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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`APPLE INC., and
`LG ELECTRONICS, INC.
`Petitioner(s),
`
`v.
`
`FASTVDO LLC
`Patent Owner.
`
`_____________
`
`Case IPR2016-012031
`Patent No. 5,850,482
`____________________________________________________________
`
`PETITIONER APPLE INC.’S REPLY TO PATENT OWNER’S RESPONSE
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`
`
`_________________________
`1LG Electronics, Inc. filed a petition in (now terminated) IPR2017-00683 and has
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`been joined to the instant proceeding.
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`TABLE OF CONTENTS
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`Page
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`I.
`
`INTRODUCTION .......................................................................................... 1
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`II.
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`REPLY TO PATENT OWNER’S ARGUMENTS ........................................ 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Patent Owner’s Procedural Argument Regarding the
`Means-Plus-Function Constructions Remains Meritless ..................... 1
`
`Patent Owner’s Argument Regarding the Construction of
`“Storage Medium” Is Irrelevant ........................................................... 4
`
`Claims 1-3, 7-9, 13, 14, 23, and 24 Are Obvious in View of
`Kato ...................................................................................................... 5
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`Claims 1-3, 7-9, 13, 14, 23, and 24 Are Obvious in View of
`Fiala and Fazel ...................................................................................... 7
`
`The Storage Claims (Claims 5, 10, 16, 25, 28, and 29) Are
`Obvious................................................................................................. 9
`
`1.
`
`The ’482 Patent Admits That It Was Known to Use
`Unequal Error Protection for Storage of Data ........................... 9
`
`2.
`
`The Storage Claims Are Obvious in View of Kato ................. 10
`
`a)
`
`b)
`
`Kato Expressly Discloses Storage of
`Error-Protected Data ...................................................... 10
`
`Regardless, It Would Have Been Obvious to Store
`the Error-Protected Data in Kato ................................... 13
`
`3.
`
`The Storage Claims Are Obvious in View of Fiala and
`Fazel ......................................................................................... 17
`
`The Transmission Claims (Claims 6, 11, 17, and 26) Are
`Obvious............................................................................................... 19
`
`The Transformation/Quantization Claims (Claims 12 and 22)
`Are Obvious ....................................................................................... 20
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`TABLE OF CONTENTS
`(continued)
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`Page
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`1.
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`2.
`
`3.
`
`The ’482 Patent Admits That It Was Known to
`Transform and Quantize Data Before Encoding It .................. 20
`
`It Would Have Been Obvious to Apply Kato’s
`Disclosures on Split-Field Coding to Quantized
`Transform Coefficients ............................................................ 21
`
`It Would Have Been Obvious to Apply Fiala’s
`Disclosures on Split-Field Coding to Quantized
`Transform Coefficients ............................................................ 24
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`H.
`
`The Inter Partes Review Process Is Constitutional ........................... 24
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`III. CONCLUSION ............................................................................................. 25
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`IPR2016-01203
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`Cases
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`TABLE OF AUTHORITIES
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`
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` Page(s)
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`Finjan, Inc. v. Fireeye, Inc.,
`IPR2014-00344, 2015 Pat. App. LEXIS 12868
`(P.T.A.B. July 10, 2015) ............................................................................... 16, 24
`
`Ex parte Jiang,
`Appeal 2015-000860, 2017 Pat. App. LEXIS 3158
`(P.T.A.B. Apr. 3, 2017) ...................................................................................... 17
`
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) .......................................................................... 24
`
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .................................................................... 15, 24
`
`Ex parte Mouttet,
`Appeal 2009-010041, 2011 Pat. App. LEXIS 15036
`(B.P.A.I. Mar. 29, 2011) ......................................................................... 16, 17, 24
`
`Novartis AG v. Torrent Pharm. Ltd.,
`853 F.3d 1316 (Fed. Cir. 2017) .......................................................................... 16
`
`Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,
`S. Ct. Appeal No. 16-712 (cert. granted June 12, 2017) .................................... 25
`
`Velander v. Garner,
`348 F.3d 1359 (Fed. Cir. 2003) .......................................................................... 15
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`Other Authorities
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`37 C.F.R. § 42.6(e)(4) .............................................................................................. 27
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`37 C.F.R. § 42.23 ....................................................................................................... 1
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`37 C.F.R. § 42.24 ..................................................................................................... 26
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`Petitioner’s Exhibit List for Inter Partes Review of U.S. Patent No. 5,850,482
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`Exhibit Description
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`U.S. Patent No. 5,850,482 to Meany et al. [referenced as “the
`’482 patent” or, simply, “’482”]
`
`Declaration of Dr. Andrew Lippman [referenced as “Lippman Decl.”]
