`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 33
`Entered: January 11, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`VERIZON BUSINESS NETWORK SERVICES, INC.,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO., LTD.,
`Patent Owner.
`____________
`
`IPR2020-01079
`Patent 7,609,288 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, PATRICK M. BOUCHER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`

`

`IPR2020-01079
`Patent 7,609,288 B2
`
`
`In response to a Petition (Paper 2, “Pet.”) filed by Verizon Business
`Network Services, Inc. (“Petitioner”), we instituted an inter partes review of
`1, 2, 5–7, 9, 10, 12, and 14 of U.S. Patent No. 7,609,288 B2 (Ex. 1001, “the
`’288 patent”). Paper 10 (“Dec.”). During the trial, Huawei Technologies
`Co., Ltd. (“Patent Owner”) filed a Response (Paper 18, “PO Resp.”),
`Petitioner filed a Reply (Paper 21, “Reply”), and Patent Owner filed a Sur-
`reply (Paper 30, “Sur-reply”). An oral hearing was held with the parties, and
`a copy of the transcript was entered into the record. Paper 32 (“Tr.”).1
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 1, 2, 5, 7, 9, 10,
`12, and 14 are unpatentable. Petitioner has not shown, by a preponderance
`of the evidence, that claim 6 is unpatentable.
`
`
`I. BACKGROUND
`A. The ’288 Patent
`1. Overview
`The ’288 patent describes “a method for transferring desktop
`information of a PC to a video communication terminal and an apparatus
`thereof.” Ex. 1001, 1:17–20. Such method and apparatus are described in
`the context of a videoconferencing system that “needs to transfer desktop
`information, such as films or file information, to the remote video
`
`
`1 Although Petitioner appeared at the oral hearing, it did not make a
`presentation and instead “rest[ed] on the arguments presented in its papers
`and the supporting exhibits.” Tr. 6:12–16.
`
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`communication terminal at the same time while a local image such as an
`image taken by a video camera is transferred.” Id. at 1:24–29.
`Figure 1 of the ’288 patent is reproduced below.
`
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`Patent 7,609,288 B2
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`Figure 1 is a flowchart illustrating a method for transferring information
`from the desktop to the terminal. Id. at 2:61, 3:7–10. Although the drawing
`does not include reference numbers, the patent refers to steps with cardinal
`numbers whose correspondence with diagram blocks is readily inferred. See
`id. at 3:9–43. At “Step 1,” the method waits for a trigger command from a
`capture driver. Id. at 3:11–12. At “Step 2,” after the trigger command is
`received, desktop information is captured and a determination made whether
`the desktop information has been changed. Id. at 3:13–15. If it has, the
`method proceeds to “Step 3”; otherwise, the method returns to “Step 1.” Id.
`At “Step 3,” “various pre-process[es]” for the desktop information are
`made, “based on requirement.” Id. at 3:16–17. At “Step 4,” the “PC
`format” of the desktop information is converted to “a format of a local video
`communication terminal.” Id. at 3:18–19. At “Step 5,” the desktop
`information is encoded into a video bit stream. Id. at 3:20–28. At “Step 6,”
`the coded bit stream is sent to the local video communication terminal. Id.
`at 3:29–30. At “Step 7,” the coded bit stream is received by the local video
`communication terminal. Id. at 3:31–32. At “Step 8,” the coded bit stream
`is decoded and sent to a local output device to display desktop information.
`Id. at 3:33–43.
`Figure 4 of the ’288 patent is reproduced below.
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`
`
`Figure 4 illustrates a system on which the method of Figure 1 may be
`embodied. Id. at 2:67. As shown in the drawing, the PC has background
`processing device 1 to capture desktop information of the PC, which is
`encoded and sent, through a network port, to the local video communication
`terminal, which has terminal processing device 2. Id. at 3:44–48. The local
`video communication terminal forwards the received coded bit stream to
`remote video communication terminal 3. Id. at 3:48–51.
