throbber

`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`VEDANTI LICENSING LIMITED,
`Patent Owner.
`
`__________________
`
`Case No. IPR2016-00212
`
`Patent No. 7,974,339 B2
`__________________
`
`
`
`Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
`JOHN A. HUDALLA, Administrative Patent Judges
`
`
`
`
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`
`
`

`

`IPR2016-00212
`Patent No. 7,974,339
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`
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`NOTICE OF APPEAL TO THE FEDERAL CIRCUIT
`
`Notice is hereby given that under 35 U.S.C. §§ 141(c), 142 and 37 C.F.R. §
`
`90.2(a)(1), Patent Owner Vedanti Licensing Limited 1 hereby appeals to the United
`
`States Court of Appeals for the Federal Circuit regarding the Patent Trial and
`
`Appeal Board’s Final Written Decision (Paper No. 42, attached) issued in
`
`IPR2016-00212 on May 17, 2017.
`
`Pursuant to 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner submits that the appeal
`
`will address the decision holding claims 1, 6, 7, 9, 10, 12, and 13 of U.S. Patent
`
`No. 7,974,339 unpatentable, including without limitation, such issues as claim
`
`construction, due process, obviousness and substantial evidence.
`
`A copy of this Notice of Appeal is being filed with the Patent Trial and
`
`Appeal Board. This Notice of Appeal, along with a docketing fee of $500.00, are
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`being served electronically on the Clerk for the United States Court of Appeals for
`
`the Federal Circuit by CM/ECF.
`
`
`
`
`1 On Oct. 11, 2016 Patent Owner filed updated mandatory notices (Paper No. 18)
`with the PTAB indicating that Vedanti Systems Limited assigned the challenged
`patent to Vedanti Licensing Limited. The PTAB modified the case caption
`accordingly, although the PTAB’s Final Written Decision (Paper No. 42) does not
`reflect that.
`
`
`
`2
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`

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`IPR2016-00212
`Patent No. 7,974,339
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`Date: June 14, 2017
`
`
`
`
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`Boston, MA 02110
`Tel: 617-443-9292
`Fax: 617-443-0004
`RAsher@sunsteinlaw.com
`
`
`
`
`Respectfully submitted,
`
`/Robert M. Asher, #30,445/
`
`Robert M. Asher
`Reg. No. 30,445
`Attorney for Patent Owner
`
`
`
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`3
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`IPR2016-00212
`Patent No. 7,974,339
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`CERTIFICATES OF FILING AND SERVICE
`
` I hereby certify that, in addition to being filed electronically through the
`
`Patent Trial and Appeal Board’s PTAB E2E System, the original version of the
`
`foregoing PATENT OWNER’S NOTICE OF APPEAL was filed, as required by
`
`37 C.F.R. § 104.2, by Express Mail on this 14th day of June, 2017 with the Director
`
`of the United States Patent and Trademark Office at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, VA 22313-1450
`
` The undersigned also hereby certifies that a true and correct copy of the
`
`
`
`foregoing PATENT OWNER’S NOTICE OF APPEAL and the filing fee is being
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`filed via the electronic filing system, CM/ECF, with the Clerk’s Office of the
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`United States Court of Appeals for the Federal Circuit on June 14, 2017 and one
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`(1) true and correct paper copy of the foregoing are being filed by Express Mail, as
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`required by Fed. Cir. R. 15(a)(1), on this 14th day of June, 2017 with the Clerk’s
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`Office of the United States Court of Appeals for the Federal Circuit at the
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`following address:
`
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20439
`
`4
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`

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`IPR2016-00212
`Patent No. 7,974,339
` The undersigned also hereby certifies that on June 14, 2017, copies of the
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`foregoing PATENT OWNER’S NOTICE OF APPEAL have been served on
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`Petitioners as provided in 37 C.F.R. § 42.6(e) via electronic mail transmission
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`addressed to the attorneys of record for the Petitioner at the following address:
`
`Michael V. Messinger
`Michelle K. Holoubek
`Brian W. Lee
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, DC 20005-3934
`mikem-PTAB@skgf.com
`mholoubek-PTAB@skgf.com
`blee-PTAB@skgf.com
`PTAB@skgf.com
`
`
`/Robert M. Asher, #30,445/
`
`Robert M. Asher
`Reg. No. 30,445
`Attorney for Patent Owner
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`Boston, MA 02110
`Tel: 617-443-9292
`Fax: 617-443-0004
`RAsher@sunsteinlaw.com
`
`
`
`Date: June 14, 2017
`
`
`
`
`04028/05001 2739296.1
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`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 42
`
`
` Filed: May 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`VEDANTI SYSTEMS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-002121
`Patent 7,974,339 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`In Case IPR2016-00212 (“212 IPR”), Petitioner, Google Inc.