`(includes Dr. Lippman’s CV as Exhibit A thereto)
`
`U.S. Patent No. 5,392,037 to Kato [referenced as “Kato”]
`
`E. Fiala et al., Data Compression with Finite Windows, Communications
`of the ACM, Vol. 32, No. 4, pp. 490-505 (1989) [referenced as “Fiala”]
`
`K. Fazel et al., Application of Unequal Error Protection Codes on
`Combined Source-Channel Coding of Images, International Conference
`on Communications, Including SuperComm Technical Sessions (IEEE),
`Atlanta, April 15-19, 1990, Vol. 3, pp. 898-903 [referenced as “Fazel”]
`
`Ex. #
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`U.S. Patent No. 5,218,622 to Fazel et. al. [referenced as “Fazel ’622”]
`
`1006
`
`Wallace, “The JPEG Still Picture Compression Standard,” IEEE
`Transactions on Consumer Electronics, Vol. 38, No. 1, Feb. 1992
`[referenced as “Wallace”]
`
`Lin, “Codes with Multi-Level Error-Correcting Capabilities,” Discrete
`Mathematics 83 (1990), pp. 301-14 [referenced as “Lin”]
`
`Printout from Wiley & Sons website showing that R.G. Gallager,
`Information Theory and Reliable Communication (1968) is a 608-page
`book (http://www.wiley.com/WileyCDA/WileyTitle/productCd-
`0471290483.html)
`
`January 26, 1998 Amendment in prosecution history of ’482 patent
`
`June 1, 2016 FastVDO First Amended Preliminary Claim Constructions
`in pending litigation on ’482 patent
`
`June 9, 2016 email exchange with FastVDO re claim construction
`
`Declaration of Ryan J. Malloy in Support of Motion for Admission Pro
`Hac Vice
`
`1007
`
`1008
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`1009
`
`1010
`
`1011
`
`1012
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`1013
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`Petitioner’s Exhibits 1001–1013 were previously filed and are listed again here
`based on 37 C.F.R. § 42.63.
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`Transcript of Deposition of Dr. Kenneth Zeger [referenced as
`“Zeger Tr.”]
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`Petitioner’s Exhibit 1014 is newly filed.
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`1014
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`Petitioner Apple Inc. provides this Reply under 37 C.F.R. § 42.23 to Patent
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`Owner FastVDO LLC’s Response (Paper 27). With this Reply and its June 16,
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`2016 Petition (Paper 2), Petitioner requests relief through the cancellation of
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`claims 1-3, 5-14, 16-17, 22-26, and 28-29 of U.S. Patent No. 5,850,482 (Ex. 1001
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`(the ’482 patent)).
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`I.
`
`INTRODUCTION
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`Patent Owner’s arguments for non-obviousness are meritless. As discussed
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`below, Patent Owner’s arguments are contrary to teachings of the ’482 patent, the
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`testimony of its own expert Dr. Zeger, and its own counsel’s assertions during the
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`deposition of Dr. Lippman. Accordingly, Petitioner respectfully requests that the
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`Board find the challenged claims unpatentable.
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`II. REPLY TO PATENT OWNER’S ARGUMENTS
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`A.