`
`
`2. Illustrative Claims
`Independent claims 1 and 9 are illustrative of the challenged claims
`and are reproduced below.
`1. A method for transferring desktop information of a PC
`to a video communication terminal, comprising,
`a) capturing desktop information of the PC after
`receiving a triggering command, and converting a PC format of
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`
`the desktop information into a format of a local video
`communication terminal;
`b) encoding the converted desktop format in a mode
`ensured by the local video communication terminal;
`c) sending the coded bit stream to the local video
`communication terminal;
`d) receiving the coded bit stream by the local video
`communication terminal and transferring to a remote video
`communication terminal through transmission channel after
`processing.
`
`Ex. 1001, 4:58–5:4.
`9. An apparatus for transferring desktop information of a
`PC to a video communication terminal, comprises,
`a background processing-device, capturing desktop
`information of the PC, converting the captured desktop
`information from a PC format to a format of a local video
`communication terminal, encoding the converted format to a
`coded bit stream and outputting;
`a terminal processing-device, transferring the coded bit
`stream from the background processing-device to a remote
`video communication terminal.
`
`Ex. 1001, 5:33–42.
`
`
`3. Prosecution History
`The application that matured into the ’288 patent was filed on
`February 2, 2005, as a continuation of PCT Appl. No. PCT/CN03/00067,
`filed on August 4, 2003. Ex. 1001 at codes (22), (63). The ’288 patent also
`claims foreign priority to Chinese Appl. No. 02128762.7, filed on August 7,
`2002. Id. at code (30).
`Shortly after filing the application, the Applicant submitted an
`Information Disclosure Statement that disclosed, among other references,
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`Patent 7,609,288 B2
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`U.S. Patent No. 5,854,892 (“Liu”). Ex. 1002, 37. Subsequently, the
`Examiner issued a Non-Final Office Action that rejected independent claim
`1, as well as other claims, for obviousness over U.S. Patent Publ. No.
`2002/0154204 (“Kenoyer”) and U.S. Patent No. 6,073,192 (“Clapp”). Id. at
`134–136. As Petitioner asserts, “Kenoyer was cited for essentially all
`elements of Claim 1 other than a triggering command; Clapp disclosed a
`videoconference system using a triggering command.” Pet. 12 (citing
`Ex. 1002, 134–136). After the Applicant traversed the obviousness
`rejections, with minor clarifying amendments to the claims, the Examiner
`allowed the application without providing express reasons for allowance.
`Ex. 1002, 151–163, 167–170. As part of this traversal, the Applicant
`characterized claim 1 as “relat[ing] to the solution of transferring desktop
`information of a PC to a video communication terminal, and the desktop
`information of a PC is transferred in a digital coded bit stream.” Id. at 159.
`
`
`B. Evidence
`Petitioner relies on the following references:
`Ex. 1005
`Kenoyer
`US 2002/0154209 A1 Oct. 24, 2002
`Ex. 1006
`Clapp
`US 6,073,192
`June 6, 2000
`Shaw
`US 5,611,038
`Mar. 11, 1997 Ex. 1007
`Becker
`US 2002/0149617 A1 Oct. 17, 2002
`Ex. 1009
`Kenoyer ’423
`US 9,769,423 B2
`Sept. 19, 2017 Ex. 1010
`
`
`Wolfgang Effelsberg and Ralf Steinmetz, Video Compression Techniques
`(Verlag 1998), pp. 58–65 (Ex. 1008) (“Video Compression”).
`
`
`In addition, Petitioner relies on Declarations by Samrat Bhattacharjee,
`Ph.D. Exs. 1004, 1020. Dr. Bhattacharjee was cross-examined by Patent
`Owner, and a transcript of his deposition has been entered into the record.
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`Ex. 2025. Patent Owner relies on Declarations by Tajana Šimunić Rosing,
`Ph.D. Exs. 2013, 2022. Dr. Rosing was cross-examined by Petitioner, and a
`transcript of her deposition has been entered into the record. Ex. 1021.
