Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: December 3, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`UNIFIED PATENTS INC.,
`Petitioners,
`v.
`DYNAMIC DATA TECHNOLOGIES, LLC,
`Patent Owner.
`__________
`IPR2019-01085
`Patent 8,135,073 B2
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`BEAMER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 12
`Date: December 3, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`UNIFIED PATENTS INC.,
`Petitioners,
`v.
`DYNAMIC DATA TECHNOLOGIES, LLC,
`Patent Owner.
`__________
`IPR2019-01085
`Patent 8,135,073 B2
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`BEAMER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2019-01085
`Patent 8,135,073 B2
`
`INTRODUCTION
`I.
`On May 22, 2019, Unified Patents Inc. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter
`partes review of claims 1–4, 6–8, 14, 16, and 18–21 of U.S. Patent No.
`8,135,073 B2 (“Shen ’073”). On September 9, 2019, Dynamic Data
`Technologies, LLC (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). Pursuant to our authorization (Paper 9), on October 9,
`2019, Petitioner filed a Reply To Patent Owner’s Preliminary Response.
`Paper 10 (“Reply”). On October 16, 2019, Patent Owner filed a Sur-Reply
`To Petitioner’s Reply. Paper 11 (“Sur-Reply”).
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition and the
`Preliminary Response shows “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least [one] of the claims
`challenged in the petition.” Applying that standard, we deny the Petition
`and do not institute an inter partes review.
`
`II. BACKGROUND
`A. The Shen ’073 Patent
`Shen ’073, titled “Enhancing Video Images Depending On Prior
`Image Enhancements,” was filed June 7, 2005, claiming priority to a PCT
`application filed on December 12, 2003, and a provisional application filed
`on December 20, 2002, and issued March 13, 2012. Ex. 1001, codes (54),
`(86), (22), (87), (45). The patent describes decoding a first video frame,
`enhancing the first frame using a re-mapping strategy determined using a
`region-based analysis of the frame, decoding a second frame using motion
`
`2
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`IPR2019-01085
`Patent 8,135,073 B2
`vectors indicating differences in positions between regions of the second
`frame and corresponding regions of the first frame, and enhancing the
`second frame using the re-mapping strategy determined from the first frame.
`Id. at Title, codes (54), (57).
`For example, the video frames can be encoded and decoded in accord
`with the prior art MPEG II standard, where the first frame is an MPEG
`“intra-coded frame (I-frame),” the second frame is an MPEG “predicted
`frame (P-frame),” or “bi-directional frame (B-frame),” and the motion
`vectors are generated and applied according to the motion prediction and
`estimation scheme of the MPEG standard. Id. at 2:20–29, 44–51; Ex. 2019,
`99–118. Shen ’073 further explains that the procedure for enhancing
`decoded video frames using a re-mapping strategy, such as adjusting the
`contrast of the picture, was also well-known: “Methods of determining re-
`mapping strategies for regions of decoded frames using such analysis are
`well known, and those skilled in the art are directed to U.S. Pat. No.
`6,259,472 and U.S. Pat. No. 5,862,254 which disclose such re-mapping of
`intensity values.”1 Ex. 1001, 2:37–42.
`Shen ’073 explains the advantage of enhancing the second frame by
`using the re-mapping strategy of the first frame: “The reuse of the video
`enhancing re-mapping strategy of previous frames for subsequent frames
`greatly reduces the processing required for providing video enhancements.”
`Id. at 1:43–45.
`
`
`1 Shen ’073 incorporates by reference, in their entirety, the 6,259,472 and
`5,862,254 patents. Ex. 1001, 1:16–19.
`
`3
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`IPR2019-01085
`Patent 8,135,073 B2
`
`B. Illustrative Claim
`Challenged independent claim 1 is reproduced below.
`1. A method, comprising:
`receiving, at a decoder, a video stream containing encoded
`frame based video information including an encoded first
`frame and an encoded second frame, the encoding of the
`second frame depends on the encoding of the first frame,
`the encoding of the second frame includes motion vectors
`indicating differences in positions between regions of the
`second frame and corresponding regions of the first
`frame, the motion vectors define the correspondence
`between regions of the second frame and corresponding
`regions of the first frame; and
`via the decoder:
`decoding the first frame;
`determining a re-mapping strategy for video
`enhancement of the decoded first frame
`using a region-based analysis;
`re-mapping regions of the decoded first frame
`according to the determined video
`enhancement re-mapping strategy for the
`first frame so as to enhance the first frame;
`recovering from the video stream, the motion
`vectors for the second frame;
`decoding the second frame; and
`re-mapping regions of the second frame that
`correspond to regions of the first frame
`using the video enhancing re-mapping
`strategy for the first frame so as to enhance
`the second frame.
