UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`_________________
`
`Patent No. 7,012,960
`_________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,012,960
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES ............................................................................. 2
`III.
`PAYMENT OF FEES ..................................................................................... 3
`IV. GROUNDS FOR STANDING ........................................................................ 3
`V.
`PRECISE RELIEF REQUESTED .................................................................. 3
`VI. LEVEL OF ORDINARY SKILL .................................................................... 7
`VII. THE ’960 PATENT ......................................................................................... 7
`A. Overview of the ’960 Patent .................................................................. 7
`B.
`Prosecution History of the ’960 patent ................................................10
`VIII. CLAIM CONSTRUCTION ..........................................................................11
`A.
`“transformed signal[s]” (Claims 1 and 4) and “transformed
`coefficients” (Claim 1) ........................................................................12
`“transformed motion-compensated signal” (Claims 1 and 4) .............12
`“wherein the recursive filtering step is intended to use a recursive
`filter such as: Rf[i]=(1— .alpha.[i]) (R1[i]+Rmc[i]) . . . is a filter
`coefficient comprised between 0 and 1;” ............................................13
`IX. DETAILED EXPLANATION OF GROUNDS ............................................14
`A. Ground 1: Keesman and Neri Render Obvious Claim 1 .....................14
`1.
`Claim 1 ......................................................................................14
`Ground 2: Keesman, Neri, and Dubois Render Obvious Claim 1 ......55
`Ground 3: Keesman and Kim Render Obvious Claims 4 and 5 ..........60
`1.
`Claim 4 ......................................................................................60
`2.
`Claim 5 ......................................................................................75
`
`B.
`C.
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`B.
`C.
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`i
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`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`D. Ground 4: Keesman, Kim, and Matsumura Render Obvious
`Claims 4 and 5 .....................................................................................77
`1.
`Claim 4 ......................................................................................77
`2.
`Claim 5 ......................................................................................81
`Priority Claims of the ’960 Patent .................................................................83
`X.
`XI. CONCLUSION ..............................................................................................85
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`ii
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`

`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`
`LIST OF EXHIBITS
`
`Ex. 1001 U.S. Patent No. 7,012,960 to Bourge et al.
`
`Ex. 1002 Declaration of Jeffrey J. Rodriguez, Ph.D.
`
`Ex. 1003 Curriculum Vitae of Jeffrey J. Rodriguez, Ph.D.
`
`Ex. 1004 Prosecution History of U.S. Patent No. 7,012,960
`
`Ex. 1005 Keesman et al. “Transcoding of MPEG bitstreams,” Signal Processing:
`Image Communication, Vol. 8, No. 6 (September 1996)
`
`Ex. 1006 Neri et al. “Inter-block filtering and downsampling in DCT domain,”
`Signal Processing: Image Communication, Vol. 6, No. 4 (August 1994)
`
`Ex. 1007 Dubois et al., “Noise Reduction in Image Sequences Using Motion-
`Compensated Temporal Filtering,” IEEE Transactions on
`Communications, Vol. Com-32, No. 7 (July 1984)
`
`Ex. 1008 U.S. Patent No. 6,249,549 to Kim
`
`Ex. 1009 U.S. Patent No. 6,792,045 to Matsumura et al.
`
`Ex. 1010 Excerpts from Smith, The Scientist and Engineer’s Guide to Digital
`Signal Processing (1997)
`
`Ex. 1011 Opening Claim Construction Brief of Uniloc 2017 in Uniloc 2017 LLC
`v. Google LLC, Case No. 2:18-CV-551-JRG (E.D. Tex. Jan. 23, 2020),
`ECF No. 121
`
`Ex. 1012 Defendant Google LLC’s Responsive Claim Construction Brief in
`Uniloc 2017 LLC v. Google LLC, Case No. 2:18-CV-551-JRG (E.D.
`Tex. Jan. 23, 2020), ECF No. 130
`
`Ex. 1013 U.S. Patent No. 6,456,663 to Kim
`
`Ex. 1014 U.S. Patent No. 5,428,456 to Parulski et al.
`
`Ex. 1015 European Application No. 00402939
`
`Ex. 1016 European Application No. 01400588
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`iii
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`Petition for Inter Partes Review
`Patent No. 7,012,960
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`Ex. 1017 Declaration of Ingrid Hsieh-Yee, Ph.D.
