UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`GOOGLE LLC
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`
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`IPR2020-00757
`PATENT 7,012,960
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`
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2020-00757
`U.S. Patent No. 7,012,960
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`TABLE OF CONTENTS
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`Exhibit List ............................................................................................................... iii
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`I.
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`INTRODUCTION .............................................................................................. 1
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`II. OVERVIEW OF THE ’960 PATENT ............................................................... 1
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`III. RELATED PROCEEDINGS ............................................................................. 4
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`IV. THE BOARD SHOULD EXERCISE DISCRETION UNDER 35
`U.S.C. § 314(A) TO DENY INSTITUTION ..................................................... 4
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`A. The litigation is not stayed and there is no evidence it will be. ................. 5
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`B. Fully overlapping substantive issues warrant discretionary denial. ........... 7
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`C. The investment in the parallel litigation, prior to transfer, weighs in
`favor of discretionary denial. .................................................................... 10
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`D. Additional factors further weighing in favor of discretionary denial. ..... 11
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`V. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 12
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`VI. CLAIM CONSTRUCTION ............................................................................. 12
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`A. Overview of claim construction positions advanced by the parties in
`parallel litigation ....................................................................................... 14
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`A. “wherein the recursive filtering step is intended to use a recursive
`filter such as: Rf[i]=(1—.alpha.[i]) (R1[i]+Rmc[i]), where Rf[i],
`R1[i] and Rmc[i] are transformed coefficients comprised in the
`transformed signals (Rf,R1,Rmc) and .alpha.[i] is a filter coefficient
`comprised between 0 and 1” .................................................................... 15
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`B. “transformed signal” (claims 1, 4) and “transformed coefficients”
`(claim 1) .................................................................................................... 15
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`C. “transformed motion-compensated signal” (claims 1, 4) ......................... 18
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`VII. GOOGLE DOES NOT PROVE A REASONABLE
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`i
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`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ................................................................................. 19
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`A. Example substantive deficiencies arising from limitations directed to
`a recursive filtering step ........................................................................... 20
`1. The references are deficient even if combined as
`proposed ............................................................................................ 21
`2. The Petition relies upon impermissible hindsight
`reconstruction .................................................................................... 25
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`B. Example substantive deficiencies arising from limitations directed to
`a spatial filtering step ................................................................................ 26
`1. The references are deficient even if combined as
`proposed ............................................................................................ 27
`2. The Petition relies upon impermissible hindsight
`reconstruction .................................................................................... 32
`3. Matsumura does not cure acknowledged deficiencies ..................... 33
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`C. No Prima Facie Obviousness for dependent claim 5 ............................... 35
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`VIII.
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`CONCLUSION ........................................................................................ 36
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`CERTIFICATE OF COMPLIANCE .......................................................................... i
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`CERTIFICATE OF SERVICE ................................................................................. ii
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`ii
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`IPR2020-00757
`U.S. Patent No. 7,012,960
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`EXHIBIT LIST
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`Exhibit Description
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`2001
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`2001
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`Google’s Invalidity Contentions in Uniloc 2017 LLC v. Google LLC,
`No. 2:18-cv-551 (E.D. Tex.), dated August 26, 2019.
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`Uniloc’s Reply Claim Construction Brief filed in Uniloc 2017 LLC v.
`Google LLC, No. 2:18-cv-551 (E.D. Tex.) as Dkt. No. 136, dated
`January 30, 2020.
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to the Petition for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 7,012,960 (“the ’960 patent” or “Ex. 1001”) filed by Google LLC
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`(“Google” or “Petitioner”) in IPR2020-00757. The Petition purports to challenge
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`independent claims 1 and 4 and dependent claim 5.
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`As threshold matter, the Board should exercise its discretion to deny institution
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`under 35 U.S.C. § 314(a) and precedential authority interpreting the same, including
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`NHK Spring Co., Ltd. v. Intri-plex Technologies, IPR2018-00752, Paper 8 (P.T.A.B.
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`Sept. 12, 2018) (precedential) (“NHK”) and Apple Inc. v. Fintiv, Inc., IPR2020-
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`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (discussing NHK).
