Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: August 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`GE VIDEO COMPRESSION, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00726
`Patent 6,943,710 B2
`____________
`
`Before JONI Y. CHANG, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: August 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`GE VIDEO COMPRESSION, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00726
`Patent 6,943,710 B2
`____________
`
`Before JONI Y. CHANG, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2019-00726
`Patent 6,943,710 B2
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`I.
`
`INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition to institute an inter
`partes review of claims 25, 33, and 60–63 of U.S. Patent No. 6,943,710 B2
`(Ex. 1001, “the ’710 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 2
`(“Petition” or “Pet.”). GE Video Compression, LLC (“Patent Owner”) filed
`a Patent Owner Preliminary Response. Paper 6 (“Preliminary Response” or
`“Prelim. Resp.”).
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
`“the information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). The Supreme Court held
`that a decision to institute under 35 U.S.C. § 314 may not institute on fewer
`than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct.
`1348, 1359–60 (2018).
`Based on the record before us, we are not persuaded that the
`information presented in the Petition demonstrates a reasonable likelihood
`that Petitioner would prevail in proving that at least one challenged claim
`would have been obvious under 35 U.S.C. § 103(a) based on the cited
`references. Accordingly, we deny the Petition and do not institute an inter
`partes review.
`
`Real Party-In-Interest
`A.
`Petitioner identifies Unified Patents Inc. as the real party-in-interest.
`Pet. 79.
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`Related Proceedings
`B.
`The parties state that the ’710 patent “is not the subject of any related
`administrative or judicial proceedings.” Id.; Paper 5, 1.
`
`The ’710 Patent
`C.
`The ’710 patent is titled “Method and Arrangement for Arithmetic
`Encoding and Decoding Binary States and a Corresponding Computer
`Program and a Corresponding Computer-Readable Storage Medium” and is
`directed to improved arithmetic coding1 method that determines a partial
`interval size without multiplication:
`arithmetic
`for
`arrangement
`A method
`and
`the probability
`encoding/decoding
`is described, wherein
`estimation is performed by a finite state machine FSM, wherein
`the generation of N representative states of the FSM is performed
`offline. Corresponding transition rules are filed in the form of
`tables. In addition, a pre-quantization of the interval width R to
`a number of K pre-defined quantization values is carried out.
`With suitable dimensioning of K and N, this allows the
`generation of a table containing all K×N combinations of pre-
`calculated product values R×PLPS for a multiplication-free
`determination of RLPS.
`Ex. 1001, at [54], [57].
`According to the ’710 patent, Figure 1 illustrates “the basic operations
`for a binary arithmetic coding” as used by the prior art where “the current
`partial interval is represented by the two values L and R, wherein L indicates
`the offset point and R the size (width) of the partial interval, wherein both
`quantities are respectively illustrated using b-bit integers.” Id. at 1:22–27.
`Figure 1 is reproduced below:
`
`
`1 Unless indicated otherwise, all references to coding encompass both
`coding and decoding.
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`Figure 1 “shows an illustration of the basic operations for a binary arithmetic
`coding.” Id. at 9:59–60. As shown in Figure 1 above, the coding of a bit is
`performed in five steps:
`In the first step using the probability estimation the value of the
`less probable symbol is determined. For this symbol, also
`referred to as LPS (least probable symbol), in contrast to the MPS
`(most probable symbol), the probability estimation PLPS is used
`in the second step for calculating the width RLPS of the
`corresponding partial interval. Depending on the value of the bit
`to be coded L and R are updated in the third step. In the [fourth]
`step the probability estimation is updated depending on the value
`of the just coded bit and finally the code interval R is subjected
`to a so-called renormalization in the last step, i.e. R is for
`
`example rescaled so that the condition R∈[2b−2, 2b−1] is fulfilled.
`
`Here, one bit is output with every scaling operation.
`Id. at 2:29–41.
`The ’710 patent identifies a disadvantage associated with the prior art
`method of binary arithmetic coding. Id. at 2:43–48. According to the ’710
`patent, “the calculation of the interval width RLPS requires a multiplication
`for every symbol to be coded” and that “multiplication operations, in
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`particular when they are realized in hardware, are cost- and time-intensive.”
`Id.