`
`Ex. 1018 Mitchell et al., MPEG Video Compression Standard, Chapman & Hall
`(1996)
`
`
`
`
`
`
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`iv
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`

`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`
`I.
`
`INTRODUCTION
`Google LLC (“Petitioner”) requests inter partes review (“IPR”) of claims 1,
`
`4 and 5 (“the challenged claims”) of U.S. Patent No. 7,012,960 (“the ’960 patent”)
`
`(Ex. 1001) assigned to Uniloc 2017 LLC (“Patent Owner” or “PO”). 1 For the
`
`reasons below and accompanying evidence, the challenged claims should be found
`
`unpatentable and canceled.
`
`
`1 Uniloc 2017 LLC purports to be the Patent Owner, but based on publicly available
`
`materials, other entities may also be the Patent Owner or real parties-in-
`
`interest. Uniloc 2017 LLC was formed by Fortress Investment Group (“Fortress”),
`
`which is a subsidiary of SoftBank Group Corp. The ’960 patent, along with a
`
`number of other patents, was previously assigned to Uniloc Luxembourg
`
`S.A. Pursuant to a 2014 agreement between an affiliate of Fortress, Fortress Credit
`
`Co., LLC (“Fortress Credit”), and Uniloc Luxembourg S.A., Fortress Credit invested
`
`in Uniloc Luxembourg S.A. and took a security interest and conditional license in
`
`the patents. In 2018, the day that agreement was terminated, Uniloc Luxembourg
`
`S.A. assigned the patents, including the ’960 patent, to the newly formed Uniloc
`
`2017 LLC. Google identifies these entities in an abundance of caution to assist the
`
`Board with respect to identification of any potential conflicts of interest.
`
`
`
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`1
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`

`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`
`II. MANDATORY NOTICES
`Real Parties-in-Interest: Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner
`
`identifies the following as the real parties-in-interest: Google LLC.2
`
`Related Matters: The ’960 patent is at issue in Uniloc 2017 LLC v. Google
`
`LLC, Case No. 2-18-cv-00551 (E.D. Tex.). This case is currently stayed. The ’960
`
`patent was also at issue in Uniloc 2017 LLC v. Amazon.com, Inc. et al, Case No. 2-
`
`18-cv-00320 (E.D. Tex.). This case was dismissed without prejudice.
`
`Counsel and Service Information: Lead counsel: Naveen Modi (Reg. No.
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`46,224). Backup counsel: (1) Joseph E. Palys (Reg. No. 46,508), (2) Quadeer
`
`Ahmed (Reg. No. 60,835), (3) Jason Heidemann (Reg. No. 77,880).
`
`Service information is Paul Hastings LLP, 875 15th St. N.W., Washington,
`
`D.C., 20005, Tel.: 202.551.1700, Fax: 202.551.1705, email: PH-Google-Uniloc-
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`IPR@paulhastings.com. Petitioner consents to electronic service.
`
`
`2Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of
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`Alphabet Inc. XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest
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`to this proceeding.
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`
`
`
`
`2
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`

`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`
`III. PAYMENT OF FEES
`The PTO is authorized to charge any fees due during this proceeding to
`
`Deposit Account No. 50-2613.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’960 patent is available for review and Petitioner
`
`is not barred or estopped from requesting review on the grounds identified herein.
`
`V.
`
`PRECISE RELIEF REQUESTED
`Challenged claims 1, 4, and 5 of the ’960 patent should be reviewed and
`
`canceled as unpatentable in view of the following grounds:
`
`Ground 1: Claim 1 is unpatentable under pre-AIA 35 U.S.C. § 103(a) over
`
`Keesman et al., “Transcoding of MPEG bitstreams,” Signal Processing: Image
`
`Communication, Vol. 8, No. 6 (September 1996) (“Keesman”) (Ex. 1005) in view
`
`of Neri et al., “Inter-block filtering and downsampling in DCT domain,” Signal
`
`Processing: Image Communication, Vol. 6, No. 4 (August 1994) (“Neri”) (Ex.