`(“Google”), filed a Petition (Paper 22, “212 Petition” or “212 Pet.”)
`
`
`1 Case IPR2016-00215 has been consolidated with this proceeding.
`2 Unless otherwise indicated, citations to papers and exhibits are made to
`Case IPR2016-00212.
`
`
`
`

`

`IPR2016-00212
`Patent 7,974,339 B2
`
`
`requesting an inter partes review of claims 1, 6, 7, 9, 10, 12, and 13 of U.S.
`Patent No. 7,974,339 B2 (Ex. 1001, “the ’339 patent”) pursuant to 35 U.S.C.
`§§ 311–319. Patent Owner, Vedanti Systems Limited (“Vedanti”), filed a
`Preliminary Response to the 212 Petition. Paper 6 (“212 Preliminary
`Response” or “212 Prelim. Resp.”). Taking into account the arguments
`presented in Google’s 212 Preliminary Response, we determined that the
`information presented in the 212 Petition established that there was a
`reasonable likelihood that Google would prevail in challenging claims 1, 6,
`7, 9, 10, 12, and 13 of the ’339 patent under 35 U.S.C. § 103(a). Pursuant to
`35 U.S.C. § 314, we instituted this proceeding on May 20, 2016, as to these
`claims of the ’339 patent. Paper 8 (“212 Institution Decision” or “212 Dec.
`on Inst.”).
`In related Case IPR2016-00215 (“215 IPR”), Google filed a second
`Petition (215 IPR, Paper 2, “215 Petition” or “215 Pet.”) requesting an inter
`partes review of the same claims of the ’339 patent. Vedanti filed a
`Preliminary Response to the 215 Petition. 215 IPR, Paper 6 (“215
`Preliminary Response” or “215 Prelim. Resp.”). Taking into account the
`arguments presented in Vedanti’s 215 Preliminary Response, we also
`determined that the information presented in the 215 Petition established that
`there was a reasonable likelihood that Google would prevail in challenging
`claims 1, 6, 7, 9, 10, 12, and 13 of the ’339 patent under 35 U.S.C. § 103(a).
`Pursuant to 35 U.S.C. § 314, we instituted this proceeding on May 20, 2016,
`as to these claims of the ’339 patent. Paper 73 (“215 Institution Decision” or
`“215 Dec. on Inst.”). In the 215 Institution Decision, we ordered the
`
`
`3 The 215 Institution Decision is included in the 212 IPR as Paper 7 because
`it includes a consolidation order.
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`2
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`IPR2016-00212
`Patent 7,974,339 B2
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`consolidation of the 215 IPR with the 212 IPR for purposes of trial. Id. at
`27–28.
`During the course of trial, Vedanti filed a Patent Owner Response
`(Paper 15, “PO Resp.”), and Google filed a Reply to the Patent Owner
`Response (Paper 22, “Pet. Reply”). Vedanti also filed a Sur-Reply
`(Paper 27, “PO Sur-Reply”), as was authorized by our Order of December 7,
`2016 (Paper 26). Along with its Patent Owner Response, Vedanti filed a
`Contingent Motion to Amend (Paper 16, “Mot. to Amend”), proposing to
`substitute claim 14 and 15 for claims 7 and 9, respectively, if we determine
`claim 7 to be unpatentable; and to substitute claims 16 and 17 for claims 10
`and 12, respectively, if we determine claim 10 to be unpatentable. Google
`filed an Opposition to the Motion to Amend (Paper 24, “Pet. Opp.”), and
`Vedanti filed a Reply (Paper 30, “PO Reply”).
`An oral hearing was held on February 14, 2017, and a transcript of the
`hearing is included in the record. Paper 41 (“Tr.”).