`
`Patent Owner’s Procedural Argument Regarding the
`Means-Plus-Function Constructions Remains Meritless
`
`The Board should once again reject Patent Owner’s argument that the
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`Petition should be denied with respect to claims 7-11 and 22-26 because it does not
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`identify a sufficient structure for the means-plus-function limitations. (Response at
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`18-23.) The Board has already rejected this argument twice, both in instituting IPR
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`proceedings (Paper 14) and in denying Patent Owner’s request for rehearing
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`(Paper 26). The argument remains meritless.
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`The Board correctly concluded that “the Petition identifies sufficient
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`structure to support constructions of the means-plus-function limitations.”
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`(Paper 26 at 4; see also Paper 22 (Response to Request for Rehearing).) The
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`Board explained that it merely “disagreed with Petitioner’s indefiniteness
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`arguments.” (Paper 26 at 4.) That is no basis for rejecting Petitioner’s grounds for
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`obviousness.
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`The Petition is consistent in its treatment of claims 7 and 10. Patent
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`Owner’s argument otherwise is founded on the erroneous premise that “Petitioner
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`looked to the data store region of the encoding circuit 602” of Kato in evaluating
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`dependent claim 10, which adds the additional limitation of a storage medium to
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`the error protection means. (Response at 21 (citing Petition at 32).) Neither the
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`cited excerpt nor any other portion of the Petition mentions the data store region of
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`encoding circuit 602. Patent Owner’s error may be rooted in its misconception that
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`“data store region” in Kato refers exclusively to RAM 617 in encoding circuit 602.
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`Petitioner addresses that issue below in § II.E.2.
`
`Similarly baseless is Patent Owner’s argument that the Kato claim charts
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`treat claim 11 (which adds limitations relating to data link transmitting means to
`
`the error protection means of claim 7) inconsistently from claims 7 and 10. Those
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`claim charts together indicate that the error protection means of claim 11 in Kato
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`comprises ECC encoder 603 and the encoding and transmission circuitry
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`connected thereto. (Petition at 30, 32-33.) There is no inconsistency in the charts.
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`Patent Owner’s criticism of Petitioner for “expanding” the error protection
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`means in claim 11 to include the transmission circuitry (Response at 21) is
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`meritless as well. Claim 11 expressly adds additional elements to the error
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`protection means of claim 7 by reciting transmitting means. Thus, Patent Owner’s
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`position that the “error protection means” cannot encompass transmission circuitry
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`contradicts the explicit language of claim 11.
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`Patent Owner’s position that the Petition does not apply the Board’s
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`construction is incorrect. The Petition identifies an error protection means in Kato
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`that is the same as, or equivalent to, data encoder 16 and unequal error protector 29
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`(i.e., the construction of “error protection means”). The ’482 patent discloses that
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`“the prefix fields of the encoded data are preferably channel encoded with an
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`appropriately high level of error protection in order to provide a high probability
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`that the prefix fields will be decoded correctly.” (16:15-18.) Petitioner’s claim
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`charts state that ECC encoder 603 of Kato performs that function. (Petition at 30
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`(“Kato discloses ECC encoder 603 providing error protection to the first portions
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`Pi of Ci while maintaining a lower level of error protection for the associated
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`second portions Ri of Ci.”).) Petitioner’s claim charts for Fazel identify that
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`function as well. (Petition at 57, 59 (citing Fazel ’622 at Figs. 2-5, 6:8-28, and
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`6:49-8:10; Fazel at Abstract; Introduction; § IV).) The purpose in Kato and Fazel
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`is the same as in the ’482 patent. Patent Owner fails to rebut Petitioner’s showing
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`that those disclosures in Kato and Fazel are the same or equivalent to the “error
`
`protection means” as construed by the Board.
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`Patent Owner’s assertion that the phrase “error protection means” does not
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`appear in Dr. Lippman’s declaration is irrelevant. (Response at 21.) Dr. Lippman
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`testified that his understanding of “error protection means” in forming his
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`obviousness opinions was consistent with the Board’s construction of that term.