`
`1006);
`
`Ground 2: Claim 1 is unpatentable under pre-AIA 35 U.S.C. § 103(a) over
`
`Keesman, Neri, and Dubois et al., “Noise Reduction in Image Sequences Using
`
`Motion-Compensated Temporal Filtering,” IEEE Transactions on Communications,
`
`Vol. Com-32, No. 7 (July 1984) (“Dubois”) (Ex. 1007);
`
`
`
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`3
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`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`Ground 3: Claims 4 and 5 are unpatentable under pre-AIA 35 U.S.C. § 103(a)
`
`over Keesman in view of U.S. Patent No. 6,249,549 to Kim (“Kim”) (Ex. 1008); and
`
`Ground 4: Claims 4 and 5 are unpatentable under pre-AIA 35 U.S.C. § 103(a)
`
`over Keesman in view of Kim and U.S. Patent No. 6,792,045 to Matsumura et al.
`
`(“Matsumura”) (Ex. 1009).
`
`The ’960 patent issued from U.S. Application No. 10/082,860 filed October
`
`19, 2001. (Ex. 1001 at Cover.) The ’960 patent claims priority to two foreign
`
`applications: European Patent Application Nos. 00402939 (“the EP ’939
`
`application”) filed October 24, 2000 and 01400588 (“the EP ’588 application”) filed
`
`March 6, 2001. (Id.)
`
`For purposes of this proceeding, Petitioner assumes the earliest effective filing
`
`date of challenged claim 1 is October 24, 2000, which is the filing date of the EP
`
`’939 application.
`
`The EP ’939 application, however, does not support each and every limitation
`
`set forth in challenged claims 4 and 5. (See infra Section X.) Therefore, for purposes
`
`of this proceeding, claims 4 and 5 of the ’960 patent are not entitled to a priority date
`
`of October 24, 2000 and instead have a priority date no earlier than March 6, 2001
`
`(the filing date of the EP ’588 application). (Id.)
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`
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`4
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`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`Keesman and Neri were published in the well-known Signal Processing:
`
`Image Communication journal in 1996 and 1994, respectively. (Ex. 1005 at Cover;
`
`Ex. 1006 at Cover.) The prior art status of Keesman and Neri is further confirmed
`
`by the declaration of Dr. Ingrid Hsieh-Yee (Ex. 1017), an expert in the field of library
`
`cataloging and classification. (Ex. 1017 at ¶¶5-16.) Both Keesman and Neri were
`
`publically available at the British Library at least as early as August 21, 1996 and
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`September 2, 1994, respectively. (Id. at ¶¶32, 47; see also id. at ¶¶17-27, 33-43.)
`
`The British Library issued letters confirming that Keesman and Neri were publically
`
`available as of those dates. (Id. at ¶¶28-30 (referencing Appendix 1005-C), 44-45
`
`(referencing Appendix 1006-C).) Moreover, Keesman and Neri were indexed by
`
`subject matter at the British Library such that any interested persons could have
`
`searched for and accessed Keesman and Neri at least as early as their public
`
`availability dates. (Id. at ¶¶20-26, 36-42.) Keesman and Neri were also cited
`
`numerous times in other papers prior to the year 2000, further demonstrating their
`
`public availability. (Id. at ¶¶31, 46.)
`
`Thus, Keesman and Neri are prior art to the challenged claims under at least
`
`pre-AIA 35 U.S.C. § 102(b).
`
`Dubois is an article published in the well-known IEEE Transactions on
`
`Communications journal in July, 1984. (Ex. 1007 at Cover; see also id. at 3 (Library
`
`
`
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`5
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`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`of Congress date stamp).) The Board has routinely held IEEE publications like
`
`Dubois as printed publications. For example, “[t]he Board has previously observed
`
`that ‘IEEE is a well-known, reputable compiler and publisher of scientific and
`
`technical publications, and we take Official Notice that members in the scientific
`
`and technical communities who both publish and engage in research rely on the
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`information published on the copyright line of IEEE publications.’” Power
`
`Integrations, Inc., v. Semiconductor Components Industries, LLC, IPR2018-00377,
`
`Paper No. 10 at 10 (July 17, 2018) (quoting Ericsson, Inc. v. Intellectual Ventures I
`
`LLC, IPR2014-00527, Paper 41 at 11 (May 18, 2015)). Thus, Dubois is prior art to
`
`the challenged claims under at least pre-AIA 35 U.S.C. § 102(b).