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`Because, as a threshold issue, denial is independently warranted under 35
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`U.S.C. § 314(a), the Board need not reach the substantive merits of the Petition. A
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`substantive analysis is nevertheless presented herein because the Board has held that
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`“weakness on the merits” also weighs in favor of discretionary denial under 35 U.S.C.
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`§ 314(a) and NHK, particularly when (like here) this factor is coupled with an earlier
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`district court trial date. Apple v. Fintiv, IPR2020-00019, Slip Op. 15 (citing E-One,
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`Inc. v. Oshkosh Corp., IPR2019-00162, Paper 16 at 8, 13, 20 (PTAB June 5, 2019)).
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`II. OVERVIEW OF THE ’960 PATENT
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`The ’960 patent, titled “Method of transcoding and transcoding device with
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`embedded filters,” issued on Mar. 14, 2006, and claims priority to a foreign patent
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`applications filed Oct. 24, 2000 and Mar. 6, 2001.
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`1
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`The ’960 patent is generally directed to a method of transcoding a primary
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`encoded signal into a secondary encoded signal, where the primary encoded signal is
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`comprised of a sequence of pictures. Ex. 1001, 1:7‒10. The invention is particularly
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`relevant to transcoding MPEG encoded video signals. Id., 1:19‒20. The method
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`includes a decoding step which includes a dequantizing substep for producing a first
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`transformed signal. The method further includes an encoding step following the
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`decoding step for obtaining a secondary encoded signal – the encoding step including
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`a quantizing sub-step. Id., 1:11‒16. The method includes a filtering step between the
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`dequantizing sub-step and the quantizing sub-step. Id., 1:64‒67. The filtering can be
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`used to control the static and dynamic resolution, and to reduce noise. Id., 2:3‒5. The
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`filtering can be temporal filtering or spatial filtering. Id., 2:9‒17, 2:22‒28.
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`The Petition purports to challenge independent claims 1 and 4 and dependent
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`claim 5 (which depends from claim 4). For ease of reference, the text of challenged
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`independent claims 1 and 4 are reproduced here:
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`1. A method of transcoding a primary encoded signal (S1)
`comprising a sequence of pictures, into a secondary encoded signal
`(S2), said method of transcoding comprising at least the steps of:
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`decoding a current picture of the primary encoded signal, said
`decoding step comprising a dequantizing sub-step (12) for
`producing a first transformed signal (R1),
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`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
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`2
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`and the quantizing sub-step, said filtering step using a recursive
`filter wherein the recursive filtering step is intended to use a
`recursive filter such as: Rf[i]=(1—.alpha.[i]) (R1[i]+Rmc[i]),
`where Rf[i], R1[i] and Rmc[i] are transformed coefficients
`comprised in the transformed signals (Rf,R1,Rmc) and .alpha.[i] is
`a filter coefficient comprised between 0 and 1; and
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`predicting a transformed motion-compensated signal from a
`transformed encoding error derived from the encoding step, said
`prediction step being situated between the encoding and decoding
`steps, wherein the recursive filtering step is for receiving the
`transformed motion-compensated signal and the first transformed
`signal and for delivering a filtered transformed signal to the
`quantizing sub-step.
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`4. A method of transcoding a primary encoded signal
`comprising a sequence of pictures, into a secondary encoded signal,
`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 for producing a
`first transformed signal,
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`encoding, following the decoding step, for obtaining the
`secondary encoded signal, said encoding step comprising a
`quantizing sub-step, wherein said method of transcoding further
`comprises a filtering step between the dequantizing sub-step and
`the quantizing sub-step; and
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`predicting a transformed motion-compensated signal from a
`transformed encoding error derived from the encoding step, said
`prediction step being situated between the encoding and decoding
`steps, wherein the filtering step is a spatial filtering step for
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`3
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`receiving the transformed motion-compensated signal and the first
`transformed signal and for delivering a filtered transformed signal
`to the quantizing sub-step, said spatial filtering step being only
`applied to intra-coded macroblocks contained in the current picture.
