Patent and
`
`Trademark Office proceeding involving the asserted patent or related patents.
`
`I.
`
`ALLEGED PRIORITY
`
`In its Infringement Contentions, Uniloc contends that each of the asserted claims of the
`
`Asserted Patent “is entitled to a priority date not later than Mar. 6, 2001 and Oct. 24, 2000,
`
`respectively.” Google objects to Uniloc including the “not later than” language and two different
`
`dates in its priority claim, such that Uniloc has asserted an open-ended priority date in violation of
`
`this Court’s Patent Local Rules. Indeed, P.R. 3-1(e) requires that plaintiff identify “the priority
`
`1 For reasons analogous to those identified herein, Google contends all non-asserted claims of
`the Asserted Patent are invalid as anticipated and/or obvious in view of the prior art or indefinite.
`
`4
`
`

`

`date to which each asserted claim allegedly is entitled” – not a start date, end date, set of potential
`
`dates, or date range.
`
`Putting aside Uniloc’s failure to comply with P.R. 3-1(e), EP patent applications Serial
`
`Number 00402939 cannot support Uniloc’s claimed priority date of October 24, 2000 for the
`
`Asserted Patent. For example, EP 402939 does not include Figure 5 of the Asserted Patent, which
`
`purports to describe “a fourth embodiment of a transcoding device according to the invention, said
`
`device also comprising a spatial filter circuit and, possibly, a temporal filter circuit.” Asserted
`
`Patent, 2:59-62. Therefore, the only arguable priority date that Uniloc can claim is March 6, 2001,
`
`the date of the filing of the EP application Serial Number 01400588, which appears to have
`
`identical disclosure to that of the Asserted Patent.2
`
`Uniloc also incorporates by reference any identifications and analyses that any expert
`
`witness(es) may take concerning priority issues. To the extent that Uniloc is permitted to modify,
`
`and in fact modifies in any manner, the alleged date to which the Asserted Patent is entitled to
`
`priority, Google reserves the right to respond and challenge that date to the extent required by law
`
`to satisfy their burden.
`
`II.
`
`STATE OF THE ART
`
`The references discussed in the Exhibits attached hereto may be relied upon to show the
`
`state of the art in the relevant time frame. This prior art identification is only exemplary and is
`
`not in any way intended to limit the scope of what one of ordinary skill in the art would have
`
`understood at the relevant time period of the alleged invention or the breadth of the state of the
`
`art to which the alleged invention of the Asserted Patent relates. Google reserves the right to rely
`
`upon additional prior art, information, testimony, and/or knowledge to demonstrate what one of
`
`2 To the extent the Court may determine that certain asserted claims might be entitled to different
`respective priority dates, Google reserves the right to revise these contentions accordingly.
`
`5
`
`

`

`ordinary skill in the art would have understood prior to the date of the alleged invention of the
`
`asserted claims of the Asserted Patent. Google reserves the right to rely on the following to
`
`establish state of the art at the purported time of invention:
`
`Reference
`
`Inventor or Author Date of Issuance or
`Publication
`
`Filing or Priority
`Date
`
`1995
`
`N/A
`
`3/15/96
`
`N/A
`
`3/25/94
`
`N/A
`
`1995
`
`N/A
`
`2000
`
`N/A
`
`ISO/IEC 13818-
`2:1995
`
`ISO/IEC 13818-
`2:1996
`
`ISO/IEC
`JTC1/SC29/WG11
`N0702
`
`“Transmission of
`Non-Telephone
`Signals,” ITU-T
`Recommendation
`H.262 (07/95)
`
`“Infrastructure of
`audiovisual services
`– Coding of moving
`video,”
`ITU-T
`Recommendation
`H.262 (02/00)
`
`International
`Organisation for
`Standardisation and
`International
`Electrotechnical
`Commission
`
`International
`Organisation for
`Standardisation and
`International
`Electrotechnical
`Commission
`
`International
`Organisation for
`Standardisation and
`International
`Electrotechnical
`Commission
`
`Telecommunication
`Standardization
`Sector of
`International
`Telecommunication
`Union
`
`Telecommunication
`Standardization
`Sector of
`International
`Telecommunication
`Union
`
`6
`
`