`
`
`35 U.S.C. §2
`
`Reference(s)
`
`103(a)
`103(a)
`103(a)
`
`Becker, Kenoyer ’423
`Kenoyer, Clapp, Shaw
`Kenoyer, Clapp,
`Video Compression
`
`C. Instituted Grounds of Unpatentability
`Petitioner challenges claims 1, 2, 5–7, 9, 10, 12, and 14 on the
`following grounds. Pet. 22.
`Claims
`Challenged
`1, 2, 5–7, 9, 10, 12, 14
`1, 2, 5–7, 9, 10, 12, 14
`1, 2, 5–7, 9, 10, 12, 14
`
`
`
`D. Real Parties in Interest
`Petitioner identifies Verizon Business Network Services, Inc. and
`Cisco Systems, Inc. as real parties in interest. Pet. 1. In addition, “out of an
`abundance of caution in light of prior challenges to the named real parties-
`in-interest in separate and unrelated IPR petitions,” Petitioner further
`identifies Verizon Communications Inc., Cellco Partnership d/b/a Verizon
`Wireless, and Verizon Corporate Resources Group LLC, “solely to the
`extent that Patent Owner contends that these separate legal entities should be
`named real parties-in-interest.” Id. Petitioner additionally notes that
`Verizon Communications Inc. “has several hundred affiliated entities and
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended various provisions of 35 U.S.C. Because
`the ’288 patent was filed before March 16, 2013 (the effective date of the
`relevant amendment), the pre-AIA versions of those provisions apply.
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`each of these entities agrees to be estopped under the provisions of 35
`U.S.C. §315 as a result of any final written decision in the requested IPR to
`the same extent that Petitioner is estopped.” Id.
`Patent Owner identifies only itself as a real party in interest. Paper 3,
`
`2.
`
`
`
`E. Related Matters
`The parties identify Huawei Technologies Co., Ltd. v. Verizon
`Communications, Inc., No. 6:20-cv-00090 (W.D. Tex.) (“the related
`litigation”) as a related matter. Pet. 2; Paper 3, 2.
`
`
`II. ANALYSIS
`A. Legal Principles
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
`the differences between the claimed subject matter and the prior art are
`“such that the subject matter as a whole would have been obvious at the time
`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; (3) the level of skill in the art; and (4) when in evidence, objective
`indicia of nonobviousness, i.e., secondary considerations.3 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`3 The parties do not address objective indicia of nonobviousness, which
`accordingly do not form part of our analysis.
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`
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`
`
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
`skill in the art” is a hypothetical construct, from whose vantage point
`obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`1998). “This legal construct is akin to the ‘reasonable person’ used as a
`reference in negligence determinations” and “also presumes that all prior art
`references in the field of the invention are available to this hypothetical
`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
`1993)).
`Factors pertinent to a determination of the level of ordinary skill in the
`art include “(1) the educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
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`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
`Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every
`case, and one or more of these or other factors may predominate in a
`particular case.” Id.
`Petitioner proposes that a person of ordinary skill in the art:
`would have had a working knowledge of distributed systems
`generally and videoconferencing systems and screen sharing
`specifically. This knowledge would have included knowledge
`of the processing, compression/decompression, and
`communication protocols of video signals used in such systems.
`EX1004, ¶24. A [person of ordinary skill in the art] would
`have had a bachelor’s degree in computer science, computer
`engineering, or an equivalent, and one to two years of
`professional experience with distributed multimedia systems.
`Id. Lack of work experience can be remedied by additional
`education, and vice versa. Id.
`
`Pet. 22–23. Petitioner supports its proposal with testimony by
`Dr. Bhattacharjee. Ex. 1004 ¶ 24. Patent Owner proposes that a person of
`ordinary skill in the art:
`would have had Bachelor’s degree in electrical engineering,
`computer engineering, computer science, or a related field, and
`at least 2-3 years of experience in the design or development of
`telecommunication systems, or the equivalent. Additional
`graduate education could substitute for professional experience,
`or significant experience in the field could substitute for formal
`education.