`
`Kim was filed on October 9, 1998 and issued on June 19, 2001. (Ex. 1008 at
`
`Cover.) Therefore, Kim is prior art to the challenged claims under at least pre-AIA
`
`35 U.S.C. § 102(e).
`
`Matsumura was filed January 26, 2001 and issued on September 14, 2004.
`
`(Ex. 1009 at Cover.) Therefore, Matsumura is prior art to challenged claims 4 and
`
`5 under at least pre-AIA 35 U.S.C. § 102(e). (See also infra Section X.)
`
`None of the above references were considered by the USPTO during
`
`prosecution of the ’960 patent. (Ex. 1001 at Cover (“References Cited” section); see
`
`also generally Ex. 1004.)
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`
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`6
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`

`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`
`VI. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the art at the time of the alleged invention of the
`
`’960 patent (“POSITA”) would have had a Bachelor’s degree in Electrical
`
`Engineering, Computer Science, or the equivalent thereof, and two or more years of
`
`experience with data compression systems and algorithms, including video coding.
`
`(Ex. 1002 at ¶¶16-21.)3 More education can supplement practical experience and
`
`vice versa. (Id.)
`
`VII. THE ’960 PATENT
`A. Overview of the ’960 Patent
`The ’960 patent relates generally to “a method of transcoding a primary
`
`encoded signal comprising a sequence of pictures, into a secondary encoded signal.”
`
`(Ex. 1001 at 1:7-10; Ex. 1002 at ¶22.)
`
`Transcoding, as the ’960 patent admits, is well known. (Ex. 1001 at 1:50-58.)
`
`An exemplary application of transcoding is to lower the bitrate of a video stream and
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`the ’960 patent provides that this may be accomplished by converting “a primary
`
`stream encoded at a bitrate BR1 . . . into a secondary video stream encoded at a
`
`
`3 Petitioner submits the declaration of Dr. Jeffrey J. Rodriguez (Ex. 1002), an expert
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`in the field of the ’960 patent. (Ex. 1002 at ¶¶1-15; Ex. 1003.)
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`7
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`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`bitrate BR2, lower than BR1.” (Id. at 1:25-30.) A prior-art transcoding device
`
`discussed in the ’960 patent is reproduced below.
`
`
`
`(Id. at FIG. 1; see also id. at 2:44-47; Ex. 1002 at ¶23.) The prior art transcoding
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`device (100) performs the transcoding of encoded digital signals (S1), and is
`
`comprised of a decoding channel (generally shown by gray), an encoding channel
`
`(generally shown by yellow), and a prediction channel (generally shown by purple).
`
`(Ex. 1001 at 1:30-35, FIG. 1.) The encoded digital signals (S1) and (S2) are each
`
`“representative of a sequence of images.” (Id. at 1:30-35, FIG. 1; Ex. 1002 at ¶¶23-
`
`25.)
`
`
`
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`8
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`

`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`The ’960 patent states that “using [the] prior art transcoding method, will lead
`
`to conspicuous quantization artifacts” when re-quantizing the input signal at
`
`quantizer Q (13). (Ex. 1001 at 1:59-63.) The ’960 patent provides that “[t]o
`
`overcome this drawback, the transcoding method . . . further comprises a filtering
`
`step between the dequantizing sub-step and the quantizing sub-step.” (Id. at 1:64-
`
`67.) In other words, the ’960 patent implements a filter with the “prior art
`
`transcoder” in order to reduce noise in the transformed signal. (Id. at 2:3-5; Ex. 1002
`
`at ¶26.)
`
`The ’960 patent provides a temporal filter (blue) with the prior art transcoder
`
`as shown in Figure 2.
`
`(Ex. 1001 at FIG. 2 (annotated); see also id. at 2:49-52, 5:17-40; Ex. 1002 at ¶27.)
`
`
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`9
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`

`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`The ’960 patent also provides a spatial filter (blue) with the prior art
`
`transcoder as shown in Figure 4.
`
`(Ex. 1001 at FIG. 4 (annotated); see also id. at 2:55-58, 7:15-17; Ex. 1002 at ¶¶28-
`
`
`
`29.)