`

`Algorithms,
`Complexity Analysis
`and VLSI
`Architectures for
`MPEG-4 Motion
`Estimation
`Kluwer Academic
`Publishers
`
`MPEG-2
`Focal Press
`
`Products developed
`and sold by Duck
`Corporation (later
`known as On2),
`including at least
`MPVE 5 - Multi-
`Platform Video
`Engine,
`TrueMotion® 2.0
`Video Compression
`Tools, TrueMotion®
`VR, TrueMotion®
`RT, TrueCast (tm),
`RTVCS - Real Time
`Video Capture
`System.
`
`On2 VP3 Video
`Codec
`
`On2 VP4 Video
`Codec (Beta)
`
`Digital Video An
`Introduction to
`MPEG-2
`
`MPEG Video
`Compression
`Standard
`
`Kuhn
`
`1999
`
`N/A
`
`Watkinson
`
`1999
`
`Jim Bakowski
`(Google)
`Yaowu Xu (Google)
`
`No later than 1998
`
`Jim Bankoski
`(Google)
`Yaowu Xu (Google)
`
`Jim Bankoski
`(Google)
`Yaowu Xu (Google)
`
`May 2000
`
`May 2001
`
`Haskell et al.
`
`1997
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`Mitchell
`
`1996 and 2000
`
`N/A
`
`7
`
`

`

`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`Mitchell
`
`1997
`
`Morel et al.
`
`January 2001
`
`Radha et al.
`
`1999
`
`Van der Werf et al.
`
`1997
`
`Gunnewiek et al.
`
`2000
`
`Keesman et al.
`
`1994
`
`MPEG Video
`Compression
`Standard
`
`“Spatial and
`Temporal Filtering in
`a Low-Cost MPEG
`Bit-Rate Transcoder”
`
`2001 IEEE
`International
`Conference on
`Acoustics, Speech,
`and Signal
`Processing
`
`“Scalable Internet
`video using MPEG-
`4”
`
`“I.McIC: A Single-
`Chip MPEG2 Video
`Encoder for Storage”
`
`“A low-complexity
`MPEG-2 bit-rate
`transcoding
`algorithm”
`
`“Analysis of joint
`bit-rate control in
`multiprogram image
`coding”
`
`“Chapter 19:
`Recursive Filters”
`
`Smith
`
`1997
`
`The Scientist and
`Engineer’s Guide to
`Digital Signal
`Processing
`
`8
`
`

`

`U.S. Patent No.
`3,735,392
`
`U.S. Patent No.
`4,882,583
`
`U.S. Patent No.
`5,121,191
`
`U.S. Patent No.
`5,451,954
`
`U.S. Patent No.
`5,481,310
`
`U.S. Patent No.
`5,493,513
`
`U.S. Patent No.
`5,537,440
`
`U.S. Patent No.
`5,557,276
`
`U.S. Patent No.
`5,890,125
`
`U.S. Patent No.
`6,011,868
`
`U.S. Patent No.
`6,043,765
`
`U.S. Patent No.
`6,181,743
`
`U.S. Patent No.
`6,246,438
`
`U.S. Patent No.
`6,434,197
`
`U.S. Patent No.
`6,445,828
`
`U.S. Patent No.
`6,483,543
`
`Kaneko
`
`Issue Date: 5/22/73
`
`12/8/71
`
`Dimitri et al.
`
`Issue Date: 11/21/89
`
`5/31/88
`
`Cassereau et al.
`
`Issue Date: 6/9/92
`
`3/15/91
`
`Davis et al.
`
`Issue Date: 9/19/95
`
`8/4/93
`
`Hibi
`
`Issue Date: 1/2/96
`
`4/22/94
`
`Keith et al.
`
`Issue Date: 2/20/96
`
`4/28/94
`
`Eyuboglu et al.
`
`Issue Date: 7/16/96
`
`1/7/94
`
`Sakazawa et al.
`
`Issue Date: 9/17/96
`
`7/27/94
`
`Davis et al.
`
`Issue Date: 3/30/99
`
`7/16/97
`
`Van den Branden et
`al.
`
`Issue Date: 1/4/00
`
`4/4/97
`
`Twardowski
`
`Issue Date: 3/28/00
`
`9/26/97
`
`Bailleul
`
`Issue Date: 1/30/01
`
`3/24/99
`
`Nishikawa et al.
`
`Issue Date: 6/12/01
`
`7/12/99
`
`Wang et al.
`
`Issue Date: 8/13/02
`
`1/7/99
`
`Yim
`
`Issue Date: 9/3/02
`
`9/28/98
`
`Zhang et al.
`
`Issue Date: 11/19/02
`
`2/3/99
`
`9
`
`