`Google proffered Declarations of John R. Grindon, D.Sc. (Exs. 1003,
`1029) with its Petitions and a Supplemental Declaration of Dr. Grindon
`(Ex. 1030) with its Reply. Vedanti proffered a Declaration of Omid Kia,
`Ph.D. (Ex. 2001) with its Response. The parties also filed transcripts of the
`depositions of Dr. Grindon (Exs. 2003, 2025) and Dr. Kia (Ex. 1034).
`Vedanti filed a Motion for Observations regarding Dr. Grindon’s cross-
`examination (Paper 31, “Obs.”), and Google filed a Response (Paper 37,
`“Obs. Resp.”).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1, 6, 7, 9, 10, 12, and 13 of the ’339 patent. For the reasons discussed
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`Patent 7,974,339 B2
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`below, Google has demonstrated by a preponderance of the evidence that
`these claims are unpatentable under § 103(a). We also deny Vedanti’s
`Contingent Motion to Amend.
`
`
`I. BACKGROUND
`
`Related Proceedings
`A.
`Both parties identify the following proceeding related to the
`
`’339 patent (212 Pet. 3, 59; 215 Pet. 3, 59; Paper 5, 2): Max Sound Corp. v.
`Google, Inc., No. 5:14-cv-04412 (N.D. Cal. filed Oct. 1, 2014).4 Google
`was served with this complaint on November 20, 2014. See 212 Pet. 3
`(citing Ex. 1021).
`
`Google also identifies a second action that was dismissed without
`prejudice voluntarily: Vedanti Sys. Ltd. v. Google, Inc., No. 1:14-cv-01029
`(D. Del. filed Aug. 9, 2014). See 212 Pet. 3 n.1 (citing Exs. 1009, 1010), 59
`(citing Ex. 1010); 215 Pet. 3 n.1, 59. We agree with Google (see 212 Pet.
`
`
`4 In Max Sound, plaintiff Max Sound Corporation (“Max Sound”) sued
`Google and others for infringement of the ’339 patent. Ex. 1011, 1–2.
`Although Max Sound listed Vedanti as a co-plaintiff at the outset of the
`case, Max Sound later alleged Vedanti was a defendant. See id. at 1; Order,
`Max Sound Corp. v. Google, Inc., No. 3:14-cv-04412 (N.D. Cal. Nov. 24,
`2015), ECF No. 139, 3–4. The court dismissed the action for lack of subject
`matter jurisdiction after determining Max Sound did “not demonstrate[e]
`that it had standing to enforce the ’339 patent at the time it initiated th[e]
`action, with or without Vedanti as a party.” See id. at 9. Subsequently, the
`U.S. Court of Appeals for the Federal Circuit affirmed the district court’s
`dismissal. Max Sound Corp. v. Google, Inc., No. 2016-1620, 2017 WL
`192717, at *1 (Fed. Cir. Jan. 18, 2017). In its mandatory notices pursuant to
`37 C.F.R. § 42.8, Vedanti states that it owns the ’339 patent and that the
`Max Sound case was “filed without authorization” by Max Sound. Paper 5,
`2.
`
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`IPR2016-00212
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`3 n.1; 215 Pet. 3 n.1) that, as a result of the voluntary dismissal without
`prejudice, this Delaware action is not relevant to the bar date for inter partes
`review under 35 U.S.C. § 315(b). See Oracle Corp. v. Click-to-Call Techs.,
`LP, Case IPR2013-00312, slip op. at 15–18 (PTAB Oct. 30, 2013)
`(Paper 26) (precedential in part) (holding that a dismissal without prejudice
`nullifies the effect of service of the complaint and leaves the parties as
`though the action had never been brought).
`
`The ’339 patent
`B.
`The ’339 patent is directed to “us[ing] data optimization instead of
`
`compression, so as to provide a mixed lossless and lossy data transmission
`technique.” Ex. 1001, 1:36–39. Although the embodiments in the
`’339 patent are described primarily with reference to transmitting frames of
`video data, the Specification states that the described optimization technique
`is applicable to any type of data. See Ex. 1001, 1:50–52, 4:44–46, 4:60–62,
`7:42–45, 9:54–56. Figure 1 of the ’339 patent is reproduced below.
`
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`Figure 1 depicts system 100 for transmitting data having data transmission
`system 102 coupled to data receiving system 104. Id. at 2:47–49.