`
`All of the limitations recited in the challenged claims of the ’960 patent were
`
`known. (Ex. 1002 at ¶¶35-50 (discussing the prior art at issue in this petition); see
`
`also infra Section IX.)
`
`Prosecution History of the ’960 patent
`B.
`In the first Office Action, the examiner indicated that some dependent claims
`
`contained allowable subject matter. (Ex. 1004 at 173.) Applicant incorporated that
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`
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`10
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`Petition for Inter Partes Review
`Patent No. 7,012,960
`subject matter into the challenged independent claims (id. at 156-157, 23), which
`
`eventually led to the allowance of these claims. (Id. at 13.)
`
`VIII. CLAIM CONSTRUCTION
`For IPR proceedings, the Board applies the claim construction standard set
`
`forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under
`
`Phillips, claim terms are typically given their ordinary and customary meanings, as
`
`would have been understood by a POSITA, at the time of the invention, having taken
`
`into consideration the language of the claims, the specification, and the prosecution
`
`history of record. Phillips, 415 F.3d at 1313; see also id. at 1312-16. The Board,
`
`however, only construes the claims when necessary to resolve the underlying
`
`controversy. Toyota Motor Corp. v. Cellport Systems, Inc., IPR2015-00633, Paper
`
`No. 11 at 16 (Aug. 14, 2015) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999)). Except as discussed below, Petitioner believes that
`
`no express constructions of the claims are necessary to assess whether the prior art
`
`reads on the challenged claims.4 (Ex. 1002 at ¶¶30-34.)
`
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`4 Petitioner reserves all rights to raise claim construction and other arguments in
`
`district court as relevant and necessary to those proceedings. For example, Petitioner
`
`has not raised all challenges to the ’960 patent in this petition, including challenges
`
`
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`11
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`

`A.
`
`Petition for Inter Partes Review
`Patent No. 7,012,960
`“transformed signal[s]” (Claims 1 and 4) and “transformed
`coefficients” (Claim 1)
`The terms “transformed signal[s]” (recited in claims 1 and 4) and
`
`“transformed coefficients” (recited in claim 1) both mean “data concerning video
`
`that has been discrete cosine transformed and inverse quantized.” This definition is
`
`consistent with the usage of both “transformed signal[s]” and “transformed
`
`coefficients” in the claims, which provide that the data has been transformed (see
`
`Ex. 1001 at cls. 1, 4, 6 and 7) and inverse quantized (see id.). (Ex. 1002 at ¶31.)
`
`This definition is also consistent with the usage of both “transformed coefficients”
`
`and “transformed signal[s]” in the specification. (Id., Ex. 1001 at Abstract, 1:11–
`
`13, 2:1–17, 3:14–17, 3:35–56; 5:18–46, 6:58–7:67; FIGS. 2, 4–5.)
`
`“transformed motion-compensated signal” (Claims 1 and 4)
`B.
`The term “transformed motion-compensated signal” (recited in claims 1 and
`
`4) means “motion-compensated data that has been discrete cosine transformed and
`
`inverse quantized.” This definition is consistent with the usage of “transformed
`
`
`under 35 U.S.C. §§ 101 or § 112. A comparison of the claims to any accused
`
`products in litigation may raise controversies that need to be resolved through claim
`
`construction that are not presented here given the similarities between the references
`
`and the patent.
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`
`
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`12
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`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`motion-compensated signal” in the claims, which provide that the data has been
`
`transformed (see Ex. 1001 at cls. 1, 4, 6 and 7). (Ex. 1002 at ¶32.) This definition
`
`is also consistent with the usage of “transformed motion-compensated signal” in the
`
`specification. (Id., Ex. 1001 at Abstract, 1:35–42, 2:9–17, 2:22–28, 3:25–37, 3:49–
`
`4:12, 5:33–45, 7:8–63; FIGS. 2, 4–5.)
`
`C.