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`(Patent Owner’s Ex. 2014 (Lippman Tr.) at 188:14-189:12.) Those opinions
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`include Dr. Lippman’s opinion that the claim charts in the Petition are correct.
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`(Ex. 1002 (Lippman Decl.) ¶64.) Patent Owner accepted Dr. Lippman’s testimony
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`without further questioning and failed to address his testimony in its Response.
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`Moreover, Dr. Zeger offers no rebuttal to Dr. Lippman’s opinion on “error
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`protection means.”
`
`B.
`
`Patent Owner’s Argument Regarding the Construction of
`“Storage Medium” Is Irrelevant
`
`Patent Owner’s argument about the construction of “storage medium”
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`(Response at 13-17) is irrelevant. Petitioner agrees with Patent Owner that
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`“storage medium” should be afforded its plain and ordinary meaning. Contrary to
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`Patent Owner’s assertion, Petitioner has never argued that “storage medium”
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`encompasses a transmission channel, a data link, or a transitory signal.
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`Patent Owner mischaracterizes Petitioner’s arguments. For example, Patent
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`Owner maintains that Petitioner’s reliance on a sentence in Kato at column 33,
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`lines 2–7 shows that Petitioner contends that “storage medium” encompasses
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`transmission. But that sentence states: “It is unnecessary that a data store region
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`always agrees with a physical data store region (for example, a data region in a
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`packet in the case of packet transmission, or a data region in a sector in the case
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`of a disk-shaped recording medium) in a transmission format.” (Ex. 1003 (Kato)
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`at 33:2-7 (emphasis added).)
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`Petitioner’s actual position is that the disk-shaped recording medium is a
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`storage device. (E.g., Petition at 42 (citing 33:2-7 for the proposition that “Kato
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`discloses that data is stored in a recording medium”); Lippman Decl. ¶71 (“The
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`term ‘data store region’ in Kato refers to both physical recording media (‘data
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`region in a sector in the case of a disk-shaped recording medium’) and
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`transmission media …” (citing Kato at 33:2-7)).) Neither Petitioner nor
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`Dr. Lippman has ever suggested that transmission is the same as storage, and it is
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`irrelevant whether “storage medium” encompasses transmission as well as physical
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`storage, because Kato discloses physical storage.
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`C. Claims 1-3, 7-9, 13, 14, 23, and 24 Are Obvious in View of Kato
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`Patent Owner’s only argument for non-obviousness based upon Kato is that
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`it would not have been obvious to modify the first portion Pi such that it directly
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`indicates the length of Ri (L2) as opposed to the length of Ci (L = L1 + L2).
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`(Response at 39-44.) Dr. Lippman explained why this modification was obvious in
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`his declaration. (Lippman Decl. ¶77.) Dr. Zeger’s declaration offers no rebuttal to
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`Dr. Lippman’s testimony on this issue. Furthermore, Patent Owner cites no
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`pertinent deposition testimony of Dr. Lippman. Patent Owner instead relies solely
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`on attorney argument to contradict Dr. Lippman’s expert opinion.
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`Patent Owner’s attorney argument is erroneous. The argument is premised
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`on an incorrect assertion that “Kato does not disclose using L2 (i.e. L2 = L – L1) in
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`decoding Pi and Ri at the receiver.” (Response at 42.) That assertion is
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`contradicted not only by Dr. Lippman’s testimony, but also by the leading
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`questions of Patent Owner’s counsel at Dr. Lippman’s deposition. (E.g., Ex. 2014
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`(Lippman Tr.) at 107:12-13, 18-19 (“Q You agree to decode Ri, the decoder would
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`need to know L2, correct? ... A It needs to know L2 in order to decode the
`
`succession of Rs.”); 111:4-6 (“Q And so the receiver needs to know L2 so it isn’t
`
`losing synchronization with the suffix. Is that right?”).) Indeed, Kato expressly
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`states that L2 is used in decoding the codewords. (Kato at 29:30-31 (“The data Vi
`
`is recovered by using the data L1 and L2 as follows.”); see also id. at 29:22-24
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`(stating that L2 is recovered); 30:4-9 (explaining how L2 is used).)
