`571-272-7822
`
`
` Paper 42
` Entered: September 14, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`KOREAN ADVANCED INSTITUTE OF SCIENCE AND
`TECHNOLOGY, KOREAN BROADCASTING SYSTEM, and
`HEVC ADVANCE LLC,
`Patent Owner.
`____________
`
`IPR2019-00725
`Patent 9,838,720 B2
`____________
`
`
`Before DENISE M. POTHIER, TREVOR M. JEFFERSON, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`POTHIER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`
`I. INTRODUCTION
`
`A. Background and Summary
`
`Unified Patents, LLC (“Petitioner”) filed a Corrected Petition1 (Paper
`
`10, “Pet.”) requesting institution of an inter partes review of claims 1–6
`
`(“the challenged claims”) of U.S. Patent No. 9,838,720 B2 (Ex. 1001, “the
`
`’720 patent”). Korean Advanced Institute of Science and Technology,
`
`Korean Broadcasting System, and HEVC Advance LLC (collectively
`
`“Patent Owner”) filed a Preliminary Response. We granted Petitioner’s
`
`request for additional briefing to address the issues of whether a document is
`
`a printed publication (Issue 1) and whether the claims of the ’720 patent are
`
`entitled to a particular priority date (Issue 2) and to submit related
`
`declarations. Paper 11, 1. The parties submitted additional briefing and
`
`testimonial evidence. Papers 12, 14; Ex. 1044. Subsequently, we instituted
`
`inter partes review of the challenged claims. Paper 15 (“Dec. Inst.”).
`
`Patent Owner requested rehearing of the Decision to Institute. Paper
`
`18 (“Req. Reh’g”). We denied the request. Paper 20 (“Reh’g Dec.”).
`
`Following institution, Patent Owner filed a Response (Paper 21, “PO
`
`Resp.”), Petitioner filed a Reply (Paper 25, “Reply”), and Patent Owner filed
`
`a Sur-Reply (Paper 30,“Sur-reply”). A hearing was held on June 15, 2020,
`
`and a transcript of the hearing has been made part of the record. Paper 41.
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`
`1 We granted Petitioner’s Unopposed Motion Seeking to Correct Clerical
`Mistake in Petition and ordered Petitioner to submit a Corrected Petition.
`Paper 9, 4.
`
`
`
`2
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`
`
`For the reasons discussed below, we conclude that Petitioner has
`
`shown by a preponderance of the evidence that claims 1–6 of the ’720 patent
`
`are unpatentable.
`
`B. Related Matters
`
`Patent Owner indicates U.S. Application No. 16/572,704 “is currently
`
`pending before the Patent Office and shares a claim of priority with the ’720
`
`patent to U.S. Patent Application No. 13/202,906” (“the ’906 application”),
`
`which issued into U.S. Patent 9,485,512 B2 (“the ’512 patent”). Paper 37, 1;
`
`Ex. 1006, codes (10), (21).
`
`The parties indicate that they are unaware of any other, related matter
`
`involving the ’720 patent. Pet. 1; Paper 4, 2.
`
`C. The ’720 Patent (Ex. 1001)
`
`The ’720 patent issued December 5, 2017, from an application filed
`
`September 7, 2016, and indicates the ’720 patent is a “[c]ontinuation of
`
`application No. 13/202,906, filed as application No. PCT/KR2010/001125
`
`on Feb. 23, 2010, now Pat. No. 9,485,512.” Ex. 1001, code (63); id., codes
`
`(22), (45), 1:10–18; Ex. 1006, codes (10), (21)–(22), (86).