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`III. RELATED PROCEEDINGS
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`The ’960 patent has been asserted in Uniloc USA, Inc. et al. v. Amazon.com,
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`Inc., et al, Case No. 2-18-cv-00332 (E.D. Tex.), which has been dismissed. In
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`addition, the ’960 patent has been asserted in Uniloc 2017 LLC et al v. Google LLC,
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`Case No. 2-18-cv-00551 (E.D. Tex.), which has been transferred to the Northern
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`District of California per court order dated June 19, 2020 (Dkt. No. 163). Before the
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`court ordered transfer of the litigation, the parties had completed all claim
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`construction briefing (Dkt. Nos. 121, 130, and 136). Google filed Patent Owner’s
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`opening claim construction brief (Dkt. 121) and Google’s responsive claim
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`construction brief (Dkt. 130) as Exhibits 1011 and 1012, respectively. Because
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`Google inexplicably opted to not also attach Uniloc’s reply claim construction brief
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`(Dkt. 136) as an exhibit to the Petition, for the convenience of the Board, Patent
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`Owner has attached that brief hereto as Exhibit 2002.
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`IV. THE BOARD SHOULD EXERCISE DISCRETION UNDER 35 U.S.C.
`§ 314(A) TO DENY INSTITUTION
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`As threshold and dispositive issue, the Board should deny institution under 35
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`U.S.C. § 314(a). Under the factors set forth in NHK, and the discussion of NHK and
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`its progeny opinions set forth in Apple v. Fintiv, instituting trial under the present
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`facts would be an inefficient use of Board resources.
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`4
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`A. The litigation is not stayed and there is no evidence it will be.
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`While the litigation was stayed when Google filed its Petition (Pet. 2), that is
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`no longer the case. The litigation has since been transferred to the Northern District
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`of California (along with several other cases involving the same parties) and is no
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`longer stayed. Because the record lacks any evidence that the transferee district will
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`stay the case, and due to the fact that claim construction briefing is complete, the
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`factor concerning a stay weighs in favor of denial, or at is at least neutral.
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`The Board’s decision in Apple v. Fintiv explains that, “[i]n some cases, there
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`is no stay, but the district court has denied a motion for stay without prejudice and
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`indicated to the parties that it will consider a renewed motion or reconsider a motion
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`to stay if a PTAB trial is instituted.” Slip op. at 6–7. Apple v. Fintiv thus considers
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`fact-specific and case-specific guidance from the district court, which is entirely
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`lacking here.
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`In other matters involving the same parties, Google has repeatedly asserted that
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`the Northern District of California “frequently” (and hence admittedly not always)
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`stays cases in view of IPRs; and Google cites cases without regard to facts and
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`analyses set forth therein. See, e.g., Google v. Uniloc, IPR2020-00441, Paper 7 at
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`1‒2; Google v. Uniloc, IPR2020-00463, Paper 10 at 2‒3; Google v. Uniloc, IPR2020-
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`00479, Paper 8 at 2. One of the cases Google has repeatedly cited as granting a stay
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`after a Board decision on institution was based on an unopposed motion. See Uniloc
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`2017 LLC v. Apple Inc., No. 3:19-cv-01904, Dkt. 89 (N.D. Cal. Jan. 30, 2020). The
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`two Northern District of California cases Google has cited as granting stays before a
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`Board decision on institution both acknowledge that motions to stay are highly
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`5
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`individualized matters the court must decide on a case-by-case basis using its
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`discretion. Cellwitch Inc. v. Tile, Inc., No. 4:19-cv-01315, Dkt. 68 (N.D. Cal. Jan.
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`17, 2020); Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 4:19-cv-02269, Dkt. 42 (N.D.
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`Cal. Nov. 8, 2019). For example, in Cellwitch, the court found it significant that the
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`parallel IPR “sought review of every claim in the [challenged patent].” Slip op. at 3.
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`Here, the petition seeks review of only claims 6‒12, which is a far cry from every
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`claim of the ’908 patent.
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`Cellwitch also considered the fact that “[c]laims [sic] construction briefing has
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`not yet been field” weighed in favor of a stay. Slip. op. at 4.1 Here, the claim
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`construction briefing is completed and is made of record (by Google) as Exhibits
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`1004, 1005, and 1006 to the Petition.
