`571-272-7822
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`Paper 49
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`Entered: September 6, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION, MICROSOFT MOBILE INC.,
`HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE PHILIPS N.V.,
`Patent Owner.
`____________
`
`Case IPR2017-00890
`Patent 6,522,695 B1
`____________
`
`
`
`Before TREVOR M. JEFFERSON, CHARLES J. BOUDREAU, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Determining Claims 14, 15, and 17 Unpatentable
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I.
`INTRODUCTION
`Microsoft Corporation, Microsoft Mobile Inc., HTC Corporation, and
`HTC America, Inc. (collectively, “Petitioner”) sought an inter partes review
`of claims 14, 15, and 17 (the “challenged claims”) of U.S. Patent No.
`6,522,695 B1 (“the ’695 patent”). Paper 1 (“Petition” or “Pet.”). Patent
`Owner Koninklijke Philips N.V. filed a Preliminary Response. Paper 6.
`Upon consideration of the Petition and Preliminary Response, we instituted
`an inter partes review pursuant to 35 U.S.C. § 314 of the challenged claims.
`Paper 7 (“Decision on Institution” or “Dec. on Inst.”), 29.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that the challenged claims are unpatentable.
`
`
`II.
`BACKGROUND
`Procedural History and Asserted Grounds of Unpatentability
`A.
`Petitioner advanced the following grounds of unpatentability under
`35 U.S.C. § 103(a) in the Petition (Pet. 4):
`1. Claims 14, 15, and 17 over Green1 and Blue2;
`2. Claims 14 and 15 over Clark3;
`
`
`1 Consultative Committee for Space Data Systems Report Concerning
`Space Data System Standards: Lossless Data Compression, Green Book
`(“Green”) (Ex. 1003).
`2 Consultative Committee for Space Data Systems Report Concerning
`Space Data System Standards: Lossless Data Compression, Blue Book
`(“Blue”) (Ex. 1009).
`3 Clark, U.S. Patent No. 5,177,480 (“Clark”) (Ex. 1004).
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`3. Claim 17 over Clark and Bliss4;
`4. Claims 14 and 15 over Venbrux5; and
`5. Claims 17 over Venbrux and Bliss.
`In our Decision on Institution, we instituted review of claims 14 and
`15 over Green and Blue, claims 14 and 15 over Venbrux, and claim 17 over
`Venbrux and Bliss. Dec. on Inst. 29. We, thus, instituted review of all
`challenged claims, albeit on fewer than all asserted grounds. Id. On
`April 24, 2018, the Supreme Court held that a decision to institute under
`35 U.S.C. § 314 may not institute review on less than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`Apr. 24, 2018). Thereafter, we modified our Decision on Institution to
`institute all grounds of unpatentability asserted against claims 14, 15, and
`17, as presented in the Petition. Paper 40, 2.
`After institution, Patent Owner filed a Patent Owner Response
`(Paper 25, “PO Resp.”) and observations on cross examination (Paper 34).
`Patent Owner also filed, with our prior authorization, a motion for additional
`discovery. Paper 15. Petitioner opposed (Paper 19) and we denied Patent
`Owner’s motion. Paper 47.
`Petitioner filed a Reply to the Patent Owner Response (Paper 30,
`“Reply”) and a response to Patent Owner’s observations on cross
`examination (Paper 44). Petitioner also filed, with our prior authorization, a
`motion to submit supplemental information. Paper 14. Patent Owner
`
`
`4 Venbrux et al., A VLSI Chip Set for High-Speed Lossless Data
`Compression, IEEE Transactions on Circuits and Systems for Video
`Technology, Vol. 2, No. 4 (Dec. 1992) (“Venbrux”) (Ex. 1005).
`5 Bliss, et al., U.S. Patent No. 6,009,549 (“Bliss”) (Ex. 1006).
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`opposed this motion. Paper 17. We resolve below Petitioner’s motion to
`submit supplemental information. See infra Section IV.