`
`The ’720 patent concerns a video encoding and decoding method that
`
`divides a picture into division blocks and encodes and decodes the division
`
`blocks. Ex. 1001, code (57), 1:23–26. Encoding efficiency can be improved
`
`by encoding and decoding division blocks (or sub-division blocks) using
`
`both inter and intra predictions and encoding a block video signal using
`
`square transforms or non-square transforms based on the division block’s
`
`size. Id. at 1:23–33. These techniques attempt to resolve encoding
`
`efficiency, which degrades with high or ultra-high definition video encoding
`
`or when an encoding unit is a super-macroblock (e.g., size of 32x32 or
`
`
`
`3
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`more) “that has the same or greater size than a macroblock” (e.g., size of
`
`16x16). Id. at 2:41–42; id. at 2:4–7, 2:18–49, 5:29–40.
`
`An exemplary super-macroblock, shown below as an NxN unit block
`
`on the far left, is reproduced from the ’720 patent’s Figure 2:
`
`
`
`Id., Fig. 2. The above Figure 2 illustrates a super-macroblock (e.g., NxN
`
`unit block) divided into sub-blocks or division block types (e.g., two
`
`Nx(N/2) blocks, two (N/2)xN blocks, or four (N/2)x(N/2) blocks). Id. at
`
`6:1–8, code (57), Fig. 2. The sub-blocks are encoded using intra or inter
`
`prediction encoding, and the super-macroblock can be encoded so that both
`
`intra and inter prediction encoding modes can be used in the final encoding
`
`mode to increase video encoding efficiency. Id. at 6:1–15, code (57), Fig. 2;
`
`see id. at 6:58–7:34, Fig. 3.
`
`
`
`The ’720 patent further discusses transform encoding “a residual
`
`signal of a super-macroblock having an increased size.” Id. at 6:26–27. For
`
`example, the ’720 patent describes “selectively applying a square transform
`
`kernel having a size of 16x16 or more, which is greater than existing sizes of
`
`
`
`4
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`4x4 and 8x8, or a non-square transform kernel having a size of 16x8, 8x16,
`
`or more for a non-square transform according to a size of a division block.”
`
`Id. at 6:29–34. Equation 2 of the ’720 patent is a possible calculation if a
`
`square transform kernel having a size of 16x16 or more is applied to a super-
`
`macroblock:
`
`Y=AX
`
`where X denotes an NxN input video signal matrix, A denotes an NxN
`
`square transform kernel matrix, and Y denotes a transform coefficient
`
`matrix. Id. at 6:35–41. Equation 3 of the ’720 patent includes a possible
`
`calculation for a non-square sub-block:
`
`Y=A1XA2
`
`where X denotes an Mx(M/2) input video signal matrix, A1 denotes an MxM
`
`square transform kernel matrix, A2 denotes an (M/2)x(M/2) transform kernel
`
`matrix, and Y denotes a transform coefficient matrix. Id. at 6:41–49.
`
`D. The Challenged Claims
`
`The ’720 patent has six claims. Id. at 9:5–10:58. Petitioner
`
`challenges all six claims. Independent claim 1 is reproduced below.
`
`1. A method of video decoding, comprising:
`[a] dividing a decoding unit block within a current slice
`into four first sub-decoding-unit-blocks;
`[b] dividing at least one first sub-decoding-unit-block
`among the four first sub-decoding-unit-blocks into four second
`sub-decoding-unit-blocks,
`[c] wherein each of the second sub-decoding-unit-blocks
`is a basis of a prediction mode, and
`[d] wherein the prediction mode for each of the second
`sub-decoding-unit-blocks is intra prediction mode or inter
`prediction mode;
`[e] transforming at least one second sub-decoding-unit-
`block among the four second sub-decoding-unit-blocks using a
`
`
`
`5
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`
`first transform kernel and a second transform kernel having a
`different size from the first transform kernel; and
`[f] performing prediction on the at least one second sub-
`decoding-unit-block according to the prediction mode for the at
`least one second sub-decoding-unit-block,
`[g] wherein the decoding unit block comprises the at least
`one second sub-decoding-unit-block divided into the first
`transform kernel, and the second transform kernel,
`[h] wherein the decoding unit block comprises at least one
`divided first sub-decoding-unit-block, divided into the four
`second sub-decoding-unit-blocks, and at least one undivided first
`sub-decoding-unit-block not divided into the four second sub-
`decoding-unit-blocks,
`[i] wherein the undivided first sub-decoding-unit-block is
`a basis of a prediction mode,
`[j] wherein the prediction mode for the undivided first
`subdecoding-unit-block is intra prediction mode or inter
`prediction mode,
`further comprises
`transforming
`the
`[k] wherein
`transforming the at least one undivided first sub-decoding-unit-
`block using a third transform kernel and a fourth transform
`kernel having a different size from the third transform
`kernel,
`[l] wherein the performing prediction further comprises
`performing prediction on the at least one undivided first
`sub-decoding-unit-block according to the prediction mode for
`the at least one undivided first sub-decoding-unit-block,
`[m] wherein the decoding unit block comprises the at least
`one undivided first sub-decoding-unit-block divided into the
`third transform kernel, and the fourth transform kernel, and
`[n] wherein the decoding unit block is a square block and
`the at least one first sub-decoding-unit-block is a square block.