`
`The ’710 patent states that it overcomes that disadvantage by
`performing arithmetic coding that “(a) do[es] not require a multiplication,
`(b) allow[s] a probability estimation without calculation effort and
`(c) simultaneously guarantee[s] a maximum coding efficiency over a wide
`range of typically occurring symbol probabilities.” Id. at 3:14–23. In order
`to achieve these advantages, the ’710 patent discusses using a modified
`scheme for a table-aided arithmetic coding, shown in Figure 2, reproduced
`below:
`
`
`
`Figure 2 “shows a modified scheme for a table-aided arithmetic encoding.”
`Id. at 9:62–63. The modified scheme has four steps:
`After the determination of the LPS, first of all the given interval
`width R is mapped to a quantized value Q using a tabulated
`mapping Qtab and a suitable shift operation (by q bit)[.]
`Alternatively, the quantization may in special cases also be
`performed without the use of a tabulated mapping Qtab only with
`the help of a combination of shift and masking operations.
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`Generally, here a relatively coarse quantization to K=2 . . . 8
`representative values is performed. Also here, similar to the case
`of the probability estimation, no explicit determination of Q is
`performed; rather, only an index q_index is transferred to Q.
`This index is now used together with the index p_state for a
`characterization of
`the current probability state for
`the
`determination of the interval width RLPS. For this, now the
`corresponding entry of the table Rtab is used. There, the K·Nmax
`product values R×PLPS, that correspond to all K quantized values
`of R and the Nmax different from the probability states, are entered
`as integer values with an accuracy of generally b−2 bits. For
`practical implementations a possibility is given here to weigh up
`between the storage requirements for the table size and the
`arithmetic accuracy which finally also determines the efficiency
`of the coding. Both target variables are determined by the
`granularity of the representation of R and PLPS.
`In the [fourth] step of FIG. 2 it is shown, how the
`updating of the probability state p_state is performed depending
`on the above coded event bit.
`Id. at 11:3–29.
`
`The Challenged Claims
`D.
`Petitioner challenges claims 25, 33, and 60–63 of the ’710 patent.
`Pet. 1. Claim 25 is illustrative of the subject matter of the challenged claims
`and reads as follows:
`25. A method for arithmetically encoding a symbol to
`be encoded having a binary state based on a current interval
`width R and a probability representing a probability estimation
`for the symbol to be encoded, wherein the probability is
`represented by a probability index for addressing a probability
`state from a plurality of representative probability states, which
`method comprises the following steps:
`encoding the symbol to be encoded by performing the
`following substeps:
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`mapping the current interval width to a quantization index
`from a plurality of representative quantization
`indices; and
`performing the interval separation by accessing an interval
`division table using the quantization index and the
`probability index to obtain a partial interval width
`value.
`Ex. 1001, 18:63–19:11
`
`E.
`
`Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis2
`Challenged Claims
`Howard3 in view of Printz4
`§ 103(a) 25, 33, 60–63
`Kimura5 in view of Printz
`§ 103(a) 25, 33, 60–63
`
`Pet. 16, 34, 61. In its analysis, Petitioner relies on the declaration testimony
`of Dr. Immanuel Freedman (Ex. 1003).
`
`II. ANALYSIS
`Claim Construction
`A.
`Because the Petition was filed on or after November 13, 2018, we
`construe claims “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).”
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 effective on March 16, 2013. Because the ’710 patent
`issued from an application filed before March 16, 2013, we apply the pre-
`AIA versions of the statutory bases for unpatentability.
`3 Paul G. Howard & Jeffrey Scott Vitter, Design and Analysis of Fast Text
`Compression Based on Quasi-Arithmetic Coding, 30 Info. Processing &
`Mgmt., No. 6, 777 (1994) (Ex. 1004).
`4 U.S. Patent No. 5,592,162 (issued Jan. 7, 1997) (Ex. 1005).
`5 U.S. Patent No. 6,351,569 B1 (issued Feb. 26, 2002) (Ex. 1006).
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`37 C.F.R. § 42.100(b) (2019). Specifically, we apply the principles set forth
`in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en
`banc). Under that standard, the words of a claim are generally given their
`“ordinary and customary meaning,” which is the meaning the term would
`have to a person of ordinary skill at the time of the invention, in the context
`of the entire patent including the specification. See Phillips, 415 F.3d at
`1312–13. “[W]e need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy . . . .’” Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999)).
`Petitioner proposes a construction of the term “internal division
`table.” Pet. 23–24. Patent Owner argues that Petitioner’s proposed
`construction does not need to be addressed or decided. Prelim Resp. 34 n.3
`(citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`2011); Vivid, 200 F.3d at 803).