`

`U.S. Patent No.
`6,847,656
`
`U.S. Patent No.
`7,058,127
`
`U.S. Patent App.
`2002/0080877A1
`
`U.S. Patent App.
`2003/0043923A1
`
`Wu et al.
`
`Lu et al.
`
`Issue Date: 1/25/05
`
`9/25/00
`
`Issue Date: 6/6/06
`
`12/27/00
`
`Pub. Date: 6/27/02
`
`Zhang et al.
`
`Pub. Date: 3/6/03
`
`10/11/02
`
`EP0690392A1
`
`Keesman
`
`Pub. Date: 1/3/96
`
`6/22/95
`
`EP1032217A2
`
`Wang et al.
`
`Pub. Date: 8/30/00
`
`12/23/99
`
`WO97047128A2
`
`Bock
`
`Pub. Date: 12/11/97
`
`6/2/97
`
`WO0051357
`
`Lee
`
`Pub. Date: 8/31/00
`
`2/25/00
`
`GB2316568B
`
`Kawada et al.
`
`Pub. Date: 2/25/98
`
`8/22/97
`
`Google will further rely upon the Admitted Prior Art disclosed in the Asserted Patent,
`
`including but not limited to the concepts of coding and decoding in accordance with known MPEG
`
`standards at the time, video compression, variable length decoding, quantization and
`
`dequantization, use of the Discrete Cosine Transform and Inverse Discrete Cosine Transform,
`
`motion compensation, and filter circuits and techniques. Asserted Patent, 1:19-21, 1:25-42. The
`
`Admitted Prior Art further includes “any type of video signals encoded via a block-based technique
`
`such as, for example, those provided by MPEG-1, MPEG-4, H-261 or H-263 standards.” Asserted
`
`Patent,-3:3-6.
`
`The Admitted Prior Art further includes the transcoding devices illustrated in Figure 1 of
`
`the Asserted Patent:
`
`10
`
`

`

`A transcoding device as described in the opening paragraph is disclosed in European Patent
`Application No. EP 0690 392 (PHF 94001) and is depicted in FIG. 1. Said device (100) for
`transcoding encoded digital signals (S1) which are representative of a sequence of images,
`comprises a decoding channel (11,12) followed by an encoding channel (13,14,15). A
`prediction channel is connected in cascade between these two channels, and Said prediction
`channel comprises, in Series, between two Subtractors (101, 102), an inverse discrete
`cosine transform circuit IDCT (16), a picture memory MEM (17), a circuit for motion-
`compensation MC (18) in view of displacement vectors (V) which are representative of the
`motion of each image, and a discrete cosine transform circuit DCT (19).
`
`Asserted Patent, 1:25-43
`
`11
`
`