`
`“wherein the recursive filtering step is intended to use a recursive
`filter such as: Rf[i]=(1— .alpha.[i]) (R1[i]+Rmc[i]) . . . is a filter
`coefficient comprised between 0 and 1;”
`In district court, Petitioner has argued that the phrases “intended to” and “such
`
`as” as recited in this claim term render claim 1 indefinite because these phrases are
`
`ambiguous and thereby fail to afford clear notice of what is claimed. (Ex. 1012 at
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`3-7.) However, Patent Owner has argued that this term is not indefinite and should
`
`be given its plain and ordinary meaning. (Ex. 1011 at 6-8.) For purposes of this
`
`proceeding, Petitioner has assumed arguendo that Patent Owner is correct that the
`
`term is not indefinite and should be construed according to its plain and ordinary
`
`meaning.5
`
`
`5 Petitioners may “take alternative, or even inconsistent positions [regarding claim
`
`terms]” based on Fed. R. Civ. P. 8(d)(3). Google LLC v. AGIS Software
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`13
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`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`
`IX. DETAILED EXPLANATION OF GROUNDS
`As detailed below, the challenged claims are unpatentable. (Ex. 1002 at ¶¶51-
`
`171.)
`
`A. Ground 1: Keesman and Neri Render Obvious Claim 1
`Claim 1
`1.
`A method of transcoding a primary encoded signal
`a)
`(S1) comprising a sequence of pictures, into a
`secondary encoded signal (S2), said method of
`transcoding comprising at least the steps of:
`To the extent that the preamble is limiting, Keesman discloses the limitations
`
`therein. (Ex. 1002 at ¶¶52-58.) For example, Keesman discloses transcoding of
`
`MPEG bitstreams. (Ex. 1005 at 481 (“This paper discusses the problem of
`
`transcoding . . . .”) (emphasis added).)
`
`Keesman discloses a transcoder that converts “the incoming compressed
`
`signal of one bit-rate . . . into a compressed signal of a lower bit-rate.”6 (Ex. 1005
`
`
`Development, LLC, IPR2018–01079, Paper No. 9 at 17-18 (Nov. 20, 2018)
`
`(citations omitted).
`
`6 Keesman uses the terms “incoming compressed signal”, “incoming video signal”,
`
`and “input bit-stream” interchangeably to describe the input signal to the transcoder.
`
`For sake of simplicity, in the analysis below, the input signal to the transcoder is
`
`
`
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`14
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`

`Petition for Inter Partes Review
`Patent No. 7,012,960
`at 481.) A POSITA would have understood that the incoming compressed signal, at
`
`a first bit-rate, is a primary encoded signal (S1) and that the compressed signal of a
`
`lower bit-rate is a secondary encoded signal (S2), as claimed. (Ex. 1002 at ¶53; see
`
`also id. at ¶¶35-38.) Thus, Keesman discloses a method of transcoding a primary
`
`encoded signal (S1) into a secondary encoded signal (S2). (Id.)
`
`In further detail, Keesman discloses “the situation with transcoding is as
`
`shown in Fig. 1: an encoder compresses the incoming video signal at a bit-rate of
`
`R1 (Mbit/s), then this compressed signal is converted into a compressed format of a
`
`lower bit-rate R2 (Mbit/s) and finally a decoder decompresses the incoming signal
`
`and displays the resulting video signal.” (Ex. 1005 at 482 (emphasis added).)
`
`Moreover, Keesman discloses transcoding MPEG bitstreams—e.g., “this paper will
`
`concentrate on the transcoding of MPEG signals into MPEG signals.” (Id.
`
`(emphasis added); see also id. at Abstract.) Thus, a POSITA would have understood
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`that the incoming compressed signal (i.e., “a primary encoded signal (S1)”)
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`referred to as the “incoming compressed signal” unless Keesman’s specific
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`disclosures (referring to the input signal by another name) are being reproduced.
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`(Ex. 1002 at ¶35 n.3.)
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`comprises a sequence of pictures because it is an MPEG video signal. (Ex. 1002 at
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`¶¶54-55 (citing Ex. 1018).)7
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`Keesman, with reference to Figure 1 (below), shows a basic configuration of
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`a system including a transcoder (T) which receives an input video signal at a bit rate
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`of R1 (Mbits/s) and outputs video signal at a bit rate of R2 (Mbits/s). (Ex. 1005 at
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`482.) In addition, Figure 7 (below) illustrates the transcoding system of Keesman
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`with reduced complexity—i.e., “[a] transcoder [with] significantly reduced
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`complexity as compared with a cascaded decoder and encoder” (Id. at 488, Fig. 7;
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`see also id. at 486.)