`In light of the parties’ arguments and evidence, we conclude that no
`express claim construction is necessary for our determination of whether to
`institute review of the challenged claims. See Nidec, 868 F.3d at 1017.
`
`Legal Principles
`B.
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when available, evidence
`such as commercial success, long felt but unsolved needs, and failure of
`others.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR,
`550 U.S. at 407 (“While the sequence of these questions might be reordered
`in any particular case, the [Graham] factors continue to define the inquiry
`that controls.”). The Court in Graham explained that these factual inquiries
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`question upon which there is likely to be uniformity of thought in every
`given factual context.” Graham, 383 U.S. at 18.
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by “whether the improvement is more than the
`predictable use of prior art elements according to their established
`functions.” Id. at 417. To reach this conclusion, however, it is not enough
`to show merely that the prior art includes separate references covering each
`separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex,
`Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
`additionally requires that a person of ordinary skill at the time of the
`invention “would have selected and combined those prior art elements in the
`normal course of research and development to yield the claimed invention.”
`Id.
`
`6 Neither Petitioner nor Patent Owner presented any evidence of objective
`indicia of nonobviousness (so-called “secondary considerations”).
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`As a factfinder, we also must be aware “of the distortion caused by
`hindsight bias and must be cautious of arguments reliant upon ex post
`reasoning.” KSR, 550 U.S. at 421.
`
`Level of Ordinary Skill in the Art
`C.
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001).
`Factors pertinent to a determination of the level of ordinary skill in
`the art include “(1) the educational level of the inventor; (2) type of
`problems encountered in the art; (3) prior art solutions to those problems;
`(4) rapidity with which innovations are made; (5) sophistication of the
`technology; and (6) educational level of workers active in the field.” Envtl.
`Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983)
`(citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d
`1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in
`every case, and one or more of these or other factors may predominate in a
`particular case.” Id. Moreover, “[t]hese factors are not exhaustive but are
`merely a guide to determining the level of ordinary skill in the art.” Daiichi
`Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`In determining a level of ordinary skill, we also may look to the prior art,
`which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
`Additionally, the Supreme Court informs us that “[a] person of ordinary skill
`is also a person of ordinary creativity, not an automaton.” KSR, 550
`U.S. at 421.
`Petitioner argues that a person having ordinary skill in the art “would
`have had the equivalent of at least a bachelor’s degree in electrical
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`engineering, computer engineering, computer science, or a similar field with
`at least two years of experience or a related subject and two or more years of
`experience in the field of data compression.” Pet. 23 (citing Ex. 1003 ¶ 69).
`Petitioner further argues that “[l]ess work experience may be compensated
`by a higher level of education, such as a master’s degree, and vice versa.”
`Id. (citing Ex. 1003 ¶ 69).
`Patent Owner does not expressly address the level of skill in the art.
`See generally Prelim. Resp.
`Accordingly, we adopt Petitioner’s proposed level of ordinary skill,
`except that we delete the qualifiers “at least” and “or more” to eliminate
`vagueness as to the amount of practical experience. The qualifiers expand
`the range indefinitely without an upper bound, and thus precludes a
`meaningful indication of the level of ordinary skill in the art.
`
`D. Obviousness over Howard and Printz
`Petitioner argues the subject matter of claims 25, 33, and 60–63 would
`have been obvious to a person of ordinary skill in the art at the time of the
`invention in light of the teachings of Howard and Printz. Based on the
`current record, we are not persuaded that Petitioner has established a
`reasonable likelihood of prevailing on its asserted obviousness ground with
`respect to claims 25, 33, and 60–63.
`
`Summary of Howard
`1.
`Howard is an article titled “Design and Analysis of Fast Text
`Compression Based on Quasi-Arithmetic Coding” and “give[s] a detailed
`algorithm for fast text compression.” Ex. 1004, 8. According to Howard,
`the algorithm is related to the PPM (prediction by partial mapping) method
`that “simplifies the modeling phase by eliminating the escape mechanism,
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`and speeds up coding by using a combination of quasi-arithmetic coding and
`Rice coding.” Id.