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`Cellwitch also found that the defendant seeking stay had “instigated the IPR
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`proceedings in a timely fashion.” Slip op. at 5. Here, Google inexplicably delayed
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`filing the instant IPR until quite literally the last possible moment, and long after the
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`court and the parties and already expended considered resources in litigation.
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`The other opinions from the Northern District of California Google has
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`previously cited (in addressing similar circumstances involving the same parties)
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`each similarly consider highly individualized factors applied to the particular facts of
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`the case. Google’s speculative and unsupported assertion in sister matters that the
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`1 In at least two other opinions Google has previously cited, the court similarly noted,
`as part of its analysis on a motion to stay, that no court had yet issued an order on
`claim construction. Rep. 2 (citing Uniloc, No. 3:19-cv-01904, Dkt. 89; and Elekta
`Ltd. v. ZAP Surgical Sys., Inc. No. 4:19-cv-02269, Dkt. 42 (N.D. Cal. Nov. 8, 2019).
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`6
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`Northern District of California will likely stay the litigation once transferred simply
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`cannot be squared with the analyses applied in the court opinions Google has cited.
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`Given the parties have already repeatedly filed supplemental briefing in this
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`issue in other matters, and Uniloc summaries above the points the parties have
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`previously raised, it would serve no purpose here to grant leave for Google to (yet
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`again) attempt to raise the same points in a futile attempt to avoid discretionary denial
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`here. Moreover, Google should not be allowed to use Uniloc’s prior supplemental
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`briefing as a roadmap to cure deficiencies in Google’s supplemental briefing
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`previously filed on this issue in other matters.
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`B.
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`Fully overlapping substantive issues warrant discretionary denial.
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`Google failed to address—and has therefor waived—another significant factor
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`considered prominently in NHK and its progeny opinions as weighing in favor of
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`denial—i.e., when the petition includes the same or substantially the same claims,
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`grounds, arguments, and evidence as presented in the parallel proceeding. See NHK,
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`IPR2018-00752, Paper 8 at 19–20; accord, Apple v. Fintiv, IPR2020-00019, Paper
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`11 at 10 (discussing NHK and collecting its progeny opinions on point); see also Next
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`Caller, Inc. v. TRISTID, Inc., IPR2019-00963, Paper 8 at 11–12 (PTAB Oct. 28,
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`2019). This factor applies here and further weighs in favor of denial.
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`Google’s Petition purports
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`to raise
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`the following four grounds of
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`unpatentability:
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`(1) Claim 1 is allegedly obvious over Keesman (Ex. 1005) in view
`Neri (Ex. 1006);
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`7
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`(2) Claim 1 is allegedly obvious over Keesman in view Neri and
`Dubois (Ex. 1007);
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`(3) Claims 4 and 5 are allegedly obvious over Keesman in view of
`Kim (Ex. 1008);
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`(4) Claims 4 and 5 are allegedly obvious over Keesman in view of
`Kim and Matsumura (Ex. 1009).
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`Pet. 3−4.
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`In its invalidity contentions served in litigation, Google purports to preserve
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`the right to rely on invalidity challenges that wholly encompass those raised in its
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`instant Petition. A copy of the cover pleading of Google’s litigation invalidity
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`contentions is filed herewith as Exhibit 2001. The same art asserted in the instant
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`Petition (Exs. 1005, 1006, 1007, 1008, and 1009) is identified in Google’s invalidity
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`contentions served in litigation (Ex. 2001), as shown by the example screenshots
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`reproduced below.
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`8
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`Ex. 2001, 16 (yellow highghtling added). While the Google opted in litigation to cite
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`to a publication by Hee-Yong Kim et al. entitled “DCT Domain Filter for ATV down
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`conversion,” it opted in its Petition to cite, instead, to U.S. Patent No. 6,249,549
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`9
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`IPR2020-00757
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`issued to Hee-Yong Kim, entitled “Down Conversion System using a Pre-Decimation
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`Fileter.” While it was reasonably foreseeable that Uniloc would point to these
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`parallel proceedings as having overlaping issues, Google fails to explain whether and
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`to what extent the cited Kim references, which have similar titles and are attributed
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`to the same author, differ in any way in terms of their respective disclosures.