`
`Id. at 9:5–53 (bracketed lettering added).
`
`Claims 2–5 depend from claim 1. Independent claim 6 recites “[a]
`
`method of video encoding” and has limitations similar to claim 1. Id. at
`
`10:13–58; Prelim. Resp. 27 (stating claim 6 “recites the features consistent
`
`with claim 1”).
`
`
`
`6
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`
`E. Prior Art and Asserted Grounds
`
`Petitioner asserted the following grounds of unpatentability in the
`
`Petition and, pursuant to 35 U.S.C. § 314(a), on September 16, 2019, we
`
`instituted inter partes review on these grounds:
`
`Claims Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1–6
`1–6
`1–6
`1–6
`
`102(a)(1), (2)2
`103
`102(a)(1)
`103
`
`Winken3
`Winken, Kim4
`JCTVC-R10135
`JCTVC-R1013, Kim
`
`
`
`Pet. 4; Dec. Inst. 7.
`
`
`
`Petitioner provides a Declaration of Michael Orchard, Ph.D.
`
`(Ex. 1002) and a Second Declaration of Michael Orchard, Ph.D. (Ex. 1053).
`
`
`
`Patent Owner provides a Declaration of Dr. Clifford Reader
`
`(Ex. 2001) and a Second Declaration of Dr. Clifford Reader (Ex. 2028).
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Changes to §§ 102
`and 103 apply to applications filed on or after March 16, 2013. We refer to
`the amended versions of §§ 102 and 103 (AIA) in this decision because, as
`explained later, the claims of this patent are entitled to a filing date no earlier
`than September 7, 2016.
`3 Winken, U.S. Publication No. 2013/0034171 A1, published February 7,
`2013 (Ex. 1004, “Winken”).
`4 Kim, U.S. Publication 2012/0128070 A1, published May 24, 2012
`(Ex. 1010, “Kim”).
`5 Jill Boyce et al., Draft high efficiency video coding (HEVC) version 2,
`combined format range extensions (RExt), scalability (SHVC), and multi-
`view (MV-HEVC) extensions, 18th Meeting Joint Collaborative Team on
`Video Coding 1–535 (June 30–July 9, 2014) (Ex. 1005, “JCTVC-R1013”).
`
`
`
`7
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`
`F. Real Parties in Interest
`
`Petitioner identifies Unified Patents, LLC as the real party in interest.
`
`Paper 23, 2. Patent Owner identifies Korea Advanced Institute of Science
`
`and Technology, Korean Broadcasting System, and HEVC Advance LLC as
`
`the real parties in interest. Paper 40, 1.
`
`II. ANALYSIS
`
`A. Legal Standards
`
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`
`discloses each and every element of the claimed invention, either explicitly
`
`or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
`
`1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
`
`(Fed. Cir. 1999) (“To anticipate a claim, a prior art reference must disclose
`
`every limitation of the claimed invention . . . ;” any limitation not explicitly
`
`taught must be inherently taught and would be so understood by a person
`
`experienced in the field.); In re Baxter Travenol Labs., 952 F.2d 388, 390
`
`(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
`
`would reasonably understand or infer” that a reference teaches or discloses
`
`all of the elements of the claimed invention).