`Data transmission system 102 includes frame analysis system 106 and
`pixel selection system 108. Id. at 2:65–67. The frame analysis system
`receives data grouped in frames, and then generates region data that divides
`frame data into regions. Id. at 1:42–46. Regions can be uniform or non-
`uniform across the frame, and regions can be sized as symmetrical matrices,
`non-symmetrical matrices, circles, ellipses, and amorphous shapes. Id. at
`5:54–6:3. Figure 10 of the ’339 patent is reproduced below.
`
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`Figure 10 depicts segmentation of an array of pixel data where the regions
`are non-uniform matrices. Id. at 10:38–41. The pixel selection system
`receives region data and generates one set of pixel data for each region, such
`as by selecting a single pixel in each region. Id. at 1:46–49. In Figure 10
`above, the “X” in each matrix represents a selected pixel. Id. at 10:24–29,
`10:47–52. Transmission system 102 then transmits matrix data and pixel
`data, thereby “reduc[ing] data transmission requirements by eliminating data
`that is not required for the application of the data on the receiving end.”
`Id. at 3:13–15, 7:63.
`Data receiving system 104 further includes pixel data system 110 and
`display generation system 112. Id. at 3:35–36. Pixel data system 110
`receives region data and pixel data and assembles frame data based on the
`region data and pixel data. Id. at 4:32–34. In turn, display generation
`system 112 receives frame data from pixel data system 110 and generates
`video data, audio data, graphical data, textual data, or other suitable data for
`use by a user. Id. at 4:44–46.
`Google notes (see 212 Pet. 4, 8; 215 Pet. 4, 8) that the ’339 patent
`claims priority to an earlier application filed on January 16, 2002. Ex. 1001,
`at [63]. As discussed below, Google establishes that its asserted references
`
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`Patent 7,974,339 B2
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`qualify as prior art even when assuming that January 16, 2002, is the
`effective filing date for the challenged claims of the ’339 patent.
`
`
`C.
`
`Illustrative Claim
`Claims 1, 7, and 10 are independent. Claims 6 and 13 depend from
`claim 1; claim 9 depends from claim 7; and claim 12 depends from claim 10.
`Claim 1 of the ’339 patent is illustrative of the challenged claims and recites:
`1.
`A system for transmitting data transmission comprising:
`a analysis system receiving frame data and generating
`region data comprised of high detail and or low detail;
`a pixel selection system receiving the region data and
`generating one set of pixel data for each region forming a new
`set of data for transmission;
`a data receiving system receiving the region data and the
`pixel data for each region and generating a display;
`wherein the data receiving system comprises a pixel data
`system receiving matrix definition data and pixel data and
`generating pixel location data;
`wherein the data receiving system comprises a display
`generation system receiving pixel location data and generating
`display data that includes the pixel data placed according to the
`location data.
`Ex. 1001, 10:62–11:9.
`
`D.
`
`The Prior Art
`Google relies on the following prior art:
`Spriggs et al., U.S. Patent No. 4,791,486, Patent
`Cooperation Treaty (“PCT”) filed Feb. 3, 1986, issued Dec. 13,
`1988 (Ex. 1005, “Spriggs”);
`Golin et al., U.S. Patent No. 5,225,904, filed Dec. 4, 1991,
`issued July 6, 1993 (Ex. 1006, “Golin”);
`
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`Thyagarajan et al., U.S. Patent No. 6,529,634 B1, filed
`Nov. 8, 1999, issued Mar. 4, 2003 (Ex. 1008, “Thyagarajan”);
`and
`
`Ricardo A.F. Belfor et al., Spatially Adaptive Subsampling
`of Image Sequences, 3 IEEE TRANSACTIONS ON IMAGE
`PROCESSING 1–14 (Sept. 1994) (Ex. 1007, “Belfor”).
`
`
`E.
`
`Instituted Grounds
`We instituted trial based on the following grounds (212 Dec. on
`Inst. 23; 215 Dec. on Inst. 27):
`References
`Basis
`
`Citation
`
`Claims
`Challenged
`35 U.S.C. § 103(a) 1, 6, 7, 9, 10, 12,
`and 13
`35 U.S.C. § 103(a) 1, 6, 7, 9, 10, 12,
`and 13
`
`212 Pet. 3, 24–58.
`
`215 Pet. 3, 19–58.
`
`Spriggs and
`Golin
`Belfor,
`Thyagarajan,
`and Golin
`
`Claim Interpretation
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard as the
`claim construction standard to be applied in an inter partes review
`proceeding). Under the broadest reasonable interpretation standard, and
`absent any special definitions, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech. Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim
`
`F.