`

`Further, during the prosecution of the application that led to issuance of the Asserted
`
`Patent, the patentee made numerous implicit admissions as to the content of the prior art. After
`
`rejection under 35 U.S.C. § 102(b) of the pending claims in view of U.S. Patent No. 5,870,146 to
`
`Zhu, applicant amended the claims to include the recitation “said filtering step using a recursive
`
`filter,” stating:
`
`Claim 1, as amerided, recites a "said filtering step using a recursive filter." Zhu fails to
`disclose or suggest use of a recursive filter. For at least this reason, Zhu fails to anticipate
`the present invention as recited in claim 1. Nor would it have been obvious to modify Zhu
`for the claimed feature. Support for the amendment of claim 1 is found in the present
`specification (e.g. [0012]).
`
`11/8/2004 Response to Office Action, p. 9. By the above statements and accompanying claim
`
`amendments, applicant admitted that the prior art contained the original recitations of the amended
`
`claims (claim 1), including, but not limited to, the following:
`
`1. (Currently Amended) A method of transcoding a primary encoded signal (S 1)
`comprising a sequence of pictures, into a secondary encoded signal (S2), said method of
`transcoding comprising at least the steps of: decoding a current picture of the primary
`encoded signal, said decoding step comprising a dequantizing sub-step (12) for producing
`a first transformed signal (Rl), encoding, following the decoding step, for obtaining the
`secondary encoded signal, said encoding step comprising a quantizing sub-step (13),
`wherein said method of transcoding further comprises a filtering step between the
`dequantizing sub-step and the quantizing sub-step.
`
`11/8/2004 Response to Office Action, p. 2. The Patent Office rejected claim 1 again in amended
`
`form under 35 U.S.C. § 103 view of Zhu and U.S. Patent No.5,621,468 of Kim. In response,
`
`applicant further amended claim 1, thus admitting that the additional recitation added to overcome
`
`the first rejection (“wherein said method of transcoding further comprises a filtering step between
`
`the dequantizing sub-step and the quantizing sub-step, said filtering step using a recursive filter”)
`
`was found in the prior art. 5/13/2005 Response to Office Action, p. 2, 9.
`
`12
`
`

`

`III.
`
`IDENTIFICATION OF PRIOR ART – LOCAL PATENT RULE 3-3(A)
`
`Under this Court’s Local Patent Rules, Google is obligated to disclose:
`
`The identity of each item of prior art that allegedly anticipates each
`asserted claim or renders it obvious. Each prior art patent shall be
`identified by its number, country of origin, and date of issue. Each
`prior art publication must be identified by its title, date of
`publication, and where feasible, author and publisher.
`
`Prior art under 35 U.S.C. § 102(b) shall be identified by specifying
`the item offered for sale or publicly used or known, the date the
`offer or use took place or the information became known, and the
`identity of the person or entity which made the use or which made
`and received the offer, or the person or entity which made the
`information known or to whom it was made known.
`
`P.R. 3-3(a).
`
`In addition to the prior art identified in the prosecution history and language of the Asserted
`
`Patent, Google intends to rely upon the prior art identified pursuant to P.R. 3-3(a) below in support
`
`of these Invalidity Contentions. In these Contentions, Google provides the full identity of each
`
`item of prior art, including: (1) each patent by its patent number, country of origin, and date of
`
`issue; (2) each non-patent publication by its title, date of publication, and, where feasible, author
`
`and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for sale or publicly used or
`
`known, the date the offer or use took place or the information became known, and the identity of
`
`the person or entity which made the use or which made and received the offer, or the person or
`
`entity which made the information known or to whom it was made known; (4) 35 U.S.C. § 102(f)
`
`prior art by the name of the person(s) from whom and the circumstances under which the invention
`
`or any part of it was derived; and (5) 35 U.S.C. § 102(g) prior art by the identities of the person(s)
`
`or entities involved in and the circumstances surrounding the making of the invention before the
`
`patent applicant(s), based on currently available information.
`
`13
`
`