`
`A patent claim is unpatentable under 35 U.S.C. § 103 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 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;
`
`
`
`8
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`
`(1966). “To satisfy its burden of proving obviousness, a petitioner cannot
`
`employ mere conclusory statements. The petitioner must instead articulate
`
`specific reasoning, based on evidence of record, to support the legal of
`
`obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
`
`(Fed. Cir. 2016).
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner asserts that
`
`A person of ordinary skill in the art at the time of the filing [of]
`the ’720 Patent . . . would have had at least a Bachelor’s degree
`in Computer Science, Computer Engineering, or Electrical
`Engineering, and two to three years of experience in digital
`video encoding and/or decoding . . . More work experience
`could substitute for education, and vice versa.
`
`Pet. 16 (citing Ex. 1002 ¶¶ 99–104). Patent Owner provides testimonial
`
`evidence similarly indicating “one of ordinary skill in the art in the field of
`
`video compression . . . would have had a bachelor’s degree in electrical
`
`engineering or computer science, or an equivalent degree, and two to three
`
`years of experience in the field of video compression.” Ex. 2001 ¶ 74. We
`
`determine that the level of ordinary skill proposed by Petitioner is consistent
`
`with the ’720 patent and the asserted prior art.
`
`Dr. Orchard has a Ph.D. in Electrical Engineering. Ex. 1002 ¶ 6. He
`
`(1) is a professor of Electrical and Computer Engineering, teaching classes
`
`in digital signal processing and image processing, (2) has researched in the
`
`fields of image and video compression algorithms and image rendering and
`
`applications, and (3) has supervised Ph.D. students on various image and
`
`
`
`9
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`video processing topics. Id. ¶¶ 6, 8–9, 13. He has served in various
`
`capacities for IEEE Transactions on Image Processing, OSA’s Digital Image
`
`Processing and Analysis Conference, and the IEEE International Conference
`
`on Image Processing. Id. ¶¶ 12–13. He has also consulted in the fields of
`
`image and video processing at various companies. Id. ¶¶ 8, 10, 13. Dr.
`
`Orchard’s qualifications are sufficient as a person of skill in the art for
`
`purposes of this proceeding under either Petitioner’s or Patent Owner’s
`
`proposed level of ordinary skill level.
`
`Dr. Reader has a Doctoral degree, where he presented a thesis on
`
`“Orthogonal Transform Coding of Still and Moving Pictures.” Ex. 2001 ¶ 6.
`
`He has performed research in video compression, including adaptive block
`
`transform coding, and presented a thesis was on “Orthogonal Transform
`
`Coding of Still and Moving Pictures.” Id. He has various industry
`
`experience in digital imaging (id. ¶¶ 7–9, 13–14) and has been involved with
`
`developing MPEG standards (e.g., MPEG-1, MPEG2, MPEG-4, H.263, and
`
`H.264) (id. ¶¶ 10–16). He also consults in areas of imaging and video,
`
`including image and video compression and imaging. Id. ¶ 17. Dr. Reader’s
`
`qualifications are sufficient as a person of skill in the art for purposes of this
`
`proceeding under either Petitioner’s or Patent Owner’s proposed level of
`
`ordinary skill level.
`
`C. Claim Construction
`
`On October 11, 2018, the Office revised its rules to harmonize the
`
`Board’s claim construction standard with that used in federal district court
`
`cases under 35 U.S.C. § 282(b). See Changes to the Claim Construction
`
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`
`and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (amending 37 C.F.R.
`
`
`
`10
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`§ 42.100(b) for petitions filed on or after November 13, 2018) (now codified
`
`at 37 C.F.R. § 42.100(b) (2019)). The instant Petition was filed on February
`
`28, 2019 (Paper 3, 1), and, therefore, the revised district-court type claim
`
`construction standard applies to this proceeding. Id.; see Pet. 16 (stating “no
`
`explicit construction (beyond plain and ordinary meaning under the Phillips
`
`standard) is required”).