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`Given Petitioner Google makes no attempt to distinguish the obviosuness
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`theories set forth in the Petiton and those raised in parallel litigation, and further given
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`the cited art completely or at least substaantially overlaps in these proceedings, this
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`factor also weighs in favor of denail. Moreover, Google has waived any argument to
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`the contrary, as this factor of overlapping issues is addressed in NHK, and this opinion
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`which was designated precedential long before Google filed its Petition. See NHK,
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`Slip Op. at 20.
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`C. The investment in the parallel litigation, prior to transfer, weighs in
`favor of discretionary denial.
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`The investment in the parallel litigation, prior to transfer, also weighs in favor
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`of discretionary denial. Here, the advanced stage of the litigation is evidenced by the
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`fact that, prior to transfer, claim construction briefing had already been completed.
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`In discussing NHK and its progeny opinions, the Apple v. Fintiv opinion explains the
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`retrospective nature of this factor as follows:
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`If, at the time of the institution decision, the district court has issued
`substantive orders related to the patent at issue in the petition, this
`fact favors denial. Likewise, district court claim construction
`orders may indicate that the court and parties have invested
`sufficient time in the parallel proceeding to favor denial. … This
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`10
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`investment factor is related to the trial date factor, in that more work
`completed by the parties and court in the parallel proceeding tends
`to support the arguments that the parallel proceeding is more
`advanced, a stay may be less likely, and instituting would lead to
`duplicative costs.
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`Slip op. at 9‒10 (emphasis added).
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`Google has also recently suggested in other matters involving the same parties
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`that the court’s transfer order renders moot the consideration of the proximity of the
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`court’s trial date to the Board’s projected statutory deadline for a final written
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`decision. See, e.g., Google v. Uniloc, IPR2020-00479, Paper 8 at 4. For this
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`additional factor to weigh against discretionary denial, however, trial would have to
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`be rescheduled in the transferee district well over an entire year from now (i.e.,
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`sometime after August 21, 2021). There is no record evidence to support such
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`speculation. On the other hand, that trial will likely be expedited in the transferee
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`district is evidenced at least by the demonstrable fact that claim construction briefing
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`in the parallel litigation was completed long ago.
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`D. Additional factors further weighing in favor of discretionary denial.
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`That Google is the Petitioner and the defendant in the parallel district court
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`litigation weighs in favor of discretionary denial. Apple v. Fintiv, Slip Op. 13. In
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`addition, as explained further below, the “weakness [of the Petition] on the merits”
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`further supports denying institution. Id., 15 (favorably citing E-One, IPR2019-
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`00162, Paper 16 at 8, 13, 20). Even if the example substantive deficiencies addressed
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`herein were “a closer call,” and here the deficiencies are quite glaring, “if the merits
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`of the grounds raised in the petition are a closer call, then that fact has favored
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`denying institution when other factors favoring denial are present.” Id.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition proposes that a person of ordinary skill “would have had a
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`Bachelor’s degree in Electrical Engineering, Computer Science, or the equivalent
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`thereof, and two or more years of experience with data compression systems and
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`algorithms, including video coding.” Pet. 7 (citing Ex. 1002 ¶¶ 16−21). The Petition
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`further asserts that “more education can supplement practical experience and vice
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`versa.” Id. Google’s proposed definition of person of ordinary skill is improper at
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`least because it fails to define relational thresholds explaining how much “more
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`education” or more “practical work experience” which would allegedly constitute
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`sufficient offset.
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`Patent Owner does not offer a competing definition for a person of ordinary
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`skill in the art at this preliminary stage, as, even if the Board adopted Google’s
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`proposed and improper definition, the Petitioner fails to demonstrate a reasonable
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`likelihood that the challenged claims are unpatentable. Patent Owner reserves the
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`right to propose its own definition if trial is instituted.