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`Thus, claims 1-3, 7-9, 13, 14, 23, and 24 are obvious in view of Kato.
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`D. Claims 1-3, 7-9, 13, 14, 23, and 24 Are Obvious in View of Fiala
`and Fazel
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`Claims 1-3, 7-9, 13, 14, 23, and 24 are also obvious in view of Fiala and
`
`Fazel. Patent Owner’s primary argument that “[a] POSITA would not have been
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`motivated to use Fiala’s lossless compression methods with a noisy channel that
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`required error protection[]” (Response at 51) is not only unsupported, but incorrect
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`and contradicted by Patent Owner’s own expert.
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`Patent Owner’s expert Dr. Zeger agreed that “[a] person of skill in the art
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`would have been motivated to use Fiala’s lossless compression methods with a
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`noisy channel in which the effects of the noise had been mitigated by error
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`protection.” (Ex. 1014 (Zeger Tr.) at 236:15-21.) He further testified that the
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`Internet and error-protected radio links were examples of such channels over which
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`it would have been obvious to transmit the Fiala data. (Id. at 232:6-233:17.) Thus,
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`the mere fact that Fiala discloses storage of encoded data on a floppy disk would
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`not, as Patent Owner contends, have dissuaded one of skill in the art from
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`transmitting or storing the data over noisy media that were subject to error
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`protection, as taught in Fazel. (See id. at 223:6-12 & 235:5-18 (conceding that
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`Fazel discloses a method of unequal error protection to reduce noise in a channel).)
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`Patent Owner’s next argument—that Fazel does not disclose applying its
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`scheme of unequal error protection to prefixes and suffixes of codewords and that
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`Fiala does not describe the prefix as being more important (Response at 51-54)—
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`also misses the mark. It is undisputed that a skilled artisan would have known that
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`more important data should be afforded higher error protection than less important
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`data. (Lippman Decl. ¶¶44-45; Zeger Tr. at 17:22-18:25; 24:12-19.) Furthermore,
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`Dr. Lippman has opined that a skilled artisan would have recognized that the
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`prefixes of the codewords in Fiala were more important than the suffixes because
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`errors in the prefixes could lead to error propagation in subsequent codewords.
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`(Lippman Decl. ¶¶95-96.) Dr. Zeger does not challenge that opinion in his
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`declaration. Thus, the application of Fazel’s unequal error protection scheme to
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`Fiala’s prefix/suffix codewords would have been obvious.
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`Patent Owner’s final argument for these claims—that Petitioner and
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`Dr. Lippman failed to describe how the combination of Fiala and Fazel would
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`operate (Response at 56)—is incorrect. Both Petitioner and Dr. Lippman
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`explained that Fazel’s higher level of error protection would be applied to Fiala’s
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`prefixes in which a bit error may propagate to other codewords, and Fazel’s lower
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`level of error protection would be applied to Fiala’s suffixes. (Petition at 55;
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`Lippman Decl. ¶96.) That adequately describes Petitioner’s proposed
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`combination.
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`E.
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`The Storage Claims (Claims 5, 10, 16, 25, 28, and 29) Are Obvious
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`1.
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`The ’482 Patent Admits That It Was Known to Use Unequal
`Error Protection for Storage of Data
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`Patent Owner’s argument that the storage claims are patentable because it
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`was not obvious to store error-protected data (Response at 26-37; 49-56) is
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`meritless. The ’482 patent never suggests that there was anything inventive about
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`storing error-protected data.