`
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`IPR2016-00212
`Patent 7,974,339 B2
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`terms or phrases must be set forth “with reasonable clarity, deliberateness,
`and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Claim Terms Construed in the Decisions on Institution
`1.
`In the Decisions on Institution, we interpreted various claim terms of
`the ’339 patent as follows (212 Dec. on Inst. 7–11; 215 Dec. on Inst. 7–12):
`Claim Term
`Interpretation
`
`region
`
`matrix
`
`division of a frame
`
`a region with square or rectangular dimensions
`
`data that defines at least one region
`
`data that defines at least one matrix
`
`data that defines at least one matrix
`
`region data (claims 1,
`10, 12, 13)
`matrix data (claims 7,
`9, 12)
`matrix definition data
`(claim 1)
`data pertaining to one or more pixels from a region
`pixel selection data/
`selected for transmission
`selection pixel data
`The parties do not dispute these interpretations in Vedanti’s Patent Owner
`Response, Google’s Reply, and Vedanti’s Sur-Reply. See PO Resp. 17, 22–
`23; Pet. Reply 4–5, 9–10. We do not perceive any reason or evidence that
`compels any deviation from these interpretations. Accordingly, we adopt
`our previous analysis for purposes of this Final Written Decision, and we
`maintain that the interpretations set forth in the table above constitute the
`broadest reasonable interpretations in light of the claims and Specification of
`the ’339 patent.
`
`
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`10
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`2.
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`IPR2016-00212
`Patent 7,974,339 B2
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`“analysis system”/“a analysis system receiving frame data and
`generating region data”
`In the 215 Institution Decision, we “decline[d] to construe the
`‘analysis system’ of claim 1 as requiring any particular type of analysis
`beyond ‘receiving frame data and generating region data,’ as is recited in
`claim 1 itself.” 215 Dec. on Inst. 12–13. Vedanti contends that we have
`ignored the term “analysis,” which renders it meaningless in the claim. PO
`Resp. 18–19. As such, Vedanti contends “the claim construction should be
`revised to require some consideration of the frame data by the system in
`order to generate region data.” Id. at 19 (citing Ex. 1001, 3:53–56). Vedanti
`also cites the figures and text of the ’339 patent as indicating that “the
`‘analysis system’ and the ‘pixel selection system’ are separately identifiable
`components of the invention.” Id. at 19–21 (citing Ex. 1001, Figs. 1–3).
`Vedanti explains that “nothing in the claims suggest[s] that the analysis
`system and the pixel selection system can be the same process.”
`Id.
`
`Google replies that “[t]he specification is clear that its separate
`depiction of an ‘analysis system’ and ‘pixel selection system’ is exemplary.”
`Pet. Reply 8 (citing Ex. 1001, 2:3–5, 2:41–43, 2:65–66). Google also argues
`that the ’339 patent “leaves open the possibility that the claims can cover a
`single system that functions and qualifies as both the claimed ‘analysis
`system’ and the ‘pixel selection system.’” Id. at 8–9.
`We agree with Google. In fact, Vedanti’s counsel conceded at the
`Oral Hearing that one element (e.g., a processor executing two portions of
`code) serves as both the “analysis system” and the “pixel selection system”
`as long as it “receiv[es] frame data and generat[es] region data” and
`“receiv[es] the region data and generat[es] one set of pixel data.” See
`11
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`Tr. 31:4–32:15 (“[The ’339 patent] is talking about software and both of
`these can be implemented on software. Yes, they can both be on the same
`processor. But they are separately identifiable processes that go on within
`this processor.”); see also PO Resp. 37 (“It is acknowledged that both
`systems are found in the same processor of Spriggs.”). This is supported by
`the Specification of the ’339 patent, which states that the “analysis system”
`and “pixel selection system” “can be implemented in hardware, software, or
`a suitable combination of hardware and software, and . . . can be one or
`more software systems operating on a general purpose processing platform.”
`Ex. 1001, 2:65–3:3 (emphases added). Furthermore, the Specification states
`that software system implementations could include something as granular
`as “one or more lines of code.” Id. at 3:3–3:12. Under these circumstances,
`we are not persuaded that the “analysis system” of claim 1 need be a
`separately identifiable component in the manner suggested by Vedanti.