`Ex. 1001, 6:57–7:17.
`
`4
`
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`IPR2019-01085
`Patent 8,135,073 B2
`
`C. References
`Petitioner relies on the following references (Pet. 7):
`• Yang et al., U.S. Patent No. 6,873,657 B2, issued March 29, 2005,
`Ex. 1004 (“Yang ’657”).
`• Paik et al., U.S. Patent No. 6,163,621, issued December 19, 2000,
`Ex. 1005 (“Paik ’621”).
`• Liu et al., U.S. Patent No. 5,809,173, issued September 15, 1998,
`Ex. 1006 (“Liu ’173”).
`• Kawamura et al., U.S. Patent No. 6,078,693, issued June 20, 2000,
`Ex. 1007 (“Kawamura ’693”).
`Petitioner also relies on the declaration of Dr. Immanuel Freedman.
`Ex. 1003.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–4, 6–8, 14, 16, and 18–21 would have
`been unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`1–4, 14, 18, and 20
`103(a)2
`6–8, 16, and 21
`103(a)
`19
`103(a)
`
`
`Reference(s)/Basis
`Yang ’657, Paik ’621
`Yang ’657, Paik ’621, Liu ’173
`Yang ’657, Paik ’621,
`Kawamura ’693
`
`E. Real Parties in Interest
`The parties identify themselves as the real parties in interest. Pet. 60;
`Paper 4, 1.
`
`
`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. Because the
`’073 patent has an effective filing date prior to the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of §§ 102 and
`103.
`
`5
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`IPR2019-01085
`Patent 8,135,073 B2
`
`F. Related Matters
`The parties state that the following pending patent infringement
`lawsuits are related matters. Pet. 60–61; Paper 4, 1–2.
`Dynamic Data Technologies, LLC v. Advanced Micro Devices,
`Inc., Case No. 1:18-cv-01715 (D. Del.).
`Dynamic Data Technologies, LLC v. HTC Corp., Case No.
`1:18-cv-10180 (S.D.N.Y.).
`Dynamic Data Technologies, LLC v. NVIDIA Corp., Case No.
`1:18-cv-01726 (D. Del.).
`Dynamic Data Technologies, LLC v. Amazon.com, Inc., Case
`No. 2:18-cv-00461 (E.D. Tex.).
`Dynamic Data Technologies, LLC v. Samsung Electronics Co.,
`Case No. 2:18-cv-00459 (E.D. Tex.).
`Dynamic Data Technologies, LLC v. Google LLC, Case No.
`2:18-cv-00466 (E.D. Tex.).
`Dynamic Data Technologies, LLC v. Apple Inc.,
`Case No. 2:18-cv-00464 (E.D. Tex.).
`Dynamic Data Technologies, LLC v. Microsoft Corp., Case No.
`2:18-cv-00469 (E.D. Tex.).
`Dynamic Data Technologies, LLC v. LG Electronics Inc., Case
`No. 2:18-cv-00468 (E.D. Tex.).
`Dynamic Data Technologies, LLC v. Qualcomm Inc., Case No.
`2:18-cv-00470 (E.D. Tex.).
`Dynamic Data Technologies, LLC v. Dell Inc., Case No. 1:18-
`cv-10454 (S.D.N.Y.).
`Dynamic Data Technologies, LLC v. MediaTek, Inc., Case No.
`1:18-cv-01906 (D. Del.).
`Dynamic Data Technologies, LLC v. Intel Corp., Case No.
`1:18-cv-01977 (D. Del.).
`III. ANALYSIS
`The primary reference relied on by Petitioner is Yang ’657. Pet. 7,
`Ex. 1004. Patent Owner asserts that Pre-AIA 35 U.S.C. § 103(c)(1)
`
`6
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`
`IPR2019-01085
`Patent 8,135,073 B2
`disqualifies the use of Yang ’657 in Petitioner’s obviousness challenges.
`Prelim. Resp. 1. If so, then Petitioner would not be able to demonstrate a
`reasonable likelihood that that it would prevail with respect to at least one of
`the claims challenged in the Petition, because each of Petitioner’s grounds
`challenging the claims substantially relies on the disclosures of Yang ’657.