`
`Accordingly, we apply the principles set forth in Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). Under that
`
`standard, the words of a claim are generally given their “ordinary and
`
`customary meaning,” which is the meaning the term would have to a person
`
`of ordinary skill at the time of the invention, in the context of the entire
`
`patent including the specification. See Phillips, 415 F.3d at 1312–13; see id.
`
`at 1315 (stating “claims ‘must be read in view of the specification, of which
`
`they are a part.’”) (quoting Markman v. Westview Instruments, Inc., 52 F.3d
`
`967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996)). “In determining the
`
`meaning of [a] disputed claim limitation, we look principally to the intrinsic
`
`evidence of record, examining the claim language itself, the written
`
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`
`(citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant
`
`than the intrinsic record in determining ‘the legally operative meaning of
`
`claim language.’” Phillips, 415 F.3d at 1317. Only those terms in
`
`controversy need to be construed, and only to the extent necessary to resolve
`
`the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999).
`
`
`
`11
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`
`Also, a “court does not interpret claim terms in a vacuum, devoid of
`
`the context of the claim as a whole.” Kyocera Wireless Corp. v. Int'l Trade
`
`Comm'n, 545 F.3d 1340, 1347 (Fed. Cir. 2008) (citing Hockerson–
`
`Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999);
`
`ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).
`
`Instead, a “proper claim construction . . . demands interpretation of the entire
`
`claim in context, not a single element in isolation.” Hockerson–
`
`Halberstadt, 183 F.3d at 1374; see also ACTV, 346 F.3d at 1088 (stating
`
`“[w]hile certain terms may be at the center of the claim construction debate,
`
`the context of the surrounding words of the claim also must be considered
`
`. . . .”).
`
`As we explained in the Decision to Institute, Petitioner contends that
`
`each claim term should be given its plain and ordinary meaning in this
`
`proceeding and that “no explicit construction (beyond plain and ordinary
`
`meaning under the Phillips standard) is required.” Dec. Inst. 25 (quoting
`
`Pet. 16). Patent Owner, on the other hand, proposed construing these
`
`phrases found in the challenged claims: “a basis of a prediction mode,”
`
`“divided into,” and “a different size.” Prelim. Resp. 19–25. We
`
`preliminarily construed each of those terms in the Decision to Institute,
`
`based on the record then before us. Dec. Inst. 26–29. Patent Owner made
`
`additional arguments on the construction of these terms and additionally
`
`proposes construing additional limitations found in the challenged claims,
`
`including “dividing a decoding unit block within a current slice into four
`
`first sub-decoding-unit-blocks” in step [a], “the at least one first sub-
`
`decoding-unit-block is a square block” in step [n], the “at least one
`
`undivided first sub-decoding-unit-block” in steps [h]–[m], and “dividing at
`
`
`
`12
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`least one first sub-decoding-unit-block . . . into four second sub-decoding-
`
`unit-block” in step [b]. PO Resp. 15–27. Petitioner responds to Patent
`
`Owner’s arguments in its Reply; Patent Owner further responds in its Sur-
`
`reply. Reply 11–22; Sur-reply 20–25. Below we address claim construction
`
`issues to the extent required to resolve the issues before us.