`In addition, we maintain our determination that interpreting the type
`of analysis performed by the “analysis system” is unnecessary, because
`claim 1 already recites what is required: “receiving frame data and
`generating region data.”
`
`Additional Claim Terms
`3.
`In its Patent Owner Response, Vedanti proffers interpretations of
`“frame data,” “data,” “matrix size data,” “selecting one of two or more sets
`of pixel data,” and “selecting a set of pixel data from each region.” PO
`Resp. 16–18, 23–25. Vedanti, however, does not contest Google’s
`assertions of unpatentability based on any of its proposed interpretations.
`Nor does Google contend that these terms require interpretation. Pet. Reply
`
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`5–8, 10–13. In our Decisions on Institution, we did not construe these terms.
`Based on our review of the complete record, and because interpretation of
`these claims is not necessary to resolve any issue in this Final Written
`Decision, we determine that no explicit constructions of these terms are
`necessary. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (explaining that only those claim terms or phrases that
`are in controversy need to be construed, and only to the extent necessary to
`resolve the controversy).
`
`
`A.
`
`II. ANALYSIS
`Obviousness Ground Based on Spriggs and Golin (212 IPR)
`Google contends claims 1, 6, 7, 9, 10, 12, and 13 would have been
`obvious over the combination of Spriggs and Golin. 212 Pet. 3, 20–58; Pet.
`Reply 13–22. Vedanti disputes Google’s contention. PO Resp. 26–54; PO
`Sur-Reply 1–5.
`
`Principles of Law
`1.
`A claim is unpatentable under 35 U.S.C. § 103(a)5 if the differences
`between the claimed subject matter 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
`
`
`5 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`challenged claims of the ’339 patent have an effective filing date before the
`effective date of the applicable AIA amendments, throughout this Final
`Written Decision we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`
`
`
`13
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`IPR2016-00212
`Patent 7,974,339 B2
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`
`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 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 skill in the art; and (4) where in evidence, so-called secondary
`considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`also recognize that prior art references must be “considered together with the
`knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at
`1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). We analyze
`Google’s obviousness grounds with the principles identified above in mind.
`
`Level of Skill in the Art
`2.
`In determining the level of skill in the art, various factors may be
`considered, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
`(Fed. Cir. 1986)). In addition, the prior art of record in this proceeding—
`namely, Spriggs, Golin, Belfor, and Thyagarajan—is indicative of the level
`of skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`Google contends an ordinarily skilled artisan “would have at least a
`[Bachelor of Science] degree in Electrical Engineering, Computer
`Engineering, Computer Science, or an equivalent field, as well as at least
`one year of academic or industry experience in image processing or data
`
`
`
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`transmission.” 212 Pet. 11–12; 215 Pet. 10–11. Dr. Grindon’s testimony
`puts forth a similar standard. Ex. 1003 ¶¶ 23–26; Ex. 1029 ¶¶ 23–26.
`Citing, inter alia, Dr. Kia’s testimony, Vedanti contends an ordinarily
`skilled artisan “would have at least a technical degree in Electrical
`Engineering, Computer Science or equivalent curriculum with coursework in
`image processing and at least one year of hands on experience with
`compression and communication techniques.” PO Resp. 12 (citing Ex. 2001
`¶¶ 15–16). Alternatively, Vedanti contends such an artisan “may have
`earned a degree in Electrical Engineering, Computer Science or equivalent
`curriculum with coursework in compression and communication and at least
`one year of hands on experience in imaging.” Id.
`As noted by Google, one main difference between the parties’
`proposed definitions is that Vedanti would require an ordinarily skilled
`artisan “to have either coursework in compression or one year of hands-on
`experience with compression.” Pet. Reply 2. The ’339 patent, however,
`expressly states that the invention relates to “data transmission . . . us[ing]
`data optimization instead of compression.” Ex. 1001, 1:32–39, 1:53–63,
`2:41–46. Accordingly, we agree with Google that a specific requirement for
`coursework or experience in data compression need not be included in the
`definition of the level of skill in the art.6
`Given the other similarities in the parties’ proposed definitions, and in
`light of the types of problems addressed in the ’339 patent and in the prior
`art of record, we determine an ordinarily skilled artisan at the time of the
`
`6 Consequently, we disagree with Vedanti’s assertion that Dr. Grindon is not
`qualified to opine as to the abilities and understandings of a person of
`ordinary skill in the art because of his alleged “limited” experience in the
`field of video compression. See PO Resp. 13–15.