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`Rather, the patent admits that it was known in the prior art to use unequal
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`error protection for storage of data. The “Background of the Invention” notes that
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`the word “channel” includes both storage and transmission media. (5:1-3 (“[T]he
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`communications or storage medium is referred to as the ‘channel.’”).)
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`Immediately thereafter, the Background explains that the use of unequal error
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`protection to correct for bit errors in these “channels” was known in the prior art.
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`(5:3-45.)
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`Furthermore, the ’482 patent never suggests that there was anything
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`noteworthy, much less inventive, about storing data encoded with unequal error
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`protection in different data blocks. Rather, the patent treats storage the same as
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`transmission for purposes of the clamed invention. (E.g., 9:21-24 (“[T]he error
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`resilient method and apparatus for encoding data can form one portion of a method
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`and apparatus 10 for compressing data which is thereinafter stored and/or
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`transmitted.” (emphasis added)).)
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`2.
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`The Storage Claims Are Obvious in View of Kato
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`Patent Owner’s arguments for non-obviousness of the storage claims in view
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`of Kato fail for two reasons. First, Kato expressly discloses storage of data
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`encoded with unequal error protection. Second, it was obvious to apply Kato’s
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`scheme of unequal error protection to stored data.
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`a) Kato Expressly Discloses Storage of Error-Protected
`Data
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`Kato expressly discloses storage of data that is encoded in two portions that
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`are subject to unequal error protection. In particular, Kato discloses that the first
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`portions Pi of a “data store region” are subject to higher error protection than the
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`second portions Ri. (Kato at 31:51-67 & Fig. 7.) Patent Owner ignores this
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`disclosure in its Response, even though Petitioner cited it in its Petition. (E.g.,
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`Petition at 27.) The same paragraph of Kato continues by stating that “the data
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`portions which are made higher in error-correction ability may agree with a given
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`area extending from the starting edge of a data store region, for example, a given
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`former area of the data store region.” (Kato at 32:2-6 (emphasis added).) Thus,
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`the paragraph discloses storage of first portions Pi and second portions Ri that are
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`encoded with unequal error protection. This satisfies the storage claims under
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`Dr. Zeger’s own interpretation.1
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`Additionally, Kato discloses that the data store region can be a “data region
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`in a sector in the case of a disk-shaped recording medium.” (Kato at 33:2-7.)
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`Dr. Zeger testified that he believes this disclosure means that the data store region
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`can be located in a hard drive. (Zeger Tr. at 161:17-21; see also id. at 114:9-16
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`(explaining that the platters in magnetic hard drives are generally disc-shaped).)
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`Furthermore, Kato indicates that storage of data in the hard drive is an alternative
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`to transmitting the data. (Kato at 33:4-6 (describing a data store region as “a data
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`region in a packet in the case of packet transmission, or a data region in a sector in
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`the case of a disk-shaped recording medium”).) And Patent Owner concedes that
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`transmission in Kato occurs after the data is encoded with unequal error protection.
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`(Response at 30 (“Kato’s fourth embodiment does not add error protection to the
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`data until the ECC encoder 603, after which the ECC-encoded data is modulated
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`1 Dr. Zeger testified that he believes that “storage” applies to both volatile and
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`non-volatile memories. (Zeger Tr. at 119:19-120:15.) He also testified that the
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`claim requirement of two data blocks simply requires that the data not be stored on
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`top of each other, which one can “logically conclude” to be the case if the data is
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`stored at the same time. (Id. at 248:9-249:1.)
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`and transmitted.”).) Thus, the hard drive replacing the transmitter would contain
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`data encoded with unequal error protection, satisfying the storage claims.
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`Dr. Zeger incorrectly contends that the hard drive would replace RAM 617
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`in Kato’s Figure 6(a), as opposed to a transmitter. (Zeger Tr. at 160:15-22.) That
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`position finds no support in Kato. Kato makes no mention of RAM 617 when
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`discussing the disk-shaped recording medium. Indeed, Kato’s discussion of
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`RAM 617 concludes six columns before Kato’s discussion of the disk-shaped
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`recording medium. (Kato at 27:6-7 (final mention of RAM 617); Kato at 33:2-7
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`(disclosure of disk-shaped recording medium).) Moreover, it would make no sense
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`for Kato to contrast a disk-shaped recording medium with a transmission packet if
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`Kato’s intent was to indicate that the recording medium would replace RAM 617.