`

`Google’s identification of patents and publications as prior art herein and in the attached
`
`claim charts under 35 U.S.C. §§ 102(a), (b), (e), and/or (g) and § 103 includes the publications
`
`themselves as well as the use of the products, devices, and systems described therein. Although
`
`Google’s investigation continues, information available to date indicates that such products,
`
`devices, and systems were known or used in the country before the alleged invention of the claimed
`
`subject matter of the asserted claims, and/or were invented by another who did not abandon,
`
`suppress, or conceal, before the alleged invention of the claimed subject matter of the asserted
`
`claim. Upon information and belief, these prior art products, devices, and systems and their
`
`associated references anticipate and/or render obvious each of the asserted claims. Google further
`
`intends to rely on inventor admissions concerning the scope of the prior art relevant to the Asserted
`
`Patent found in, inter alia, the prosecution history of the Asserted Patent and any related patents,
`
`patent applications, and/or re-examinations; any deposition testimony of the named inventors on
`
`the Asserted Patent; and the papers filed and any evidence submitted by Plaintiff in conjunction
`
`with this litigation.
`
`Google reserves the right to rely upon additional evidence of invalidity obtained from third
`
`parties in the future that is responsive to discovery requests. In addition, Google reserves the right
`
`to assert invalidity under 35 U.S.C. §§ 102(c) or (d) to the extent that further investigation and
`
`discovery yield information forming the basis for such claims.3
`
`3 Citations to, statements regarding, or contentions made in, these Invalidity Contentions that any
`patent included in the Invalidity Contentions is prior art to the Asserted Patent is not intended to
`be construed as contrary to positions that may be taken by Google in other litigation that such
`patent is invalid and/or unenforceable.
`
`14
`
`

`

`A.
`
`Prior Art Patents
`
`Google contends the following prior art patents anticipate or render obvious one or more
`
`asserted claims of the Asserted Patent under 35 U.S.C. §§ 102(a), (b), and/or (e) or 35 U.S.C.
`
`§ 103:
`
`Country
`
`Patent/Publication No.
`
`WIPO
`
`International Publication No.
`99/51036 (“Bailleul”)
`
`US
`
`U.S. Patent No. 6,259,741
`
`WIPO
`
`International Publication No.
`98/19460
`
`Filing/Publication/Iss
`ue Date
`Filing Date: 9/30/1999
`Issue Date: 10/7/1999
`
`Filing Date: 2/18/1999
`Pub. Date: 7/10/2001
`Filing Date: 10/221997
`Pub. Date: 5/7/1998
`
`Inventor(s)
`
`Bailleul
`
`Chen
`
`Christopoulos
`
`US
`
`US
`
`US
`
`US
`
`US
`
`US
`
`EP
`
`US
`
`US
`
`U.S. Patent No. 5,907,374
`
`U.S. Patent No. 6,647,061
`
`U.S. Patent No. 6,611,624
`
`U.S. Patent No. 6,122,314
`
`U.S. Patent No. 6,658,157
`
`U.S. Patent No. 6,407,681
`
`EP0690392B1
`
`U.S. Patent No. 6,697,428
`
`U.S. Patent No. 6,650,707
`
`Filing Date: 1/30/1997
`Pub. Date: 5/25/1999
`
`Liu
`
`Filing Date: 6/9/2000
`Pub. Date: 11/11/2003
`Filing Date: 10/15/1998
`Pub. Date: 8/26/2003
`
`Filing Date: 2/5/1997
`Issue Date: 9/19/2000
`Filing Date: 6/27/2000
`Issue Date: 12/2/2003
`Filing date: 1/31/2001
`Issue Date: 6/18/2002
`
`Filing Date: 6/22/1995
`Pub. Date: 9/26/2001
`Filing Date: 1/16/2001
`Issue Date: 2/24/2004
`
`Panusopone
`
`Zhang
`
`Brüls et al.
`
`Satoh et al.
`
`Gatepin et al.
`
`Keesman (“Keesman
`I”)
`Morel
`
`Filing Date: 3/2/2001
`Issue Date: 11/18/2003
`
`Youn et al.
`
`15
`
`