`Pet. 9–55; Prelim. Resp. 36. As discussed below, we find that Petitioner
`does not demonstrate a reasonable likelihood of prevailing in showing that
`Yang ’657 qualifies as a prior art reference.
`Pre-AIA Section 103(c)(1) provides:
`Subject matter developed by another person, which qualifies as
`prior art only under one or more of subsections (e), (f), and (g)
`of section 102 of this title, shall not preclude patentability under
`this section where the subject matter and the claimed invention
`were, at the time the claimed invention was made, owned by the
`same person or subject to an obligation of assignment to the
`same person.
`35 U.S.C. § 103(c)(1). Yang ’657 was filed on December 27, 2001.
`Ex. 1004, code (22). Petitioner is only offering Yang ’657 as prior art
`pursuant to Section 102(e). Pet. 55. The parties are treating “the time the
`claimed invention was made” for Shen ’073 as December 20, 2002, the
`filing date of the provisional application referenced in the issued patent.
`Pet. 5 n.1; Prelim. Resp. 13–14; Ex. 1001, code (60). As of that date, Yang
`’657 was assigned to Koninklijke Philips Electronics N.V. (“Philips”).
`Prelim. Resp. 19; Ex. 2002, 2.
`The earliest assignment on record for Shen ’073 was signed February
`26, 2004, recorded June 7, 2005, with Philips as assignee. Ex. 2006.
`Therefore, the pertinent issue at hand is whether Shen ’073 was subject to an
`
`7
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`
`IPR2019-01085
`Patent 8,135,073 B2
`obligation of assignment to Philips as of December 20, 2002.3 In asserting
`that Mr. Shen had an obligation to assign the invention to Philips (or a
`related entity) on December 20, 2002, Patent Owner relies in part on the
`inventor’s declaration to that effect, submitted in this proceeding by Patent
`Owner:
`
`I assigned the rights to the inventions and patent
`application to ’073 Patent to Philips because I understood that
`the terms of my employment for Philips required me to do so. I
`always understood that I had an obligation to assign the rights
`to inventions that I created within the scope of my employment
`with Philips, on company time, or using company resources, to
`Philips.
`Ex. 2004 ¶ 14.4 Patent Owner relies on additional facts that, it argues,
`further evidence such obligation, including:
`(i) Philips is identified as applicant in the nonprovisional 35 U.S.C.
`§ 371 application, and as the filing party for the original provisional
`application, which applications led to issuance of Shen ’073.5 Prelim. Resp.
`6; Ex. 1002, 316; Ex. 2009, 2.
`(ii) The application and prosecution of Shen ’073 was handled by
`Philips’ attorneys at Philips’ expense (until Philips assigned the patent to
`NXP in 2007), and all correspondence with the Patent Office prior to
`
`3 As Patent Owner points out, ownership by, or obligation of assignment to,
`an entity sufficiently related to Philips also satisfies the requirements of
`Section 103(c). Prelim. Resp. 15–16, 31–33. The record establishes that the
`various Philips entities involved here are properly considered the “same
`person.” Ex. 2013, 2, 24, 42.
`4 The inventor commenced employment at Philips in August 1989. Ex. 2004
`¶ 6.
`5 A declaration by Philips in the underlying International Application
`File states, “[Philips] is entitled to apply for and be granted a patent by virtue
`of . . . [it being] employer of the inventor. . . .” Prelim. Resp. 7; Ex. 2003.
`
`8
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`IPR2019-01085
`Patent 8,135,073 B2
`transfer to NXP was through Philips and its attorneys. Prelim. Resp. 7, 21–
`22; Ex. 1002, 292, 295, 321–324, 329–330; Ex. 2004 ¶¶ 6–12, 15;
`Ex. 2017, 3.
`(iii) Documents evidencing the importance Philips accorded
`conducting research and preserving rights to resulting inventions. Prelim.
`Resp. 4–5; Ex. 2001.
`(iv) Other assignments executed by the inventor, and Philips’
`documented history and practice of requiring and obtaining patent
`assignments. Prelim. Resp. 22–25; Sur-Reply 7; Exs. 2007, 2008, 2011,
`2012, 2016, 2021.