`
`PO Resp. 16. Patent Owner supports its proposal with testimony by Dr.
`Rosing. Ex. 2020 ¶ 16.
`
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`
`Both proposals appear reasonable on the record before us. Although
`we invited the parties “to address whether material differences exist between
`their respective proposals and what impact, if any, the different proposed
`levels have on the obviousness analysis,” neither party has done so. See
`Dec. 11 n.3. We apply the proposal articulated by Patent Owner, but we
`would reach the same conclusions under either proposal.
`
`
`D. Claim Construction
`The Board uses “the same claim construction standard that would be
`used to construe the claim in a civil action under 35 U.S.C. 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b)
`(2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
`(en banc). The specification may reveal a special definition given to a claim
`term by the patentee. Phillips, 415 F.3d at 1316. If an inventor acts as his or
`her own lexicographer, the definition must be set forth in the specification
`with reasonable clarity, deliberateness, and precision. Renishaw PLC v.
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
`
`
`1. “capturing desktop information”
`Independent claims 1 and 9 both recite “capturing desktop
`information of the PC.” Ex. 1001, 4:60, 5:35–36. Patent Owner contends
`that “[p]roperly construed in a manner with the intrinsic record, the phrase
`‘capturing desktop information of the PC’ . . . means ‘capturing a digital
`signal of desktop information of the PC.” PO Resp. 17. That is, Patent
`
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`Owner proposes adding the words “a digital signal” to the “capturing”
`limitation of the independent claims as a matter of claim construction. We
`are not persuaded that the record supports such an addition.
`In advancing its position, Patent Owner places considerable weight on
`the ’288 patent’s statement that “[a]dvantages of the invention [include that]
`[d]esktop information of a PC is transferred directly in a digital coded bit
`stream mode without converting digital signal to analog signal, so the clarity
`on the video communication terminal is raised.” Ex. 1001, 2:35–39.
`According to Patent Owner, “the invention of [the] ’288 Patent achieves the
`advantage of capturing a digital signal of desktop information of the PC
`‘without’ such information being an analog form.” PO. Resp. 17. Patent
`Owner makes two points in support of this position.
`First, Patent Owner observes that the ’288 patent does not explicitly
`disclose the use of an analog-to-digital converter, which Patent Owner
`contends would be required if the captured signal were analog. Id. As Dr.
`Rosing testifies, “were it otherwise (i.e., using an analog signal of the
`desktop information), the system would have disadvantageously required an
`additional conversion to a digital coded bit stream for transfer.” Ex. 2022
`¶ 36.
`
`Second, Patent Owner contends that the ’288 patent provides
`“context” for the stated advantage through “disparage[ment]” of a certain
`prior-art solution for simultaneous transfer of desktop information and a
`local video image to the remote video communication terminal. PO Resp.
`17–18; see Ex. 1001, 1:24–29. In this solution (identified as the “second”
`prior-art solution in the ’288 patent), three steps are performed: (1) the
`desktop information is transformed to a standard Phase Alternating Line /
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`National Television System Committee (“PAL/NTSC”4) format signal by a
`Video Graphic Array (“VGA”) converter; (2) the PAL/NTSC format signal
`is input to a videoconference terminal as one of the video source signals; and
`(3) the desktop information is transferred to a remote video communication
`terminal after processing by the videoconference terminal. Ex. 1001, 1:36–
`43. We agree with Patent Owner that this solution is disparaged by the ’288
`patent through its statement that “there is a loss during converting a digital
`signal to an analog signal in the VGA converter, so that clarity of all images
`that pass through the VGA converter decreases greatly” and that “slight[]”
`correction can be achieved with a “complicated” operation that nevertheless
`leaves the image quality “unsatisf[actory].” Id. at 1:49–56.