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`VI. CLAIM CONSTRUCTION
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`Consistent with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and its
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`progeny, as of the filing date of the Petition, the standard for claim construction in
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`inter partes review before the Board is as follows:
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`In an inter partes review proceeding, a claim of a patent, or a claim
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`proposed in a motion to amend under § 42.121, shall be construed
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent. Any prior claim construction determination concerning a
`term of the claim in a civil action, or a proceeding before the
`International Trade Commission, that is timely made of record in the
`inter partes review proceeding will be considered.
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`37 C.F.R. § 42.100(b) (effective November 13, 2018) (emphasis added).
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`It is well established that inter partes review petitioners cannot prove
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`obviousness through application of an erroneous construction. See, e.g., Mentor
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`Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at
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`*11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics
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`Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying petition as tainted by reliance
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`on an incorrect claim construction); Vivint, Inc. v. Alarm.com Inc., 754 F. App’x 999,
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`1005 (Fed. Cir. 2018) (vacating and remanding, in part, because Board had adopted
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`and applied certain incorrect claim constructions); Int’l Bus. Machines Corp. (IBM)
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`v. Iancu, 759 F. App’x 1002, 1005–06 (Fed. Cir. 2019) (finding that the Board’s
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`interpretation of key claim limitations was incorrect resulting in the Board’s decisions
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`having errors).
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`Accordingly, as a dispositive an independent basis for denial of the Petition in
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`its entirety, the Petition is impermissibly keyed to incorrect claim constructions. This
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`is true even where the Petition purports to apply the “plain and ordinary meaning,”
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`as Petitioner suggests the corresponding term is indefinite and then fails to articulate
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`the “plain and ordinary meaning” allegedly applied, as explained further below.
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`A. Overview of claim construction positions advanced by the parties
`in parallel litigation
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`The following table lists the constructions set forth in the parties’ respective
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`briefings for disputed terms recited in the challenged claims.
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`Claim Term
`
`“wherein the recursive filtering
`step is intended to use a recursive
`filter such as: Rf[i]=(1—.alpha.[i])
`(R1[i]+Rmc[i]), where Rf[i], R1[i]
`and Rmc[i] are transformed
`coefficients comprised in the
`transformed signals (Rf,R1,Rmc)
`and .alpha.[i] is a filter coefficient
`comprised between 0 and 1”
`(claim 1)
`“transformed coefficient” (claim 1)
`
`
`“transformed signal” (claims 1, 4)
`
`“transformed motion-compensated
`signal” (claims 1, 4)
`
`Uniloc’s Claim
`Construction
`Plain and ordinary
`meaning
`
`Google’s Claim
`Construction
`Indefinite as to the
`terms “is intended to”
`and “such as” or,
`alternatively, plain and
`ordinary meaning
`
`Plain and ordinary
`meaning
`
`Plain and ordinary
`meaning
`
`Plain and ordinary
`meaning
`
`“data concerning
`video that has been
`discrete cosine
`transformed and
`inverse quantized”
`“motion-compensated
`data that has been
`discrete cosine
`transformed and
`inverse quantized”
`
`See generally Exhibits 1011, 1012 and 2002 (the parties’ respective claim
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`construction briefing publicly filed in parallel litigation).
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`A.
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`“wherein the recursive filtering step is intended to use a recursive
`filter such as: Rf[i]=(1—.alpha.[i]) (R1[i]+Rmc[i]), where Rf[i],
`R1[i] and Rmc[i] are transformed coefficients comprised in the
`transformed signals (Rf,R1,Rmc) and .alpha.[i] is a filter
`coefficient comprised between 0 and 1”
`
`The Petition asserts that, “[i]n district court, Petitioner has argued that the
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`phrases “intended to” and “such as” as recited in this claim term render claim 1
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`indefinite because these phrases are ambiguous and thereby fail to afford clear notice
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`of what is claimed.” Pet. 13 (citing Ex. 1012, 3−7). Petitioner neglects to inform the
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`Board, however, that in district court Petitioner had also argued, in the alternative,
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`that the phrases “intended to” and “such as” recited in claim 1 should be afforded
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`their plain and ordinary meaning. Ex. 2002, 1. Petitioner asserts it has applied a
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`“plain and ordinary meaning” interpretation for purposes of the Petition, though it
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`offers no clarification concerning the alleged “plain and ordinary meaning” applied
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`here. In suggesting the term is indefinite, and yet failing to articulate how the term
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`was allegedly interpreted for purposes of advancing redundant theories of
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`obviousness, the Petition is deficient on its face. Neither the Board not the Patent
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`Owner should be expected to divine what “plain and ordinary meaning” Petitioner
`
`had allegedly applied in advancing its redundant obviousness theories.