`
`1. “dividing a decoding unit block within a current slice into four
`first sub-decoding-unit-blocks” in step [a], “dividing at least one first sub-
`decoding-unit-block . . . into four second sub-decoding-unit-blocks” in step
`[b], the “at least one undivided first sub-decoding-unit-block” or “the
`undivided first sub-decoding-unit-block” in steps [h]–[m], and “the at least
`one first sub-decoding-unit-block is a square block” in step [n]
`
`We consider the above limitations in the context of claim 1 as whole
`
`and further construe these steps of claim 1 in the context of the Specification
`
`of the ’720 patent and any relevant prosecution history.6
`
`
`
`Claim 1 recites in pertinent part:
`
`A method of video decoding comprising:
`
`[a] dividing a decoding unit block within a current slice
`into four first sub-decoding-unit-blocks;
`[b] dividing at least one first sub-decoding-unit-block
`among the four first sub-decoding-unit-blocks into four second
`sub-decoding-unit-blocks,
`[c] wherein each of the second sub-decoding-unit-blocks
`is a basis of a prediction mode,
`. . .
`[e] transforming at least one second sub-decoding-unit-block
`among the four second sub-decoding-unit-blocks using a first
`transform kernel and a second transform kernel having a different size
`from the first transform kernel
`. . .
`
`
`6 This discussion applies equally to independent claim 6, addressing “[a]
`method of video encoding” comprising similar recitations to claim 1. See
`Ex. 1001, 10:13–58.
`
`
`
`13
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`
`[h] wherein the decoding unit block comprises at least one
`divided first sub-decoding-unit-block, divided into the four
`second sub-decoding-unit-blocks, and at least one undivided first
`sub-decoding-unit-block not divided into the four second sub-
`decoding-unit-blocks,
`[i] wherein the undivided first sub-decoding-unit-block is
`a basis of a prediction mode,
`. . .
`[k] wherein the transforming further comprises transforming the
`at least one undivided first sub-decoding-unit-block using a third
`transform kernel and a fourth transform kernel having a different size
`from the third transform kernel,
`. . .
`[n] wherein the decoding unit block is a square block and
`the at least one first sub-decoding-unit-block is a square block.
`
`Ex. 1001, 9:5–12, 16–19, 27–33, 37–41, 51–53.
`
`Parties’ General Contentions
`
`Patent Owner proposes its interpretation of how claim 1’s steps [a],
`
`[b], [h], and [n] should be construed. PO Resp. 15–19; Sur-reply 20–22. In
`
`particular, Patent Owner argues:
`
`Claim 1 recites step n, “the at least one first sub-decoding-unit-
`block is a square block.” (Ex. 1001, 9:51-53). The phrase “at
`least one first sub-decoding-unit-block” appears first in step b,
`“dividing at least one first sub-decoding-unit-block among
`the four first sub-decoding-unit-blocks into four second sub-
`decoding-unit-blocks.” (Bold added). Accordingly, “the at
`least one first sub-decoding-unit-block” in step n does not refer
`to the “at least one undivided first sub-decoding-unit-block” in
`steps h, i, j, k, l and m; rather, it refers to the “at least one
`divided first sub-decoding-unit-block,” which is referenced in
`steps b and h.
`
`PO Resp. 17.
`
`“[F]ollowing its plain and ordinary meaning, Patent Owners propose
`
`that step a be construed to mean simply dividing a decoding unit block into
`
`
`
`14
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`four first sub-decoding-unit-blocks” and an additional requirement should
`
`not be read into step [a] “specifying that each first sub-decoding-unit-block
`
`is either a square or non-square block.” Id. at 15.
`
`
`
`In the Sur-reply, Patent Owner additionally states “[t]he claim
`
`language speaks for itself. As shown in Patent Owner’s color annotated
`
`chart below, claim 1’s steps b, h and n, taken together, state that ‘at least one
`
`first sub-decoding-unit-block’ [in step [b]] means at least one ‘divided’ first
`
`sub-decoding-unit-block [in step [h]].” Sur-reply 20; see id. at 22 (stating
`
`“the antecedent basis of the claim language points to the ‘divided’ first sub-
`
`decoding-unit-block”). The described “chart” (id. at 20–21) is reproduced
`
`below:
`
`
`
`Chart Containing Language (Annotated by Patent Owner with Color,
`Bolding, and Highlighting) Found in Claim 1’s Steps [n], [b], and [h]
`
`Id. at 21. The above chart reproduces portions of steps [n], [b], and [h], and
`
`includes bolding, colors, and highlighting added by Patent Owner to various
`
`language related to the “at least one first sub-decoding-unit-block” and
`
`“second sub-decoding-unit-blocks” language in claim 1. Patent Owner
`
`
`
`15
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`argues “[t]he phrases in step b serve as antecedent basis for the phrases in
`
`step h and step n (see in red).” Id. at 20.