`Howard discusses various prior coding techniques, including a quasi-
`arithmetic coding discussed in an earlier publication by the same authors:
`P.G. Howard & J. S. Vitter, Practical Implementations of Arithmetic
`Coding, in Image and Text Compression, 85–112, J. Storer (ed.) (1992)
`(hereinafter “Howard II”). According to Howard, Howard II discloses
`performing “all the arithmetic ahead of time and to store the results in
`lookup tables.” Ex. 1004, 11. Howard further states that because the
`number of coder states is 3N2/16, by choosing to keep the value of N low
`enough, “the number of coder states will be small enough to permit keeping
`all the lookup tables in memory.” Id. A portion of Howard’s Table 3, which
`is used by the coder of Howard II, is reproduced below.
`
`
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`Id. at 12. Howard’s Table 3 is a “[c]omplete quasi-arithmetic coding table”
`for the method taught in Howard II “for N = 8.” Id. “The initial state is
`[0,8).” Id. Howard’s Table 3 has been abridged to only show the values of
`states [0,8), [0,7), and [0,6).
`Howard also discusses its new coding technique, the Fast PPM text
`compression system, and the differences between that new method and the
`method used in Howard II. See id. at 11–18.
`The fast PPM method involves a new set of lookup tables, Howard’s
`Tables 5–8. Id. Howard’s Table 5 is reproduced below.
`
`Id. at 15. Howard’s Table 5 is a probability array for quasi-arithmetic
`coding which has an index, a found/not found count, a probability of a
`symbol being found, and the new index value based on whether the symbol
`is found or not found (the “Transitions”). Id.
`Howard’s Table 6 is reproduced below.
`
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`Id. Howard’s Table 6 is a “[c]omplete implementation of the quasi-
`arithmetic coding table for N = 8.” Id. Howard’s Table 6 sets forth the
`potential states (both terminal and non-terminal) along with entries to the
`companion delta array of Howard’s Table 7 and the right-branch array for
`Howard’s Table 8. Id.
`Howard’s Table 7 is reproduced below.
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`Id. at 16. Howard’s Table 7 is a delta array with five vectors, one for each
`possible terminal state width, indexed by the probability index to determine
`Δ, the size of the right subinterval. Id.
`Howard’s Table 8 is reproduced below.
`
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`Id. Howard’s Table 8 is the right branch array with “four vectors, one for
`each possible value of the high end of a terminal state, [that] are indexed
`by Δ, the size of the right subinterval, to find a pointer to the next state.” Id.
`Howard’s Tables 5–8 are used together for both coding and decoding.
`Id. at 15–18. For example, using an initial state, Table 6 is used to
`determine an entry pointer to Table 7, which is used along with the
`probability index to determine the correct Δ, which is the width of the right
`subinterval. Id. at 15–16. For nonterminal states, the Δ is then used with the
`H pointer from Table 6 to determine the next state using Howard’s Table 8.
`Id. at 16.
`
`Summary of Printz
`2.
`Printz is titled “Interval Width Update Process in the Arithmetic
`Coding Method.” Ex. 1005, at [54]. Printz discusses prior arithmetic coding
`and that a disadvantage of that technique was that the “algorithm requires
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`two multiplications for each coded symbol, which is an obstacle to high
`speed implementation.” Id. at 1:10–3:23. Printz further discusses various
`solutions that were proposed to the problem, including the method of
`Howard II, along with the problems of those approaches. See id. at 3:24–
`4:35.
`In order to overcome the problems associated with the prior solutions,
`Printz proposes switching from binary to multialphabet coding and replacing
`various operations for updating the width with a single table. Id. at 4:33–58.
`Printz’s proposed table is represented by the function ƒ″ reproduced below.
`
`
`Id. at 7:7. The inputs are the symbol-to-be-encoded (Si) and a current index
`(Wi) (shown on the right side of the equation above) and the outputs are an
`augend current code point (Ri), a shift (Xi), and next index (Wi+1) (shown
`on the left side of the equation). Id. at 1:50–63, 2:5–16, 7:5–10.
`
`3.
`
`Claims 25, 33, and 60–63
`Petitioner’s Arguments
`a.
`Petitioner argues that the combination of Howard and Printz teaches
`all of the limitations recited in claim 25, 33, and 60–64. See Pet. 34–60.
`Petitioner’s argument focuses on a combination and modification of
`Howard’s Tables 3 and 5, reproduced below. See id.
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`Pet. 39; see also id. at 52, 57. The Figure above shows a combination of
`Howard’s Tables 3 and 5. Table 3 has been modified by Petitioner to
`change the “Start State” to “Current Interval,” the “Next State” to “Partial
`Interval,” identifies a start state as the “Quantization Index -Wi,” and labels
`the index in Table 5 as a “Probability Index.” Id. at 39. The combination of
`modified Tables 3 and 5 forms the basis for Petitioner’s argument regarding
`several claim limitations, including “performing the interval separation by
`accessing an interval division table using the quantization index and the
`probability index to obtain a partial interval width value” recited in claim 25.