`

`US
`
`U.S. Patent No. 6,792,045
`
`Filing Date: 1/26/2001
`Issue Date: 9/14/2001
`
`Matsumura et al.
`
`B.
`
`Prior Art Publications
`
`Google contends the following publications anticipate or render obvious one or more
`
`asserted claims of the Asserted Patent under 35 U.S.C. §§ 102(a) and/or (b) or 35 U.S.C. § 103:
`
`Date
`
`1997
`
`Publisher
`IEEE
`
`Author(s)
`Assunção
`
`September 1996
`
`Elsevier, vol. 8,
`issue 6
`
`Keesman et al.
`(“Keesman II”)
`
`1994
`
`1999
`
`Neri et al.
`
`IEEE
`
`Lee
`
`November 1997
`
`Kim et al.
`
`Dubois
`
`Publication Title
`Transcoding of
`MPEG-2 video in
`the frequency
`domain
`
`Transcoding of
`MPEG bitstreams
`
`Inter-block filtering
`and downsampling
`in DCT domain
`
`Loop-filtering and
`Post-filtering for
`Low Bit-rates
`Moving Picture
`Coding
`
`DCT Domain Filter
`for ATV Down
`Conversion
`
`Noise Reduction in
`Image Sequences
`Using Motion
`Compensated
`Temporal Filtering
`
`16
`
`

`

`C.
`
`Prior Art Public Uses/Sales/Offers for Sale
`
`Google intends to seek discovery regarding prior art systems, in addition to other systems,
`
`that may be related to the Asserted Patent and printed publication references disclosed in these
`
`contentions. Google will supplement these contentions to incorporate any such discovery, as
`
`necessary.
`
`D.
`
`Prior Art under 35 U.S.C. § 102(f)
`
`Under the Local Patent Rules, Google also must disclose:
`
`Prior art under 35 U.S.C. § 102(f) shall be identified by providing
`the name of the person(s) from whom and the circumstances under
`which the invention or any part of it was derived.
`
`P.R. 3-3(a).
`
`Google will assert that the Asserted Patent is invalid under 35 U.S.C. § 102(f) in the event
`
`Google obtains evidence that the named inventors of the Asserted Patent did not alone invent the
`
`subject matter claimed in the Asserted Patent. Should Google obtain such evidence, Google will
`
`provide the name of the person(s) from whom and the circumstances under which the invention or
`
`any part of it was derived.
`
`E.
`
`Prior Art under 35 U.S.C. § 102(e) and 35 U.S.C. § 102(g)
`
`Google must further disclose:
`
`Prior art under 35 U.S.C. § 102(g) shall be identified by providing
`the identities of the person(s) or entities involved in and the
`circumstances surrounding the making of the invention before the
`patent applicant(s).
`
`P.R. 3-3(a).
`
`At present, Plaintiff has neither adequately alleged nor provided sufficient evidence of a
`
`conception date for the Asserted Patent earlier than any claimed priority date on the face of the
`
`17
`
`

`

`Asserted Patent. Should the Court permit Plaintiff to provide evidence of an earlier conception
`
`date, Google reserves the right to assert that any of the § 102(a) prior art is § 102(e) and/or § 102(g)
`
`prior art.
`
`Google further contends that each of the disclosures in Sections III.A. (list of prior art
`
`patents) and III.B. (list of prior art publications) constitute prior inventions to the asserted claims
`
`as detailed above.
`
`IV.
`
`LOCAL PATENT RULES 3-3(B) AND (c)
`
`Google must also disclose:
`
`Whether each item of prior art anticipates each asserted claim or
`renders it obvious. If a combination of items of prior art makes a
`claim obvious, each such combination, and the motivation to
`combine such items must be identified.
`
`A chart identifying where specifically in each alleged item of prior
`art each element of each asserted claim is found, including for each
`element that such party contends is governed by 35 U.S.C. § 112(6),
`the identity of the structure(s), act(s), or material(s) in each item of
`prior art that performs the claimed function.
`
`P.R. 3-3(b) and 3-3(c).
`
`In addition to and including the prior art disclosed in the Exhibits incorporated by reference
`
`herein, each of the asserted claims of the Asserted Patent is anticipated by and/or obvious in view
`
`of one or more of items of prior art identified above in Sections III.A. (list of prior art patents)
`
`and/or III.B. (list of prior art publications), alone or in combination. Generally, it would have been
`
`obvious to one of ordinary skill in the art to combine any of these references to arrive at the claimed
`
`invention. The combination of familiar elements according to known methods is obvious here
`
`because it yielded predictable results. Motivation to combine any two or more of the identified
`
`references comes from the fact that all of the references teach systems and methods of partially
`
`decoding coded data, modifying the partially decoded data, and re-encoding the modified partially
`
`18
`
`