`15
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`IPR2016-00212
`Patent 7,974,339 B2
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`’339 patent would have possessed a bachelor’s degree in electrical
`engineering, computer engineering, computer science, or a similar
`discipline, and at least one year of academic or industry experience in image
`processing or data transmission. We, therefore, apply this level of skill in
`the art to our obviousness evaluation below.
`
`Spriggs
`3.
`Spriggs is directed to “image coding and transmission” using “a non-
`uniform sample structure in which non-transmitted p[ix]els are interpolated.”
`Ex. 1005, 1:7–8, 2:3–5. The number of points selected for transmission is
`greatest in detailed areas of the image. Id. at Abstract.
`Starting with an existing block of pixels, such as a full frame, Spriggs
`discloses calculating a new block in which all pixels “are represented by
`values linearly interpolated from the corner values” of the block. Id. at
`2:28–32, 2:43–45. Pixels in the existing block then are compared with the
`interpolated values to determine if there are any differences in excess of a
`threshold. Id. at 2:32–35. If the differences exceed the threshold, the
`existing block is divided into two subblocks, and the interpolation and
`comparison process is repeated on the subblocks. Id. at 2:48–54. This
`process continues until subdivision is no longer necessary (because the
`difference is less than the threshold) or possible. Id. at 2:58–60. Figure 3 of
`Spriggs is reproduced below.
`
`
`
`16
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`IPR2016-00212
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`Figure 3 depicts a block that has undergone this subdivision process “where
`the greatest number of subdivisions wil[l] occur at edges or over fine detail.”
`Id. at 2:55–57. Blocks that have finished this subdivision process can be
`reconstructed in the receiver as “a good approximation to the original” based
`on the interpolated values. Id. at 2:37–43.
`Figure 6 of Spriggs is reproduced below.
`
`
`Figure 6 depicts “an image area together with the resulting coded output.”
`Id. at 3:63–64. The ones and zeros on the left side of the coded output are
`“division codes”; “0” corresponds to a block that can be interpolated from its
`corner values, whereas “1” corresponds to a block that must be subdivided.
`17
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`IPR2016-00212
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`Id. at 3:2–5, 3:64. The codes such as “SA, SB etc.” in the middle “indicate
`sample values corresponding to points A, B etc.” Id. at 3:63–65. When
`subdivision of a block is completed, the addresses and values of the corner
`points are transmitted. Id. at 2:32–38. The letters in brackets on the right,
`which do not need to be transmitted, indicate the corresponding area to
`which the information on the left corresponds. Id. at 3:65–68.
`We agree with Google (212 Pet. 4) that Spriggs qualifies as prior art
`under at least 35 U.S.C. § 102(b) because Spriggs’s issue date of
`December 13, 1988, is more than one year before the earliest possible
`effective filing date for the challenged claims of the ’339 patent, which is
`January 16, 2002. See Ex. 1001, at [63]; Ex. 1005, at [45].
`
`Golin
`4.
`Golin is directed to “video signal processing generally and
`particularly to systems for reducing the amount of digital data required to
`represent a digital video signal to facilitate uses, for example, such as the
`transmission, recording and reproduction of the digital video signal.”
`Ex. 1006, 1:10–15. A coder splits a video frame “into a number of small
`groups of similar pixels” called “regions.” Id. at 11:44–46. “For each
`region a code is produced for representing the values of all pixels of the
`region.” Id. at 11:46–47. Figure 26 of Golin is reproduced below.
`
`
`
`18
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`IPR2016-00212
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`Figure 26 depicts a “quad-tree decomposition” wherein regions are split in
`both horizontal and vertical directions. Id. at 13:40–49. Golin also
`describes a “roughness” estimator for detecting region edges in the pixel
`data based on large changes in adjacent pixels, i.e., when the values of
`adjacent pixels differ by more than a threshold value. Id. at 19:34–44,
`Fig. 18. If edges are present in a region, the region is split horizontally or
`vertically. Id. at 20:47–63. Golin also states that “multipoint interpolation
`techniques” can be used as an alternative way of determining roughness.
`Id. at 20:64–66.
`Golin additionally describes a regionalization process known as
`binary tree decomposition with reference to Figure 27, reproduced below.

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