`
`
`
`Petitioner argues that the Board’s conclusion that the “sub-decoding-
`
`unit-blocks” in claim 1 are square is correct. Reply 15–17; see id. at 20
`
`(stating “a POSITA[7] would have understood this to necessitate that all of
`
`the recited ‘first sub-decoding-unit-block’ are square”). Petitioner asserts,
`
`when construing steps [b] and [h], that Patent Owner ignores steps [i]–[m],
`
`which “support the Board’s conclusion.” Id. at 16. Petitioner further argues
`
`that “nothing in [] claim [1 step [n]’s] language suggests that the step is only
`
`directed to the ‘divided’ first sub-decoding-unit-block, as Patent Owner
`
`alleges.” Id. Petitioner contends the terms “divided” and “undivided” first
`
`sub-decoding-unit-blocks are introduced in step [h]. Id. at 16–17 (citing Ex.
`
`1001, 9:8–10, 26–30). Petitioner further argues that steps [i]–[m] are
`
`directed to the “undivided” first sub-decoding-unit-block, and the “divided”
`
`first sub-decoding-unit-block in step [h] “is never mentioned again by any of
`
`the claims.” Id. at 17 (citing Ex. 1001, 9:31–50). Petitioner further argues
`
`that, even if step [n], “must be construed to apply to only one type of first
`
`sub-decoding-unit-block (i.e., divided or undivided), nothing in the claim
`
`language suggests” that this step would only apply to “‘divided’ first
`
`sub-decoding-unit-blocks.” Id.
`
`
`
`In the Sur-reply, Patent Owner additionally argues “method claim
`
`steps in a patent are presumed not to require a specific order.” Sur-reply 21;
`
`id. at 21 n.8 (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256
`
`F.3d 1323, 1342 (Fed. Cir. 2001)).
`
`
`7 A Person of Ordinary Skill In The Art.
`
`
`
`16
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`
`
`Based on the parties’ respective positions outlined above, we consider
`
`whether all “four first sub-decoding-unit-blocks” and “four second-sub-
`
`decoding-unit-blocks” recited in claim 1 are square.
`
`We agree with Patent Owner that “not every process claim is limited
`
`to the performance of its steps in the order written.” See Loral Fairchild
`
`Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999). Thus, just
`
`because step [n] follows from steps [i]–[m], which recite limitations related
`
`to “the undivided first sub-decoding-unit-block” (e.g., steps [i]–[j]) or “the at
`
`least one undivided first sub-decoding-unit-block” (e.g., steps [k]–[m])8 (see
`
`Reply 17), this claimed order does not necessarily mean the recited “the at
`
`least one first sub-decoding-unit-block is a square” in step [n] is the same
`
`unit-block in step [k] directed to “the at least one undivided first sub-
`
`decoding-unit-block.” Ex. 1001, 9:32–53. Given this principle, step [h]’s
`
`“at least one undivided first sub-decoding-unit-block” is not necessarily also
`
`step [n]’s “the at least one first sub-decoding-unit-block.” Additionally,
`
`claim 1 recites “dividing at least one first sub-decoding-unit-block among
`
`the four first sub-decoding-unit-blocks” in step [b]. Id., 9:8–10. As such,
`
`we have reconsidered and reject the implication that step [n]’s “the at least
`
`one first sub-decoding-unit-block” is limited to the recited “at least one
`
`undivided first sub-decoding-unit-block” recited in step [h]. See Dec. Inst.
`
`21; see Rh’g Dec. 7–8.