`See id. at 53–57.7
`
`
`7 According to Petitioner, the other claims all have substantially similar
`limitations. See Pet. 58–60.
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`Patent Owner’s Arguments
`b.
`Patent Owner argues “Howard’s Table 3 Quasi-Arithmetic Coder that
`forms the basis for Ground 1 [does not] teach or suggest the use of a
`probability index.” Prelim. Resp. 59. Specifically, Patent Owner argues that
`Howard’s Table 3 uses actual probabilities and not a probability index. Id.
`at 59–60. Patent Owner further argues that although Howard’s Table 5 has a
`probability index, it is “used in a different embodiment of a different coder
`in Howard, specifically [Howard’s] Table 5 that is used in Howard’s new
`compression approach, which Howard teaches should be used instead of the
`Table 3 Quasi-Arithmetic Coder.” Id. at 60 (emphases in original) (citing
`Pet. 45–49). According to Patent Owner, Petitioner
`does not acknowledge that it is using the probability index of a
`different coder to modify Howard’s Table 3 Quasi-Arithmetic
`Coder, nor does it assert or show—as it must—that it was
`obvious to modify the Table 3 Quasi-Arithmetic Coder to
`incorporate and use the Table 5 of Howard’s different new
`compression embodiment.
`Id. (citing In re Stepan Co., 868 F.3d 1342 (Fed. Cir, 2017)).
`Patent Owner further argues “it would not be obvious to modify
`Howard’s Table 3 Quasi-Arithmetic Coder to use the probability index [in]
`Howard’s different new compression embodiment.” Id. at 60–61.
`According to Patent Owner, “because Howard teaches using the new
`embodiment instead of Howard’s Table 3 Quasi-Arithmetic Coder,” a
`person of ordinary skill in the art would not have used Howard’s Table 5
`with Howard’s Table 3 Quasi-Arithmetic Code. Id. at 61 (emphasis in
`original) (citing Ex. 1004, 8, 11, 14–15).
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`Our Analysis
`c.
`It is Petitioner’s “burden to demonstrate both that a skilled artisan
`would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled artisan
`would have had a reasonable expectation of success in doing so.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
`(quotations omitted); see also KSR, 550 U.S. at 418. Petitioner cannot
`satisfy this burden by “employ[ing] mere conclusory statements” and “must
`instead articulate specific reasoning, based on evidence of record” to support
`an obviousness determination. Magnum Oil, 829 F.3d at 1380. Stated
`differently, there must be “articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” KSR, 550
`U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`The “factual inquiry” into the reasons for “combin[ing] references
`must be thorough and searching, and the need for specificity pervades . . . .”
`In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations
`omitted). The reason cannot focus on generic statements divorced from the
`prior art elements, such as the generic desire to “build something better” or
`to make it “more efficient, cheaper, or . . . more attractive to your
`customers.” ActiveVideo Networks, Inc. v. Verizon Cooms., Inc., 694 F.3d.
`1312, 1328 (Fed. Cir. 2012). A determination of obviousness cannot be
`reached where the record lacks “explanation as to how or why the references
`would be combined to produce the claimed invention.” TriVascular, Inc. v.
`Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016); see Nuvasive, 842 F.3d at
`1382–86 (holding that an obviousness determination cannot be reached
`where there is no “articulat[ion of] a reason why a [person having ordinary
`
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`IPR2019-00726
`Patent 6,943,710 B2
`
`skill in the art] would combine” and “modify” the prior art teachings). This
`required explanation as to why the references would be combined avoids an
`impermissible “hindsight reconstruction,” using “the patent in suit as a guide
`through the maze of prior art references, combining the right references in
`the right way so as to achieve the result of the claims in suit.” TriVascular,
`812 F.3d at 1066; see also In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir.
`2011).
`The Federal Circuit has held that the requirement to articulate specific
`reasoning for the combination similarly exists when combining multiple
`embodiments from a single reference:
`Whether a rejection is based on combining disclosures
`from multiple
`references,
`combining multiple
`embodiments from a single reference, or selecting from
`large lists of elements in a single reference, there must be
`a motivation to make the combination and a reasonable
`expectation that such a combination would be successful,
`otherwise a skilled artisan would not arrive at the claimed
`combination.