`In addition to the foregoing papers, the parties also filed cross motions
`to exclude certain evidence. Paper 38 (Pet. Motion); Paper 35 (PO Motion).
`Each party opposed the other party’s motion. Paper 43 (Pet. Opposition);
`Paper 42 (PO Opposition). Each party replied in support of its own motion
`to exclude. Paper 46 (Pet. Reply); Paper 45 (PO Reply). We resolve below
`the parties’ motions to exclude. See infra Sections V, VI.
`Both parties requested an oral hearing, and a hearing was held on
`May 22, 2018. Paper 41. A transcript of the oral hearing has been entered
`into the record. Paper 48 (“Tr.”).
`B.
`Testimony
`Petitioner supports its challenges with declarations of Dr. Kenneth R.
`Castleman. Exs. 1002, 1031. Dr. Castleman testified by depositions on
`November 21, 2017, and on April 12, 2018, and transcripts of his testimony
`have been entered into evidence. Exs. 2018, 2028.
`Patent Owner supports its challenges with a declaration of Dr. Charles
`Boncelet, Jr. Ex. 2016. Dr. Boncelet testified by deposition on February 16,
`2018, and a transcript of his testimony has been entered into evidence.
`Ex. 1032.
`Related Proceedings
`C.
`Petitioner identifies several actions for infringement of the ’695 patent
`pending in the United States District Court for the District of Delaware.
`Pet. 1–2.
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`D. Overview of the ’695 patent (Ex. 1001)
`The ’695 patent relates to compressing a digital information signal
`and efficiently transmitting it. Ex. 1001, 1:10–12. The ’695 patent seeks to
`transmit the digital information signal using as few bits as possible. Id. at
`1:39–41 (“It is an object of the invention to provide a transmitter and/or
`receiver which transmits a digital information signal with a smaller or at the
`most equal number of bits.”). The ’695 patent discloses a transmitter that
`encodes the digital information signal for compression and provides the
`signal to a receiver that decodes the signal. Id. at 1:10–12, 1:40–44.
`The invention of the ’695 patent “is based on recognition of the fact
`that by using an encoder, the number of bits required to transmit a digital
`information signal is not always reduced.” Id. at 2:60–63. In some
`instances, encoding results in a signal using more bits than the original
`digital information signal itself. Id. at 2:63–65. Because the ’695 patent
`aims to use as few bits as possible, the ’695 patent describes transmitting
`either the encoded or original digital information signal, depending on
`whichever requires the smaller number of bits. Id. at 2:66–3:1. An
`identification signal is included in the transmission, indicating whether the
`transmission has been encoded by a given encoding method. Id. at 3:2–4.
`Figure 2 of the ’695 patent is reproduced below.
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`Figure 2 depicts “a receiver in accordance with the invention, for
`receiving a composite signal TRM.” Id. at 5:64–65. “A version of the
`digital information signal is derived from the composite signal TRM. An
`exact or a non-exact copy of the digital information signal will be derived
`depending on the coding used in the transmitter.” Id. at 5:65–6:2.
`The composite signal TRM is input into demultiplexer 62. Id. at 6:2–
`3. Demultiplexer 62 derives from the composite signal TRM a version of
`the digital information signal, and this version may include one or more
`signal portions. Id. at 6:5–10. A signal portion can be, for instance, a track
`of a disk. Id. This version of the digital information signal is applied to
`output 64. Id. Demultiplexer 62 also derives from the composite signal
`TRM an identification signal. Id. at 6:2–4. The identification signal
`“specifies how the version of the digital information signal has been
`encoded.” Id. at 6:11–6:13. The identification signal further specifies
`whether each signal portion on output 64 has been encoded. Id. at 6:13–15.
`The identification signal is applied to output 66. Id. at 6:11–13.