`

`decoded data, and one would be motivated by considerations of efficiency, effectiveness,
`
`convenience, cost-savings, and accessibility, to combine the various teachings.
`
`The asserted claims of the Asserted Patent are directed to obvious combinations of old and
`
`familiar steps or elements, each performing the same function it has long been known to perform,
`
`which yield nothing more than predictable results. Put another way, the claimed subject matter is
`
`obvious because it is nothing more than (i) combinations of prior art elements according to known
`
`methods to yield predictable results, (ii) simple substitutions of one known element for another to
`
`yield predictable results, (iii) applications of known techniques to known devices ready for
`
`improvement to yield predictable results, and/or (iv) obvious to try. One of skill in the art would
`
`have been motivated to either modify the prior art identified in the Invalidity Exhibits or to
`
`combine that prior art in the manner indicated, by, for example, their background knowledge,
`
`design incentives, effects of demands known to the design community, or other market forces, in
`
`particular the desire and need for more effective video encoding techniques. Further, the prior art
`
`discussed in this section all relates to the same general field of video encoding, and addresses many
`
`of the same as well as different design and features of these and related devices and algorithms.
`
`This would have further motivated one of skill in the art to combine those references. In view of
`
`the simplicity of the claimed subject matter in view of the prior art and state of the art, and its use
`
`of well-known components with recognized benefits, the common sense of those skilled in the art
`
`also would have served as a motivation to combine any of the identified references and
`
`demonstrates that the asserted claims of the Asserted Patent would be obvious.
`
`Google has attached Exhibits containing claim charts identifying examples of prior art that
`
`anticipate and/or render obvious each asserted claim of the Asserted Patent. Specifically, to the
`
`extent the attached claim charts cite to a reference for each element or limitation of an asserted
`
`19
`
`

`

`claim, Google contends that such reference anticipates that claim. See Local Patent Rule 3-3(b)
`
`and (c). In addition, Google contends, in the alternative, that each asserted claim is rendered
`
`obvious for the reasons set forth in this document and the attached charts.
`
`Invalidity Charts
`
`Ex. 1 – Bailleul
`
`Ex. 2 – Chen
`
`Ex. 3 –Christopoulos
`
`Ex. 4 – Liu
`
`Ex. 5 - Panusopone
`
`Ex. 6 - Zhang
`
`Ex. 7 - Brüls
`
`Ex. 8 - Satoh
`
`Ex. 9 - Assunção
`
`Ex. 10 - Gatepin
`
`Ex. 11 - Keesman I
`
`Ex. 12 - Keesman II
`
`20
`
`

`

`Ex. 13 - Lee
`
`Ex. 14 - Morel
`
`Ex. 15 - Neri
`
`Ex. 16 - Youn
`
`Ex. 17 - Matsumura
`
`Ex. 18 - Kim
`
`Ex. 19 - Dubois
`
`To the extent that Plaintiff contends that any one of the primary references does not disclose
`
`one or more elements of the asserted claims, it would have been obvious to combine the primary
`
`references in the Invalidity Charts with one or more references, as discussed more fully below.
`
`As detailed in the Invalidity Charts and in this document, the asserted claims of the
`
`Asserted Patent are obvious in view of the state of the prior art (including Admitted Prior Art)
`
`alone and/or in combination with the references described in the above-referenced Exhibits as well
`
`as the references and disclosures described below. The alleged “inventions” claimed in the asserted
`
`claims of the Asserted Patent would have been obvious because the prior art, common knowledge,
`
`and the nature of the problems, viewed through the eyes of a person ordinarily skilled in the art,
`
`suggested by the claimed elements. A person of ordinary skill in the relevant fields would have
`
`possessed knowledge and skills rendering him or her capable of combining the prior art references
`
`with knowledge in the field and common sense. Moreover, the asserted claims represent well-
`
`21
`
`

`

`known combinations of familiar and pre-existing elements, yielding only predictable results.
`
`Additional reasons that a person of ordinary skill in the art would have been motivated to combine
`
`the identified prior art are provided in th