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`7 Petitioner relies on the teachings of Keesman and Neri for the limitations of claim
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`1 under this ground. Petitioner is citing Mitchell (Ex. 1018) only to demonstrate
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`knowledge of a POSITA. Int’l Bus. Machines Corp. v. Intellectual Ventures II, LLC,
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`IPR2015-00089, Paper No. 44 at 15 (Apr. 25, 2016).
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`(Id. at FIG. 1 (annotated); Ex. 1002 at ¶56.)
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`(Ex. 1005 at FIG. 7 (annotated); Ex. 1002 at ¶56.)
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`Further, Figure 9 of Keesman (below) provides additional detail to the overall
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`transcoder model as illustrated above in Figure 1, which includes Keesman’s reduced
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`complexity transcoder of Figure 7 (below). (Ex. 1005 at 488 (“[t]he transmission
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`chain model of Fig. 1 is shown in greater detail in Fig. 9. In fact, Fig. 9 is obtained
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`by substituting Fig. 3 for the encoder ‘E’, Fig. 7 for the transcoder ‘T’ [including the
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`VLD and VLC] and Fig. 2 for the decoder ‘D’.”).)8
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`(Id. at FIG. 9 (annotated); Ex. 1002 at ¶57.)
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`8 Based on these disclosures of Keesman, a POSITA would have understood that
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`Figures 2 (decoder), 3 (encoder), 7 (transcoder with VLD and VLC included), and 9
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`(transmission chain with transcoder) are consistent with and build upon the basic
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`configuration of a transcoding system shown in Figure 1.
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`Thus, Keesman discloses a method of transcoding a primary encoded signal
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`comprising a sequence of pictures, into a secondary encoded signal. (Ex. 1002 at
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`¶58.)
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`b)
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`decoding a current picture of the primary encoded
`signal,
`Keesman discloses this limitation. (Ex. 1002 at ¶¶59-63.) For example,
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`Keesman discloses decoding a current picture of the incoming compressed signal via
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`the variable length decoder (VLD) and dequantizer (DQ1) components of the
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`decoding portion of the transcoder shown in Figures 7 and 9. (Ex. 1005 at FIGS. 7,
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`9.)
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`As discussed above for claim element 1(a), Keesman discloses a transcoder
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`that comprises a decoder. (Supra Section IX.A.1.a; Ex. 1002 at ¶60.) For example,
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`in Figure 1 (below), Keesman illustrates a basic configuration of a system including
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`a transcoder. (Ex. 1005 at FIG. 1.)
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`(Id. at FIG. 1 (annotated); Ex. 1002 at ¶60.) As shown in Figure 1, the transcoder
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`includes a decoding unit (D) (gray) and an encoding unit (E) (yellow)—e.g., “a
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`transcoder was pictured as a cascaded decoder and encoder.” (Ex. 1005 at 483.)
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`Keesman’s decoding unit in the transcoder decodes a current picture of the incoming
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`coded video signal. (Ex. 1002 at ¶60.)
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`Keesman, as illustrated in Figures 7 and 9, provides that the input video bit-
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`stream is decoded via a series of decoding steps including a variable length decoder
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`(VLD) and de-quantizer (DQ1) to obtain a first transformed signal from the current
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`picture of the incoming video signal. (Ex. 1005 at FIGS. 7, 9; see also id. at 487;
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`Ex. 1002 at ¶61.) Keesman, moreover, discloses the basic operations of VLD and
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`DQ1 units for decoding a current picture from an incoming bit-stream:
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`Fig. 2 shows the outline of a decoder that is present in the
`transcoder. First the bit-stream is decoded (VLD), yielding the
`value of the quantized coefficients, next these quantized
`coefficients are de-quantized (DQ1) and put through an inverse
`discrete cosine transform (IDCT).9
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`(Ex. 1005 at 483 (emphasis added).) Keesman’s description corresponding to the
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`decoding components VLD and DQ1 in Figure 2 equally applies to the same VLD
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`and DQ1 components that are identified in Figures 7 and 9, because Keesman does
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`not repeat the description of functions of common components shown in its Figures.