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`Identifier 70 receives the identification signal at input 68 and derives a
`control signal therefrom. Id. at 6:16–19. If the corresponding signal portion
`of the digital information signal is encoded, the control signal derived by
`identifier 70 will be of a first type. Id. at 6:19–22. If, however, the
`corresponding signal portion is not encoded, the control signal derived by
`identifier 70 will be of a second type. Id. at 6:22–26. The control signal is
`applied to output 72. Id. at 6:17–19.
`Decoding unit 76 receives the control signal at input 78 and the
`corresponding signal portion of the digital information signal at input 74. Id.
`at 6:27–29. The signal portion is passed to decoder 77, which applies the
`decoded signal portion to switch 79. Id. at 6:29–32. The signal portion is
`also passed directly to switch 79, bypassing decoder 77. Id. at 6:32–37,
`Fig. 2. If the control signal is of a first type (indicating that the signal
`portion is encoded), switch 79 couples the decoded signal portion to output
`80. Id. If, however, the control signal is of a second type (indicating that
`the signal portion is not encoded), the corresponding signal portion is not
`encoded, and switch 79 couples the signal portion in substantially
`unmodified form to output 80. Id. at 6:32–37, 6:46–48.
`In one embodiment, the receiver of Figure 2 is included within a
`reproducing receiver. Id. at 7:24–28, Figure 4 is reproduced below.
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`Figure 4 depicts a reproducing receiver including circuit block 400,
`which “is equivalent to the block diagram” of Figure 2. Id. at 7:24–28.
`“The reproducing receiver further includes a reader 402, a channel decoder
`406 and an error detector 408 for detecting or, if possible, an error corrector
`408 for correcting errors in the signal.” Id. at 7:28–32. Reader 402 provides
`a signal from record carrier 402b/b’ to channel decoder 406 and error
`detector/corrector 408. Id. at 7:33–35. The output of detector/corrector 408
`is supplied to the receiver of Figure 2 on input 60, i.e., the composite signal
`TRM. Id. at 7:24–28.
`E.
`Challenged Claims
`Claim 14 is independent, and claims 15 and 17 depend therefrom.
`Claims 14, 15, and 17 are reproduced below, with bracketed material added.
`14. A receiver comprising:
`[14a.] receiving means for receiving a composite signal
`from a transmission medium;
`[14b.] demultiplexing means for deriving at least one
`signal portion from the composite signal and for deriving
`a first identification signal of a first type and a second type
`from the composite signal;
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`[14c.] decoding means for decoding at least one signal
`portion and for decoding a signal portion into a portion of
`the [sic] digital information signal and to supply the
`portion of a digital information signal depending on a
`control signal of a first type and to supply a signal portion
`as a portion of the digital information signal in a
`substantially unmodified form depending on a control
`signal of a second type; and
`[14d.] means for generating the control signal for
`application to the decoding means including a control
`signal of the first type depending on the first identification
`signal of the first type.
`15. The receiver of claim 14, in which:
`[15a.] the demultiplexing derive [sic] a first identification
`signal of a second type from the composite signal; and
`[15b.] the means for generating the control signal generate
`a control signal of the second type depending on the first
`identification signal of the second type;
`17. A receiving device as claimed in claim 14, in which
`the receiver further comprises:
`[17a.] a device for reading out a signal recorded on a
`record carrier; and
`at least one of
`[17b.] channel decoding means for the channel decoding
`of the read-out signal and
`[17c.] error detection/correction means detecting and
`correcting errors in the read-out signal.
`
`
`
`III. ANALYSIS
`Principles of Law
`A.
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
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`1378 (Fed. Cir. 2015). To prevail in its challenges to the challenged claims,
`Petitioner must demonstrate by a preponderance of the evidence that the
`claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`A claim is unpatentable under 35 U.S.C. § 103(a) 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 of the invention to a
`person having ordinary skill in the art. 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, if presented, (4) objective
`evidence of nonobviousness, i.e., secondary considerations such as
`commercial success, long felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The obviousness
`inquiry further requires an analysis of “whether there was an apparent reason
`to combine the known elements in the fashion claimed by the patent at
`issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (requiring “articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness”)).