`
`
`8 Claim 1 fails to maintain consistency in its language related to “the
`undivided first sub-decoding-unit-block,” reciting both the “at least one
`undivided first sub-decoding-unit-block” and “the undivided first sub-
`decoding-unit-block.” Ex. 1001, 9:29–50.
`
`
`
`17
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`
`We further disagree with Petitioner that “the at least one first sub-
`
`decoding-unit-block” in step [n], when viewing the claim as a whole (e.g.,
`
`with step [b]), does not specify this unit-block is a divided unit-block. See
`
`Reply 15, 17. That is, when viewing claim 1 as whole, claim 1’s step [h]
`
`indicates that the “at least one divided first sub-decoding-unit-block” is same
`
`as the “at least one first-sub-decoding-unit-block” in step [b] because step
`
`[b] recites “dividing at least one first-sub-decoding-unit-block . . . into four
`
`second sub-decoding-unit-blocks” and step [h] further recites “the decoding
`
`unit block comprises at least one divided first sub-decoding-unit-block,
`
`divided into the four second sub-decoding-unit-blocks.” See Ex. 1001, 9:8–
`
`10, 27–29 (emphases added); see also PO Resp. 17; see also Sur-reply 21.
`
`However, this determination does not end our claim construction
`
`analysis (or resolve the priority issue in dispute), for we must also consider
`
`claim 1 in its entirety in the context of the ’720 patent’s Specification as an
`
`ordinarily skilled artisan would interpret the claim, including other
`
`recitations related to the “at least one undivided first sub-decoding-unit-
`
`block” and the “at least one second sub-decoding-unit-block.” See Phillips,
`
`415 F.3d at 1313.
`
`For example, claim 1 recites in steps [a], [b], [h], and [n], when read
`
`collectively, that “the at least one first-sub-decoding-unit-block” (i.e., steps
`
`[b] and [n]) (1) “is a square block” (i.e., step [n]), resulting from “a decoding
`
`unit block” that is “divid[ed] . . . into four first sub-decoding-unit-blocks”
`
`(i.e., step [a]), and (2) is further “divided . . . into four second sub-decoding-
`
`unit-blocks (i.e., steps [b] and [h]). Ex. 1001, 9:6–10, 27–31, 51–53. Claim
`
`1 further recites in steps [a], [b], and [n] collectively that the “decoding unit
`
`block,” which is divided to create each of the “four first sub-decoding-unit-
`
`
`
`18
`
`
`
`IPR2019-00725
`Patent 9,838,720 B2
`
`blocks” of which the “at least one first sub-decoding-unit-block” (i.e., step
`
`[b] is one of these four “unit-blocks” (i.e., step [a]), “is a square block” (i.e.,
`
`step [n]). Id., 9:6–10, 51–53.
`
`Figure 2 of the ’720 patent reproduced above in Section (I)(C) shows
`
`an example of square unit block (e.g., NxN decoding unit block on the far
`
`left) divided into four first sub-coding-unit-blocks (e.g., N/2xN/2 sub-unit-
`
`blocks on the upper, far right) . Id., Fig. 2. This figure is the only visual
`
`example in the ’720 patent of how to divide “unit-blocks” according to claim
`
`1’s “method of video decoding” (through the “reverse process of the
`
`encoding method”9). In this example, each of the four divided first decoding
`
`unit-blocks is square. Id.
`
`Thus, in the context of the ’720 patent’s Figure 2, an ordinarily skilled
`
`artisan would have understood that each of the recited “four first sub-
`
`decoding-unit-blocks” recited in claim 1’s step [a] is a square block as
`
`Petitioner asserts. See Reply 18 (stating “the specification only discloses a
`
`block being divided into equal parts (e.g., four equal squares or two equal
`
`rectangles), as illustrated below. See, e.g., Fig. 1-2.”); see id. at 19
`
`(reproducing Ex. 1001, Fig. 2)). This is because claim 1’s step [n] requires
`
`both “the decoding unit block is a square block” (e.g., NxN block in Figure
`
`2), and “