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`Dr. Zeger’s interpretation of Kato is unreasonable.
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`More generally, Patent Owner’s position that the term “data store region” is
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`restricted to a portion of RAM 617 is inconsistent with Kato. In addition to the
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`disclosures regarding data store regions discussed above, Kato discloses that data
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`store regions are present in prior art encoders (2:44-58) and in the decoder of
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`Figure 6(b) (28:62-64). Dr. Zeger conceded that these data store regions are
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`different from RAM 617. (Zeger Tr. at 178:2-180:20 (mistakenly testifying that
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`“data store region” in column 28 of Kato refers to RAM 617 in Figure 6(a) before
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`conceding that it refers to RAM 635 in Figure 6(b)); 183:14-184:2 (conceding that
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`Kato uses “data store region” generically when describing the prior art).) When
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`presented with these disclosures, Dr. Zeger admitted that he had not “[made] a
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`detailed analysis of when Kato uses the term ‘data store region’ in which context.”
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`(Id. at 183:1-7.)
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`Such a detailed analysis would have revealed that Kato uses the term “data
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`store region” to refer to any region in which data is stored, such as a sector of a
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`hard drive. The term is not limited to RAM 617. Indeed, in a single sentence,
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`Kato refers to a data store region in the RAM 617 “corresponding to the data store
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`region or regions in the transmission format.” (Kato at 25:31-34.) Patent Owner’s
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`non-obviousness arguments are based entirely on its misreading of Kato and
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`should be rejected.
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`b) Regardless, It Would Have Been Obvious to Store the
`Error-Protected Data in Kato
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`Even if, arguendo, Kato did not expressly disclose storage of error-protected
`
`data, a skilled artisan would have found that concept obvious. In fact, Dr. Zeger’s
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`deposition testimony establishes obviousness. Dr. Zeger admitted that:
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`• A skilled artisan would have recognized that Kato’s encoded data could be
`
`stored instead of transmitted. (Zeger Tr. at 166:3-9.)
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`• A skilled artisan would have known that the image and audio data discussed
`
`in Kato (and any other kind of data) could be stored in noisy memories. (Id.
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`at 100:1-109:17; see also id. at 80:15-81:7; ’482 Background at 4:66-5:5
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`(known in the art that stored data subject to corruption).)
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`• A skilled artisan would have recognized that using error protection to
`
`“protect[] noisy memory from errors would have a benefit of reducing
`
`errors.” (Id. at 89:15-90:4.)
`
`• A skilled artisan “would understand that unequal error protection can help
`
`out or might be a way of addressing the issue of propagation of channel
`
`errors[.]” (Id. at 35:21-36:12 (emphasis added); see also id. at 17:22-18:25
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`(uses of unequal error protection known by 1980s); 81:8-16 (“channels”
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`encompasses both storage and transmission).)
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`• Kato discloses the use of unequal error protection to prevent propagation of
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`errors in a noisy channel. (Id. at 20:12-19.)
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`Patent Owner’s only argument against obviousness is that applying unequal
`
`error protection to stored data would have had known drawbacks in addition to
`
`known benefits. (E.g., Response at 33-35 (adding error protection codes would
`
`have had the disadvantage of increasing the size of the stored data2); Zeger Tr. at
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`2 Patent Owner goes so far as to argue that compression and error protection are
`
`incompatible because compression decreases data size and error protection
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`increases data size. (Response at 33-35.) That is incorrect. Dr. Lippman
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`explained that “[d]uring compression, redundancy in the data is removed, whereas
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`32:4-33:6 (unequal error protection could “cost money,” involve “[l]abor issues,
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`finding people able to implement it,” cause “delays” in processing data, and
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`require “experimentation ... to figure out how much error protection coding to
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`[use]”); id. at 89:15-90:4 (unequal error protection had costs in addition to
`
`benefits).) Patent Owner’s position contradicts both the background disclosure of
`
`the ’482 patent and controlling law on this issue.