`B.
`Level of Ordinary Skill in the Art
`Petitioner states that a person having ordinary skill in the art “for the
`technology in the ’695 patent would have had at least a bachelor’s degree in
`electrical engineering and three to five years of experience in audio and/or
`video compression and decompression.” Pet. 9 (citing Ex. 1002 ¶¶ 44–46).
`Patent Owner does not dispute Petitioner’s definition, presents an analysis
`based on Petitioner’s definition, and argues that, even under Petitioner’s
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`definition, Petitioner has failed to show the challenged claims are
`unpatentable. PO Resp. 8 (Ex. 2016 ¶¶ 30–40).
`In view of the foregoing, we adopt Petitioner’s formulation of the
`level of ordinary skill in the art. Further, this level of ordinary skill is
`reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of
`ordinary skill in the art).
`C.
`Claim Construction
`1.
`Applicable Standards and General Principles
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Although the ’695 patent’s expiration
`date is not mentioned by either party, we note that the ’695 patent issued
`from an application filed March 16, 1999, does not claim the benefit of any
`earlier-filed application, and accordingly expires no later than March 16,
`2019. 35 U.S.C. § 154(a)(2). Because the ’695 patent has not expired, we
`apply the broadest reasonable construction standard. See id.
`Under the broadest reasonable construction standard, claim terms
`generally 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). The claims, however, “should always be read in light of the
`specification and teachings in the underlying patent,” and “[e]ven under the
`broadest reasonable interpretation, the Board’s construction cannot be
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`divorced from the specification and the record evidence.” Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted).
`Further, any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. See In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`definition, limitations are not to be read from the specification into the
`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`A claim limitation using the phrase “means for” creates a rebuttable
`presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.6 See
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015).
`Section 112 ¶ 6 provides that:
`An element in a claim for a combination may be expressed as a
`means . . . for performing a specified function without the recital
`of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material,
`or acts described in the specification and equivalents thereof.
`Construing a means-plus-function claim term is a two-step process,
`wherein we first identify the claimed function and then determine what
`structure, if any, disclosed in the specification corresponds to the claimed
`function. Id. at 1351; Med. Instrumentation & Diagnostics Corp. v. Elekta
`AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v.
`St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Moreover,
`“structure disclosed in the specification is ‘corresponding’ structure only if
`
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`6 Section 4(c) of the Leahy-Smith America Invents Act (AIA), Pub. L. No.
`112-29, § 4(c), 125 Stat. 284 (2011), re-designated 35 U.S.C. § 112 ¶ 6 as
`35 U.S.C. § 112(f). Because the ’695 patent has a filing date before
`September 16, 2012 (effective date of the statute), we refer to the pre-AIA
`version of 35 U.S.C. § 112.
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`the specification or prosecution history clearly links or associates that
`structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart
`Stores, Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004); Cardiac Pacemakers,
`296 F.3d at 1113. This analysis applies under the broadest reasonable
`construction standard. In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)
`(“[T]he broadest reasonable interpretation . . . [of] means-plus-function
`language is that statutorily mandated in [Section 112] paragraph six.”
`(quoting In re Donaldson Co., 16 F.3d 1189, 1194–95 (Fed. Cir. 1994) (en
`banc))); Donaldson, 16 F.3d at 1193 (“[P]aragraph six applies regardless of
`the context in which the interpretation of means-plus-function language
`arises, i.e., whether as part of a patentability determination in the PTO or as
`part of a validity or infringement determination in a court.”).
`Our Rules specifically require that a petition for inter partes review
`identify how each challenged claim is to be construed, including
`identification of the corresponding structure for means-plus-function
`limitations. 37 C.F.R. § 42.104(b)(3). In particular, where the claim to be
`construed contains a means-plus-function limitation as permitted under
`35 U.S.C. § 112 ¶ 6, the construction of the claim must identify the specific
`portions of the specification that describe the structure, material, or acts
`corresponding to each claimed function. Id.