`Stepan, 868 F.3d at 1346 n.1 (emphases added).
`In the obviousness inquiry, we must also consider whether “a person
`of ordinary skill, upon reading the reference, would be discouraged from
`following the path set out in the reference, or would be led in a direction
`divergent from the path that was taken by the applicant.” In re Gurley, 27
`F.3d 551, 553 (Fed Cir. 1994). A reference “does not teach away. . . [if] it
`merely expresses a general preference for an alternative invention but does
`not ‘criticize, discredit, or otherwise discourage’ investigation into the
`invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
`1201 (Fed. Cir. 2004)). However, “even if a reference is not found to teach
`
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`IPR2019-00726
`Patent 6,943,710 B2
`
`away, its statements regarding preferences are relevant to a finding regarding
`whether a skilled artisan would be motivated to combine that reference with
`another reference.” Polaris Indus. v. Arctic Cat, Inc., 882 F.3d 1056, 1069
`(Fed. Cir. 2018) (citing Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034,
`1051 n.15 (Fed. Cir. 2016) (en banc)).
`As discussed above in Section II.D.1, Howard discusses different
`coders. Specifically, Howard discusses the authors’ prior coder from
`Howard II and a sample coding table (Howard’s Table 3) that implements
`that type of quasi-arithmetic coding. See Ex. 1004, 11–12. Howard goes on
`to discuss a new and improved coding system that is implemented using
`Howard’s Tables 5–8. See id. at 11–18.
`Based on the current record, we agree with Patent Owner that the
`Petition does not differentiate between the different embodiments disclosed
`in Howard nor does it provide any reason to combine the two. See Prelim.
`Resp. 60–61. That is, the Petition does not distinguish between the older
`coding method of Howard II (shown in Howard’s Table 3) and the new
`coding method that includes the probability index of Howard’s Table 5. See
`Pet. 24–28 (discussing Howard), 35 (“Thus, Howard teaches traversing
`through a code table that performs both the Interval Division and Code Point
`Update steps with a pointer to the next coding state and a probability index.”
`(citing Ex. 1003 ¶ 143)), 39 (modified Tables 3 and 5). Although Petitioner
`argues why a person of ordinary skill in the art would modify Howard in
`view of Printz, Petitioner does not address the two different Howard
`embodiments or sufficiently explain why a person of ordinary skill in the art
`would have combined them. See Pet. 34–41 (discussing reason to combine
`Howard and Printz); see also id. at 53–57 (same). Nor does Petitioner
`
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`IPR2019-00726
`Patent 6,943,710 B2
`
`explain why a person of ordinary skill in the art would have focused on the
`older coding system of Howard’s Table 3 as opposed to the improved coding
`system of Howard’s Tables 5–8.8
`For the reasons explained above, the arguments and evidence
`presented in the Petition fail to provide sufficient reasoning and evidence to
`demonstrate why a person of ordinary skill in the art would have combined
`Howard’s Tables 3 and 5. Accordingly, the Petition fails to provide
`sufficient reasoning and evidence to support Petitioner’s contention that the
`combination of Howard and Printz teaches “performing the interval
`separation by accessing an interval division table using the quantization
`index and the probability index to obtain a partial interval width value,” as
`recited in claim 25. Because Petitioner relies on the same evidence to
`demonstrate that the combination of Howard and Printz teaches substantially
`the same limitations in claims 33 and 60–63 (see Pet. 58–60), the Petition
`has not demonstrated a reasonable likelihood of success in challenging
`claims 25, 33, and 60–63 on this ground of unpatentability.
`
`E. Obviousness over Kimura and Printz
`Petitioner argues the subject matter of claims 25, 33, and 60–63 would
`have been obvious to a person of ordinary skill in the art at the time of the
`invention in light of the teachings of Kimura and Printz. Based on the
`current record, we are not persuaded that Petitioner has established a
`
`
`8 Although Howard may not teach away from using Howard’s Table 3, “its
`statements regarding preferences are relevant to a finding regarding whether
`a skilled artisan would be motivated to combine that reference with another
`reference.” Polaris, 882 F.3d at 1069 (citing Apple, 839 F.3d at 1051 n.15).
`
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`IPR2019-00726
`Patent 6,943,710 B2
`
`reasonable likelihood of prevailing on its asserted obviousness ground with
`respect to claims 25, 33, and 60–63.
`
`Summary of Kimura
`1.
`Kimura i
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