`Petitioner argues that, because Patent Owner has not provided an
`employment agreement executed by Shen explicitly establishing an
`obligation of assignment to Philips as of December 20, 2002, it has not
`shown that the inventor had signed an employment agreement or otherwise
`entered into a legal obligation to assign Shen ’073 to Philips. Reply 3.
`Petitioner argues that Patent Owner’s understanding that he had an
`obligation to assign his invention is merely a “feeling” on the inventor’s part
`and is insufficient. Id. Petitioner points out that a “moral or unenforceable
`obligation would not evidence common ownership” as required to invoke
`the common ownership exclusion under § 103(c). Id. (citing MPEP
`§ 706.02(l)(2)).
`Petitioner bears the burden, at the institution stage, of demonstrating a
`reasonable likelihood that a claim is unpatentable, and thus a reasonable
`likelihood that it will be able to establish at trial by a preponderance of the
`evidence that Yang ’657 is not disqualified under 35 U.S.C. § 103(c). See
`35 U.S.C. § 314(a); Global Tel*Link Corp. v. Securus Techs., Inc., IPR2014-
`00824, Paper 36 at 10–11, 23 (PTAB Dec. 2, 2015); Dynamic Drinkware,
`
`9
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`IPR2019-01085
`Patent 8,135,073 B2
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). That
`burden never shifts to Patent Owner. Dynamic Drinkware, 800 F.3d at
`1378. A second and distinct burden, the burden of production, or the burden
`of going forward with evidence, is a shifting burden, the allocation of which
`depends on where in the process of trial the issue arises. Dynamic
`Drinkware, 800 F.3d at 1379. The burden of production may entail
`“producing additional evidence and presenting persuasive argument based
`on new evidence or evidence already of record.” Id.
`Applying this burden shifting process to the case at hand, Petitioner
`has come forward with proposed Section 102(e) art, and Patent Owner then
`had the burden of coming forward with evidence that the art (in this case,
`Yang ’657) is disqualified as prior art under Section 103(c)(3). As discussed
`above, we are persuaded Patent Owner has met this burden of production of
`evidence, showing disqualification of Yang ’657. At this point, the burden
`of production shifts back to Petitioner to adduce additional evidence and
`argument countering the record presented by Patent Owner, or at least
`demonstrating a reasonable likelihood that it could do so if trial is instituted.
`See Dynamic Drinkware, 800 F.3d at 1380.
`We conclude that Petitioner has not done so. Based on the record, we
`find that Petitioner has not come forward with sufficient additional evidence
`to counter Patent Owner’s evidence that the inventor was under a legal
`obligation to assign the rights to his invention as of the critical date — the
`December 20, 2002 filing date of the provisional application. Patent
`Owner’s failure to produce a copy of an employee invention agreement or
`the like is not determinative if sufficient other evidence establishes the
`likelihood of an obligation to assign. See ARRIS Int’l PLC v. Sony Corp.,
`IPR2016-00828, Paper 10 at 29–30 (PTAB Oct. 7, 2016) (relying on
`
`10
`
`
`
`IPR2019-01085
`Patent 8,135,073 B2
`evidence of actual assignment); U.D. Elec. Corp. v. Pulse Elecs., Inc.,
`IPR2019-00515, Paper 7 at 14 (PTAB Aug. 6, 2019) (relying on evidence of
`actual assignment as recorded in the Office). We agree with Patent Owner
`that publicly available documentation from Philips corroborates the
`inventor’s declaration that he was under an obligation to assign the
`inventions disclosed in the ’073 Patent at the time he first invented them.
`Prelim. Resp. 23–25 (citing Exs. 2011, 2012).
`We are not persuaded Petitioner has demonstrated a reasonable
`likelihood of marshaling additional evidence to rebut Patent Owner’s
`evidence of an obligation to assign. Petitioner’s arguments otherwise are
`based on speculation and are undercut by the record showing Philip’s
`continued and intensive involvement in the preparation and prosecution of
`the applications leading to Shen ’073 and its established practice of asserting
`ownership of inventions arising out of its research and development
`activities.