`Petitioner asserts the following claim limitations constitute means-
`plus-function limitations as permitted under 35 U.S.C. 112 ¶ 6: 14a–14d,
`15a and 15b, and 17a–17c. Pet. 9–14; see also supra Section II.E (bracketed
`notations identifying limitations). For each limitation, Petitioner identifies a
`recited function and corresponding structure disclosed in the Specification.
`Pet. 9–14. Patent Owner contends that limitation 14b is not properly
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`construed as a means-plus-function limitation. PO Resp. 14. Patent Owner
`does not challenge Petitioner’s identification of other limitations as subject
`to construction under 35 U.S.C. § 112 ¶ 6 or Petitioner’s corresponding
`proffered constructions of those limitations. Id. Because Petitioner’s
`constructions of limitations 14a, 14c, 14d, 15a, 15b, and 17a–17c are not
`controverted in the record before us, we do not construe these terms. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (explaining that only claim terms in controversy need to be construed,
`and only to the extent necessary to resolve the controversy).
`2.
`Limitation 14b: demultiplexing means for deriving at
`least one signal portion from the composite signal and for
`deriving a first identification signal of a first type and a second
`type from the composite signal
`Petitioner asserts this limitation is governed by 35 U.S.C. § 112 ¶ 6.
`Pet. 10. Relying on Dr. Castleman’s testimony, Petitioner states the recited
`functions are “deriving at least one signal portion from the composite signal”
`and “deriving a first identification signal of a first type and a second type
`from the composite signal.” Id. (citing Ex. 1002 ¶ 53). Petitioner identifies
`“demultiplexer unit 62 and its equivalents” as the structure corresponding to
`the recited demultiplexing means. Id (citing Ex. 1002 ¶ 54). Conversely,
`Patent Owner contends “that this term should not be construed under 35
`U.S.C. § 112, 6th paragraph.” PO Resp. 14.
`A claim limitation using the phrase “means for” creates a rebuttable
`presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6. See
`Williamson, 792 F.3d at 1348. We agree with Petitioner that construction of
`limitation 14b is governed by 35 U.S.C. § 112 ¶ 6, and we adopt Petitioner’s
`construction thereof. Patent Owner fails to rebut persuasively the
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`assumption that the recited demultiplexing means is intended to invoke
`35 U.S.C. § 112 ¶ 6. PO. Resp. 14. For instance, Patent Owner offers no
`evidence from the Specification or prosecution history in support of its
`assertion. Id. Accordingly, Patent Owner has not sufficiently rebutted in the
`record before us the presumption that limitation 14b was intended to invoke
`35 U.S.C. § 112 ¶ 6.
`We note, in any event, that Patent Owner’s alternative construction of
`limitation 14b as “a demultiplexer (e.g., demultiplexer 62) that carries out
`the claimed function, and equivalents thereto” accords with Petitioner’s
`identification of structure corresponding to the recited demultiplexing
`means. Compare Pet. 10, with PO Resp. 14.
`3.
`Limitation 14c: “a portion of the digital information
`signal in a substantially unmodified form”
`In our Decision on Institution, we directed the parties to address
`specifically the meaning of this element. In so doing, we instructed that the
`parties should cite all evidence in support of their positions, including but
`not limited to any relevant portions of the Specification, the prosecution
`history, and testimony.
`The parties agree that limitation 14c requires decoding and supplying
`the portion of the digital information signal depending on a control signal of
`a first type, and for supplying a signal portion in a substantially unmodified
`form depending on a control signal of a second type. Patent Owner states,
`“[p]ut even more simply, the first type control signal corresponds to decoded
`form, and the second type control signal corresponds to substantially
`unmodified form.” PO Resp. 11 (emphasis omitted). Patent Owner
`explains, ‘“substantially unmodified’ refers to a comparison between (1) the
`input (‘a signal portion’) of the ‘decoding means for decoding at least one
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`signal portion,’ and (2) the output (what is ‘supplied’) of the ‘decoding
`means for decoding at least one signal portion.” Id. at 12 (emphasis
`omitted). Thus, Patent Owner concludes, “claim 14 recites a distinction
`between (1) encoded signal portions and (2) signal portions that are
`substantially unmodified.” Id. at 13 (emphasis omitted).