`Third, Patent Owner contends that its proposed construction “aligns
`with the prosecution history of the ’288 Patent.” PO Resp. 18. As we also
`note above, supra § I.A.3., Patent Owner observes that, when traversing the
`rejection of claim 1 for obviousness over Kenoyer and Clapp, the “Applicant
`argued that claim 1 “relates to the solution of transferring desktop
`information of a PC to a video communication terminal, and the desktop
`information of a PC is transferred in a digital coded bit stream.” Id.
`(quoting Ex. 1002, 159) (alterations by Patent Owner). According to Patent
`Owner, “[t]his part of the prosecution history ‘provides evidence of how the
`PTO and the inventor understood the patent.’” Id. (quoting Phillips, 415
`F.3d at 1317).
`The principal difficulty with Patent Owner’s arguments is that they
`improperly conflate transferring desktop information with the claim’s
`
`
`4 The ’288 patent instead uses the uncommon acronym “PAUNTSC,”
`presumably a result of incorrectly printing “L/” as “U.”
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`recitation of “capturing” desktop information. Indeed, Dr. Bhattacharjee
`concedes that “the desktop information as described in the ’288 patent is
`transferred in digital form,” even as he maintains his opinion that desktop
`information is not limited to digital capture by the ’288 patent. Ex. 1020
`¶ 11. There is thus no dispute among the expert witnesses, nor the parties,
`that the ’288 patent describes the digital transfer of desktop information. As
`Dr. Bhattacharjee explains, this is a consequence of the fact that “the [’288]
`patent describes and claims transferring desktop information only after it is
`encoded.” Ex. 1020 ¶ 12. Because such encoding occurs only after the
`desktop information is captured, “the captured desktop information could
`either be digital or analog.” Id.
`The aspects of the intrinsic record that Patent Owner identifies as
`supporting its proposed construction are, in fact, consistent with this
`distinction between capture and transfer. For example, the “advantage of the
`invention” identified by Patent Owner is specifically described by the ’288
`patent as raising clarity on the video communication terminal when
`“[d]esktop information of a PC is transferred directly in a digital coded bit
`stream mode without converting digital signal to analog signal.” See
`Ex. 1001, 2:35–39 (emphasis added). This is, moreover, consistent with the
`portion of the prosecution history Patent Owner identifies and which also
`makes clear that “the desktop information of a PC is transferred in a digital
`coded bit stream.” Ex. 1002, 159 (emphasis added). Petitioner’s expert, Dr.
`Bhattacharjee “agree[s] the desktop information as described in the ’288
`patent is transferred in digital form,” even though it is not captured in
`digital form. Ex. 1020 ¶ 11.
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`
`And although the ’288 patent’s remarks about the “second” prior-art
`solution it describes act to disparage digital-to-analog conversion, all of the
`signals involved in that solution are analog signals. See id. ¶ 13 (Dr.
`Bhattacharjee testifying that “[a]ll three of these formats,” i.e. PAL, NTSC,
`and VGA, are analog); Ex. 1021, 132:7–8 (Patent Owner’s expert, Dr.
`Rosing, agreeing on cross-examination that PAL, NTSC, and VGA are
`analog). We find persuasive Dr. Bhattacharjee’s reasoning that a person of
`ordinary skill in the art would understand that, because desktop information
`can be “transformed” between two analog signals, the desktop information
`need not be digital. See Ex. 1020 ¶¶ 13, 15. Although Patent Owner
`appears to suggest that we should disregard the experts’ consistent
`statements underlying this point in favor of its own interpretation of the ’288
`patent, we find insufficient reason to do so. See Sur-reply 3 (“Thus,
`regardless of statements by either expert, the ’288 Patent itself shows that
`‘transforming the desktop information’ involves starting with a captured
`digital signal.”) (unbolded emphasis added)).
`For these reasons, we decline to graft a digital requirement onto the
`“capturing” limitation and apply the plain and ordinary meaning of “desktop
`information” as information representing a desktop. See Ex. 1020 ¶ 15.