`We are mindful of the fact that, when a patent owner submits
`declaration testimony with its preliminary response, “a genuine issue of
`material fact created by such testimonial evidence will be viewed in the light
`most favorable to the petitioner solely for purposes of deciding whether to
`institute an inter partes review.” 37 C.F.R. § 42.108(c). Even viewed in the
`most favorable light to Petitioner, we recognize that Patent Owner is several
`transactions, and a number of years, removed from the time period when
`Philips owned the rights to the invention, and that this impacts the ability to
`produce any written agreement to assign the invention, and therefore Patent
`Owner’s failure to produce an agreement is not dispositive. Accordingly,
`and giving due weight to Mr. Shen’s testimony, we remain persuaded that
`Petitioner has failed to demonstrate a reasonable likelihood that the inventor
`
`11
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`
`IPR2019-01085
`Patent 8,135,073 B2
`was not obligated to assign the invention to Philips when he made his
`invention.6
`Our determination is further supported by the fact that, in addition to
`arguing there was an explicit obligation to assign the claimed invention,
`Patent Owner also relies on the federal and New York common law rule that
`a person hired to invent is obligated to assign those inventions to his
`employer. Prelim. Resp. 25–29; Sur-Reply 3–6. As stated in United States
`v. Dubilier Condenser Corp., 289 U.S. 178, 187 (1933):
`One employed to make an invention, who succeeds, during his
`term of service, in accomplishing that task, is bound to assign to
`his employer any patent obtained. The reason is that he has only
`produced that which he was employed to invent. His invention
`is the precise subject of the contract of employment.
`Patent Owner submits evidence that Philips was in the business of
`employing people to invent new intellectual property, that Mr. Shen was
`employed as an Associate Member of Research Staff at Philips’ New York
`facility “to research, invent, and develop new video processing technologies,
`including video image enhancement technologies,” that Philips paid Mr.
`Shen a salary for this work, provided him with the necessary facilities and
`equipment, and paid the expenses for preparing and prosecution the
`applications leading to Shen ’073. Ex. 1002, 292, 295, 316, 321–324, 329–
`330; Ex. 2001; Ex. 2004 ¶¶ 6–12, 15–18; Ex. 2009, 2; Ex. 2017, 3;
`Exs. 2007, 2008, 2011, 2012, 2016, 2021.
`
`
`6 Petitioner suggests the inventor’s testimony is biased. Reply 1. This is
`unpersuasive given that the inventor is employed by NVIDIA — a target of
`one of Patent Owner’s patent infringement lawsuits as identified above.
`Ex. 2004 ¶ 1.
`
`12
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`IPR2019-01085
`Patent 8,135,073 B2
`Petitioner argues that there was no implied-in-fact obligation to assign
`because Mr. Shen was a “general employee” rather than an employee hired
`to invent. Reply 5–7. Petitioner points out that Mr. Shen “worked with
`Philips for many years as an engineer working on many different projects as
`evidenced by his other patents,” and that “video processing is a broad field
`of endeavor that is generally focused on reducing the processing required for
`video enhancements.” Reply 6–7. However, the fact that Mr. Shen was
`hired to invent multiple inventions during an ongoing program of research
`and development does not negate the conclusion that there was an
`implied-in-fact obligation to assign Shen ’073. Mr. Shen “was employed to
`give his time and scientific skill for the very purpose of trying to discover
`and invent,” and accordingly was subject to an implied-in-fact obligation to
`assign the rights to the claimed Shen ’073 invention to Philips. Air
`Reduction Co. v. Walker, 195 N.Y.S. 120, 121 (N.Y. Sup. Ct. 1921).
`
`IV. CONCLUSION
`Because Petitioner does not demonstrate a reasonable likelihood that
`it would prevail in showing that Yang ’657 qualifies as prior art due to
`exclusion under Pre-AIA 35 U.S.C. § 103(c)(1), and because Petitioner’s
`grounds challenging the claims each substantially rely on the disclosures of
`Yang ’657, Petitioner has not shown there is a reasonable likelihood that it
`would prevail with respect to at least one of the claims challenged in the
`Petition.
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
`
`13
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`IPR2019-01085
`Patent 8,135,073 B2
`FOR PETITIONER:
`
`Eric A. Buresh
`ERISE IP, P.A
`eric.buresh@eriseip.com
`ptab@eriseip.com
`
`
`Ashraf Fawzy
`Roshan Mansinghani
`Jason R. Mudd
`Christopher Schmidt
`UNIFED PATENTS INC.
`afawzy@unifiedpatents.com
`roshan@unifiedpatents.com
`jason.mudd@eriseip.com
`chris.schmidt@eriseip.com
`ptab@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Kenneth Weatherwax
`Patrick Maloney
`Jason Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`
`
`
`
`
`
`
`
`
`14
`
`
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