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`(Ex. 1002 at ¶61.)
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`As discussed above, Keesman’s incoming compressed MPEG video signal (“a
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`primary encoded signal”) comprises a sequence of pictures. (Supra Section
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`IX.A.1.a.) Thus, Keesman’s decoder (e.g., the decoding components in Figures 7
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`and 9) acts upon the incoming compressed signal to decode the sequence of pictures
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`including a current picture of the incoming compressed signal, as claimed.
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`9 Unlike the conventional decoder shown in Figure 2, which includes an inverse-
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`discrete-cosine transform IDCT component, the decoding portion of the transcoder
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`in Figures 7 and 9 does not include the IDCT component. (Ex. 1002 at ¶61 n.8.)
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`Petition for Inter Partes Review
`Patent No. 7,012,960
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`(Ex. 1005 at FIG. 7 (annotated); Ex. 1002 at ¶62.)
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`(Ex. 1005 at FIG. 9 (annotated); Ex. 1002 at ¶¶62-63.)
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`said decoding step comprising a dequantizing sub-step
`(12) for producing a first transformed signal (R1),
`Keesman discloses this limitation. (Ex. 1002 at ¶¶64-68.) For example,
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`c)
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`Keesman discloses that the decoding step discussed above (claim element 1(b))
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`includes a dequantizing (DQ1) sub-step for producing dequantized transform
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`coefficients (“first transformed signal”). (Id. at ¶64)
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`As discussed above for claim element 1(b), Keesman discloses decoding a
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`current picture of the primary encoded video signal through a series of decoding
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`steps. (Supra Section IX.A.1.b; Ex. 1002 at ¶65.) As illustrated in Figure 7 (below),
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`the input video bit-stream is decoded by a variable length decoder (VLD) followed
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`by a dequantizing sub-step (DQ1). (Ex. 1005 at FIG. 7; see also id. at 483.)
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`Keesman further discloses that the output of the dequantizing sub-step (DQ1)
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`is “de-quantized coefficients.” (Id. at 483.) These de-quantized coefficients in
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`Keesman are data concerning video that has been discrete cosine transformed and
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`inverse quantized, and these de-quantized coefficients correspond to a first
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`transformed signal (R1), as claimed. (Ex. 1002 at ¶66; see also supra VIII.A
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`(construction of “transformed signal”).) This is because, unlike a conventional
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`decoder shown in Keesman’s Figure 2 that includes an inverse-discrete-cosine
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`transform IDCT component, the decoding portion of the transcoder in Figures 7 and
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`9 does not include the IDCT component. (Ex. 1002 at ¶66.) Thus, Keesman’s
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`Petition for Inter Partes Review
`Patent No. 7,012,960
`decoding portion of the transcoder shown in Figures 7 and 9 does not perform an
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`inverse discrete cosine transform (IDCT) following the de-quantizer (DQ1).
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`(Compare Ex. 1005 at FIG. 7 with id. at FIG.2; see also id. at 483, 486; Ex. 1002 at
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`¶66.) Therefore, a POSITA would have understood that the de-quantized
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`coefficients outputted from DQ1 correspond to the claimed “first transformed signal
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`(R1)” because no inverse discrete cosine transform (IDCT) has been applied to the
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`de-quantized coefficients by the transcoder in Figure 7.
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`(Ex. 1005 at FIG. 7 (annotated); Ex. 1002 at ¶67.)
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`Petition for Inter Partes Review
`Patent No. 7,012,960
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`(Ex. 1005 at FIG. 9 (annotated); Ex. 1002 at ¶67.)
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`Thus, Keesman discloses a decoding step comprising a dequantizing sub-step
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`for producing a first transformed signal. (Ex. 1002 at ¶68.)
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`d)
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`encoding, following the decoding step, for obtaining
`the secondary encoded signal,
`Keesman discloses this limitation. (Ex. 1002 at ¶¶69-74.) For example,
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`Keesman discloses encoding by way of the quantizer (Q2) and the variable length
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`coder (VLC) (included in the encoding portion of the transcoder) shown in Figures
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`7 and 9, following the decoding step (see claim elements 1(b)-1(c)) above), for
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`obtaining the outp