`
`
`2. “bit stream”
`Petitioner proposes that the term “bit stream,” recited in independent
`claims 1 and 9, as well as certain challenged dependent claims, be construed
`to mean “a continuous stream of bits transmitted over a channel with no
`separators between the character groups.” Pet. 19. Petitioner contends that
`“‘[b]it stream’ is a term of art” and that its proposal conforms with two
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`technical dictionary definitions. Id. When deciding to institute this
`proceeding based on the preliminary record, we declined to adopt
`Petitioner’s proposal, which was also not adopted by the district court in the
`related litigation. Dec. 12.
`The parties have not revisited this preliminary determination during
`the trial and we see no compelling reason to reach a different determination
`based on the full record. We according construe “bit stream” in accordance
`with its plain and ordinary meaning as a stream of bits.
`
`
`E. Obviousness over Becker and Kenoyer ’423
`1. Overview of Becker
`Becker relates to “Remote Collaboration” in which physically
`separated persons or groups collaborate using “computer-generated
`information and graphics displays with other high-resolution video sources,
`and with each other, in a real-time mode.” Ex. 1009 ¶ 2. In particular,
`Becker address “effectively transport[ing] a highly complex, expensive,
`computer environment from a local location to one or more remote locations
`without once again incurring the significant cost of creating the environment
`at the remote location(s).” Id. ¶ 18. Figure 1 of Becker is reproduced
`below.
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`Figure 1 provides a generalized representation of a remote-collaboration
`system. Id. ¶ 24. As illustrated in the drawing, “computer RGB information
`is routed from the computer 1, 2, 3, 4 to both a monitor 15R at the local
`location and also to a graphics format converter and encoder 50.” Id. ¶ 48.
`Then, “[t]he encoded signals are sent over [asynchronous transfer mode
`switch (‘ATM’)] 60 or the Internet 64 to a decoder 152 at the remote
`location 112,” where they are “converted back and viewed either on an
`HDTV-capable monitor 115R, or a normal analog-RGB computer monitor.”
`Id.
`
`With respect to the transfer of information from the local site to the
`remote site, Becker explains that “[a]n RGB signal leaves the selected
`computer 1, 2, 3, 4 and goes into the video matrix switch 10,” where it “is
`split in two.” Id. ¶ 53. “One of the signals 11 goes directly to the local site
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`12 where it is viewed on the local monitor or projector 15L, 15R” and “[t]he
`other signal gets transmitted to the remote site 90.” Id. Before being
`transmitted to the remote site, the RGB signal is processed by first being
`“converted to a digital format” and then “compressed, for example using
`MPEG-2 (other compression means being MPEG-1, MPEG-4, Wavelet-
`Based, Fourier, etc.).” Id. ¶ 54. “The[] compressed digital signal is
`transmitted using, for example ATM 60 (other means being Internet 64 or
`any other communications protocol) to a remote location,” where “the
`compressed digital signal is decompressed, decoded and viewed, for
`example, on an HDTV monitor.” Id.
`This is illustrated with Figure 4C of Becker, reproduced below.
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`Figure 4C, above, “shows the connectivity path for HDTV signals.” Id.
`¶ 30. From ATM switch 160, located at the remote location, the signals are
`sent into MPEG decoder device 152. Id. ¶ 78. MPEG decoder device 152
`decodes the signals and converts them back into the full-bandwidth standard
`digital HDTV signal. Id. From there, “the signals can be directed into a
`digital HDTV monitor for viewing (115L, 115R)” or may be sent into
`another device (not shown in the drawing) that converts the digital HDTV
`signals back to analog signals that are viewable on standard analog video
`displays. Id.
`
`
`2. Overview of Kenoyer ’423
`Kenoyer ’423 describes “[d]ual stream communication . . . for
`integration of a coupled personal computer or a laptop computer with an
`existing videoconferencing system.” Ex. 1010, 2:48–50. A card that
`includes firmware for launching software is installed into the integrated
`computer. Id. at 2:57–61.
`Figure 2 of Kenoyer ’423 is reproduced below.