`Petitioner agrees with Patent Owner that “the ’695 patent uses the
`term ‘substantially unmodified’ to differentiate signal portions that are not
`encoded or decoded from those that are.” Reply 2–3 (citing Ex. 1001, 4:9–
`12 (“the encoder can apply an encoded digital information signal or a
`substantially unmodified digital information signal to the output”); id. at
`4:45–47 (“the encoding unit 6 supplies a signal to the output 10 of the
`encoding unit 6 in an encoded form or in a substantially unmodified form”);
`id. at 6:44–48 (signal applied to output 80 of the decoding unit 76 is either a
`“decoded signal” or a “substantially unmodified” version of the input
`signal)). Thus, Petitioner contends, the term “substantially unmodified” in
`claim 14 refers to signal portions that simply pass through the decoding
`means (i.e., “not decoded”) from portions that are decoded. Reply 2.
`In light of the foregoing usage in the Specification and the parties’
`consensus regarding the scope of term, we construe the term “substantially
`unmodified” to mean “not modified,” such that, in the context of
`independent claim 14, the term denotes signals that are not decoded.
`4.
`Limitation 14d: a control signal of the first type
`depending on the first identification signal of the first type
`Patent Owner seeks construction of the term “depending upon,”
`because, according to Patent Owner, “what Petitioners identify as the
`‘control signal of the first type’ in Green and Blue is independent of what
`they identify as the ‘first identification signal of the first type.’”
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`PO Resp. 13–14 (emphasis added). Because our analysis below reaches
`only the grounds of unpatentability based on Venbrux—not the grounds
`based on Green and Blue––and the parties do not dispute whether Venbrux
`meets this limitation, we decline to construe this term. See Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining
`that only claim terms in controversy need to be construed, and only to the
`extent necessary to resolve the controversy).
`D.
`Asserted Obviousness of Claims 14 and 15 over Venbrux
`1.
`Overview of Venbrux
`Venbrux is a journal article that “describes the first complete chip set
`implementation of the Rice algorithm and is designed to perform high-speed,
`adaptive, lossless compression and decompression.” Ex. 1005, 381.
`Venbrux discloses an encoder and decoder chip set implementation, using
`distinct encoding schemes for different blocks of data. Id. The Rice
`algorithm aims to maximize the efficiency of data transmission by selecting,
`for each block of data, the encoding option that provides the best
`compression for that block. Id. at 382–83. As described in Venbrux, the
`Rice algorithm architecture includes a “default” coding option that does not
`encode the data. Id. Figure 7 of Venbrux is reproduced below.
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`Figure 7 depicts a block diagram of Venbrux’s Universal Source
`Decoder. Venbrux describes its decoder as performing the reverse of
`Venbrux’s encoder. Id. at 385. According to Venbrux:
`The main decoding section includes three pipelines. If a
`block is coded by FS and k splits, then the FS data are
`routed to the FS pipeline for decoding and the k splits are
`routed to the k split pipeline. Likewise, if the block of data
`is default, the data would be routed to the default pipeline.
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`Id. Thereafter, “[d]efault data, as well as concatenated sigma data, are then
`sent to the unmapper, which performs the reverse of the mapping function
`along with the reverse of DPCM. The decoded data are available at the
`output of the unmapper section.” Id.
`2.