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`The Federal Circuit has explained that “a given course of action often has
`
`simultaneous advantages and disadvantages, and this does not necessarily obviate
`
`motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
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`(Fed. Cir. 2006). Cf. Velander v. Garner, 348 F.3d 1359, 1368 (Fed. Cir. 2003)
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`(claims obvious despite necessity of “expense, time, and effort” in testing
`
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`during data transmission, or channel coding, redundancy is added in a controlled
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`fashion to combat errors in the channel.” (Lippman Decl. ¶38; see also id. ¶39
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`(“[A] storage device is just another channel.”).) Moreover, the ’482 patent’s
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`Background section discusses image compression and states at 4:66-5:1 that
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`“[o]nce an image is compressed, the compressed image is typically transmitted
`
`over a communications link or stored in a medium, such as a magnetic disk.” The
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`patent proceeds to state at 5:19-32 that as known to those skilled in the art, forward
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`error coding (FEC) “further encodes the [compressed] data,” even though
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`redundancy is added.
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`combination). Consistently, the Board has held that “the mere existence of
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`disadvantages resulting from a modification does not refute the obviousness of the
`
`modification, especially when the prior art indicates that the modification also
`
`offers an advantage.” Finjan, Inc. v. Fireeye, Inc., IPR2014-00344, 2015 Pat. App.
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`LEXIS 12868, at *52-53 (P.T.A.B. July 10, 2015). In general, “[t]radeoffs
`
`regarding features, costs, manufacturability, or the like, do not necessarily prevent
`
`the combination.” Id. at *53; see also Ex parte Mouttet, Appeal 2009-010041,
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`2011 Pat. App. LEXIS 15036, at *8-9 (B.P.A.I. Mar. 29, 2011) (“Weighing ...
`
`relative advantages and disadvantages in selecting [a feature] amounts to an
`
`engineering tradeoff—a decision well within the level of ordinarily skilled
`
`artisans.”), aff’d, 686 F.3d 1322 (Fed. Cir. 2012).
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`Dr. Zeger testified that a skilled artisan would have understood both the
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`benefits and drawbacks of unequal error protection as needed to practice the
`
`purported invention of the ’482 patent. (Zeger Tr. at 33:14-34:2.) That accords
`
`with Dr. Lippman’s testimony that the application of Kato’s scheme of unequal
`
`error protection to stored data would have had “predictable results.” (Lippman
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`Decl. ¶80.) It also accords with the disclosure in the ’482 patent that it was known
`
`to use unequal error protection to prevent channel errors while minimizing the
`
`“downside” of increased channel bandwidth. (5:19-45.) Obviousness requires
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`nothing more. See e.g., Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1327
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`(Fed. Cir. 2017) (skilled artisan would be motivated to add feature despite known
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`drawbacks “including expense, poor machinability and possible impurities”); Ex
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`parte Jiang, Appeal 2015-000860, 2017 Pat. App. LEXIS 3158, at *4 (P.T.A.B.
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`Apr. 3, 2017) (claimed combination obvious despite having both benefits and
`
`drawbacks where “a person of ordinary skill in [the] field would have realized the
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`tradeoff”); Ex parte Mouttet, 2011 Pat. App. LEXIS 15036, at *8-9 (claims
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`obvious where “an ordinarily skilled artisan would have recognized the relative
`
`advantages and disadvantages of using [a claimed feature] in the recited
`
`application in terms of technical and practical considerations (e.g., cost,
`
`complexity, capabilities, etc.)”).
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`Thus, the storage claims are obvious in view o
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