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`Figure 2, above, illustrates an interface displayed when an application
`provided by the card is launched. Id. at 2:36, 3:1–4. Interface 200 is
`displayed on the computer screen and shows a plurality of buttons that
`include Show PC button 210, Magnify button 220, and Stop button 230. Id.
`at 3:4–6. By selecting interface 200, such as with a mouse, “a user is
`enabled to give a presentation loaded in the videoconferencing system such
`as a PowerPoint® presentation.” Id. at 3:7–10. “Clicking on Show PC
`button 210 will send a presentation loaded into a laptop or personal
`computer from the video-conferencing System to a remote site.” Id. at 3:11–
`13.
`
`
`3. Independent Claim 1
`a. Preamble
`In addressing independent claim 1, Petitioner contends that, should
`the preamble be found limiting, both Becker and Kenoyer ’423 teach a
`“method for transferring desktop information of a PC to a video
`communication terminal.” Pet. 28–30. In particular, Petitioner notes that
`Figure 1 of Becker illustrates structure that performs such a method by
`processing and sending signals to a remote site through a local ATM switch,
`which sends the signal to an ATM switch at the remote location for display
`on a remote video HDTV digital monitor or other remote display device. Id.
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`at 29 (citing Ex. 1009 ¶ 48).5 In addition, Petitioner points to Kenoyer
`’423’s sending of a PowerPoint® presentation loaded into a laptop or
`personal computer to a remote site. Id. at 30 (citing Ex. 1010, 3:11–22; Ex.
`1004 ¶ 103). Patent Owner does not dispute that both references disclose
`such a method, and we determine, to the extent the preamble is limiting, that
`Petitioner provides sufficient identification of such a method.
`
`
`b. “Capturing” Limitation
`Independent claim 1 recites “capturing desktop information of the PC
`after receiving a triggering command, and converting a PC format of the
`desktop information into a format of a local video communication terminal.”
`Ex. 1001, 4:60–63. With respect to this “capturing” limitation, Petitioner
`identifies Becker’s teaching of capturing graphics signals output from the
`computer in their raw format, and converting the analog RGBHV signals to
`serial digital high-definition television. Pet. 30–31 (citing Ex. 1009 ¶¶ 20,
`71). Recognizing that the limitation requires such capturing of desktop
`
`
`5 For completeness, and because it impacts how Petitioner’s arguments are
`understood in our discussion of the limitations recited in the body of claim 1,
`we note that Patent Owner argued in its Preliminary Response that
`“Petitioner appears to cite to Becker’s ‘ATM computer network switch (60)’
`as being a ‘local video communication terminal.’” Paper 6, 39–40 (citing
`Pet. 33–34). We rejected Patent Owner’s preliminary argument (which is
`not repeated in its Response) that “Petitioner fails to explain how HDTV
`format is a ‘format of a local video communication channel,’ or more
`specifically, how HDTV format is a format of ‘ATM computer network
`switch.’” Id. at 41 (citing Ex. 2013 ¶¶ 74–76). Specifically, we found—and
`continue to find—that “it is sufficiently evident from Petitioner’s discussion
`of the preamble that Petitioner properly understands that signals in Becker
`are sent to an ATM switch at the remote location for display on a remote
`video HDTV digital monitor.” Dec. 19 (citing Pet. 29).
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`information to be “after receiving a triggering command,” Petitioner
`identifies Kenoyer ’423’s teaching that clicking on the Show PC button
`sends a loaded presentation to the remote site. Id. at 31 (citing Ex. 1010,
`2:48–50, 3:11–13).
`According to Petitioner, a person of ordinary skill in the art would
`have found it obvious to modify Becker to use such a triggering command,
`as taught by Kenoyer ’423, because “Becker recognizes the benefits of
`minimizing bandwidth usage.” Id. at 31–32. Petitioner supports this
`reasoning with testimony by Dr. Bhattacharjee, who cites Becker’s specific
`recognition that “if one wants to minimize the amount of bandwidth required
`to send