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`B.
`
`“transformed signal” (claims 1, 4) and “transformed coefficients”
`(claim 1)
`
`The Petition is keyed to the erroneous construction that the terms “transformed
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`signal” and “transformed coefficients” are indistinguishable from one another, even
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`though both terms are recited as distinct elements in claim 1. Pet. 12. Specifically,
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`according to Petitioner, both distinct terms should be indiscriminately construed to
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`mean “data concerning video that has been discrete cosine transformed and inverse
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`quantized” ostensibly because this singular “definition is consistent with [their] usage
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`. . . in the claims.” Id. Petitioner is dead wrong—the claim language expressly
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`proscribes defining these distinct elements as being one and the same.
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`Petitioner’s singular construction cannot be correct at least because it fails to
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`“delineate between two separately recited elements.” Willis Elec. Co., Ltd. v.
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`Polygroup Macau Ltd. (BVI), 777 F. App’x 495, 498 (Fed. Cir. 2019) (citing Becton,
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`Dickinson & Co. v. Tyco Healthcare Grp., 616 F.3d 1249, 1254 (Fed. Cir. 2010),
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`which quotes Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)) (cleaned
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`up); see also Becton, 616 F.3d at 1254 (“Where a claim lists elements separately, the
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`clear implication of the claim language is that those elements are distinct components
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`of the patented invention.”). Moreover, claim 1 expressly differentiates these terms
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`at least by reciting “transformed coefficients comprised in the transformed signals.”
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`Ex. 1001, claim 1, 9:42−43. This explicit interrelationship of distinct elements, which
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`recites one as comprising the other, unambiguously reveals Petitioner’s error in
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`applying a singular definition under the false presumption that these terms are one
`
`and the same.
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`
`
`Petitioner also raises the attorney argument, without citation to any alleged
`
`expert testimony, that its singular definition for these two distinct terms “is also
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`consistent with the usage of both ‘transformed coefficients’ and ‘transformed
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`signal[s]’ in the specification.” Pet. 12 (citing only the ’960 patent as alleged
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`support). As with the claim language itself, however, the specification likewise
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`directly refutes Petitioner’s attempt to conflate these distinct terms into one, and then
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`redraft them as both requiring the extraneous limitations of “data concerning video
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`that has been discrete cosine transformed and inverse quantized.”
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`Nowhere does the specification clearly and unambiguously define either a
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`“transformed signal” or a “transformed coefficient” to mean “data concerning video
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`that has been discrete cosine transformed and inverse quantized,” as Petitioner
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`erroneously proposes. Indeed, Petitioner fails to bring to the Board’s attention
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`Petitioner’s prior party admission, before the district court, that the claimed
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`“transformed signal” need not be quantized:
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`The “transformed motion-compensated signal (Rmc)” in Figure 2
`represents the output of the prediction channel. Id. at Figure 2, 5:33–
`34. Just like the “first transformed signal” and “filtered transformed
`signal,” the “transformed motion compensated signal” has been
`discrete cosine transformed (at box 19) but not quantized. Id.
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`Ex. 1012 at 10 (emphasis added).
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`Petitioner’s conclusory and unsupported claim construction applied in the
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`Petition also fails to address certain embodiments in the specification where no
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`discrete cosine transform step is used by transcoder 200 to generate either a first or
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`second transformed signal. See, e.g., ’960 patent (Ex. 1001), 3:14−17 (“first
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`transformed signal”); 5:24−25 (“second transformed signal”). Petitioner also fails to
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`address an embodiment where a transformed signal is generated without an inverse
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`quantizer step. See, e.g., id., 5:33−34. At least these counter examples, which
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`Petitioner fails t