`Status of Venbrux as Prior Art
`Petitioner offers the declaration of Ms. S. Rampersad (Ex. 1008,
`“Rampersad Declaration”) in support of its assertion that Venbrux
`constitutes prior art to the ’695 patent because it is a printed publication that
`was publically accessible no later than December 1992. Pet. 15 (citing
`Ex. 1008). During the trial, Petitioner did not make Ms. Rampersad
`available for deposition, but instead made Ms. Rampersad’s supervisor,
`Nigel Spencer, available for deposition. PO Resp. 50; Reply; Exs. 1033–
`1035, 2020–2025. Patent Owner declined to depose Mr. Spencer. Ex. 1035;
`see also Tr. 32:17–33:11. Because Petitioner did not offer Ms. Rampersad
`for deposition, Patent Owner asserts that “[t]he Rampersad declaration
`therefore should be given no weight.” PO Resp. 50. Significantly, however,
`Patent Owner does not dispute that Venbrux constitutes prior art to the
`’695 patent. Id.
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`We do not rely on the Rampersad Declaration to establish Venbrux’s
`status as prior art to the ’695 patent. Rather, we rely on Venbrux’s
`substantial indicia of publication, namely its header indicating Venbrux is a
`journal article included in “IEEE Transactions on Circuits and Systems for
`Video Technology, Vol. 2, No. 4, December 1992” and its footer reciting a
`1992 IEEE copyright date. Ex. 1005; Palo Alto Networks, Inc. v. Finjan,
`Inc., IPR2015-01979, Paper 62 at 22–25 (PTAB Mar. 15, 1997) (crediting
`indicia of publication on article in ACM journal); Microsoft Corp. v.
`Bradium Techs. LLC, IPR2016-00449, Paper 9 at 13 (PTAB July 27, 2016)
`(noting generally that “IEEE publications, such as the one in which Reddy
`appeared, are distributed widely and intended to be accessible to the
`public”). We further rely on the testimony of Patent Owner’s declarant
`Dr. Boncelet that the particular series of journals in which Venbrux appears,
`IEEE Transactions, is long-established and well-known. Ex. 1032, 11:9–
`13:7. In light of the foregoing evidence, we determine that Petitioner has
`met its burden to establish that Venbrux constitutes prior art to the ’695
`patent, which Patent Owner does not dispute in the record before us.
`3.
`Independent claim 14
`Petitioner, relying on the Castleman Declarations, asserts Venbrux
`renders obvious claim 14 in the following manner. Pet. 59–68 (citing
`Ex. 1002 ¶¶ 156–176). Petitioner identifies Venbrux’s “decompression end
`of the system” as the claimed receiving means. Id. at 61–62. In particular,
`Petitioner identifies Venbrux’s receiver “un-packer” block, depicted in
`Figure 12, as receiving a composite signal. Id. at 62. Figure 12, as
`annotated by Petitioner, is reproduced below.
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`Figure 12 is a system diagram for image compression, showing
`Venbrux’s receiver “un-packer” block receiving compressed data via a
`channel or storage media. Petitioner further asserts the claimed
`“demultiplexing means for deriving at least one signal portion from the
`composite signal and for deriving a first identification signal of a first type
`and a second type from the composite signal” is taught or suggested by
`Venbrux’s decoder. Pet. 63. Venbrux describes that “[b]efore processed
`data are sent out, ID bits are prepended to inform the decoder which of the
`code options have been used to compress the block of data.” Ex. 1005, 383.
`Thus, the composite signal received includes ID bits and data. Id. Once
`received, Venbrux states that its ID Decode unit within its decoder then
`decodes “the ID bits in order to direct data to the pipeline that is to decode
`the data.” Id. at 385. Figure 7 of Venbrux, depicting the block diagram of
`the decoder including the ID Decode unit, is reproduced below.
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`Figure 7 is a block diagram of Venbrux’s Universal Source Decoder,
`including the ID Decode unit. Thus, Petitioner asserts, “[t]he ID bits, which
`are different for the different types of compression options, are [the claimed]
`‘a first identification signal of a first type and a second type [derived] from
`the composite signal.’” Pet. 64.
`Petitioner and Dr. Castleman rely on Venbrux’s ID Decode unit as
`me