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`Paper 39
`Date: January 12, 2022
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`Trials@uspto.gov
`571-272-7822
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`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.
`____________
`
`IPR2020-01080
`Patent 9,521,366 B2
`____________
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`
`
`Before TREVOR M. JEFFERSON, CHARLES J. BOUDREAU, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
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`I.
`INTRODUCTION
`In response to Verizon Business Network Services Inc.’s
`(“Petitioner”) Petition (Paper 2, “Pet.”), we instituted an inter partes review
`of claims 1, 5, 8, 12, 15–17, 19, and 20 of U.S. Patent No. 9,521,366 B2
`(Ex. 1001, “the ’366 patent”). Paper 11 (“Inst. Dec.”). During the trial,
`Huawei Technologies Co. Ltd. (“Patent Owner”) filed a Response (Paper 19,
`“PO Resp.”), Petitioner filed a Reply (Paper 27, “Reply”), and Patent Owner
`filed a Sur-reply (Paper 37, “Sur-reply”). An oral hearing was held with the
`parties, and a copy of the transcript was entered into the record. Paper 39
`(“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, 8, 15, and 16
`are unpatentable. Petitioner has not shown, by a preponderance of the
`evidence, that claim 5, 12, 17, 19, and 20 are unpatentable.
`
`II. BACKGROUND
`
`A. The ’366 Patent
`The ’366 patent describes “a method and apparatus for playing a
`conference signal, a video conference terminal, and a mobile device, to
`improve effects of displaying a main stream signal and a presentation stream
`signal.” Ex. 1001, 2:27–31, code (57). Specifically, the ’366 patent
`
`
`1 Although Petitioner appeared at the oral hearing, it did not make a
`presentation and instead rested on the arguments presented in its papers and
`the supporting exhibits. Tr. 6:5–9.
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`discloses a videoconference system where a “main stream” signal (such as
`the video image of a presenter) is displayed on a main screen at a video
`conference site, and a “presentation stream” signal (such as a document) is
`displayed on mobile devices held by conference participants at the video
`conference site. Id. at 1:54–62, 2:32–46. The ’366 patent states that this is
`an improvement over the prior art because the two signals “are prevented
`from being displayed in a PIP [picture in picture] manner, thereby improving
`[the] effects of playing the main stream signal and the presentation stream
`signal, and further improving conference experience of the conference
`participant and improving conference efficiency.” Ex. 1001, 5:15–21.
`Figure 1, below, shows a structural diagram of a video conference
`system of the prior art. Ex. 1001, 5:25–26.
`
`
`Figure 1 depicts “a video conference system [that] includes at least two
`video conference terminal subsystems, a transmission channel, and a
`multipoint control unit (MCU).” Id. at 1:32–35. Figure 2, below, depicts
`the video conference terminal subsystem of the prior art. Id. at 5:27–28.
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`Figure 2 shows
`located at each
`terminal subsystem
`a video conference
`[conference] site includes a video conference terminal (VCT), a
`video input device (for example, a camera or a camera array) for
`collecting a video signal or an image signal, an audio input
`device (for example, a microphone or a microphone array), an
`audio output device (for example, a loudspeaker or a loudspeaker
`array) for playing a received audio signal, and a display device
`(for example, a display or a projector) for displaying a received
`video (or image) signal.
`Id. 1:35–44
`The ’366 patent discloses that the mobile device that receives the
`main stream signal or presentation stream signal “is a smart mobile terminal,
`for example, a tablet computer (e.g. an iPAD), a notebook computer, or a
`smartphone.” Ex. 1001, 6:56–59. In addition, the primary playing device
`“may be a device shared by conference participants at the site (that is, a
`device that may be seen and/or heard by all the conference participants at the
`site), for example, a large screen at the site.” Id. at 7:1–5.
`Figure 5A of the ’366 patent, reproduced below, provides one
`embodiment of the disclosed system. Ex. 1001, Fig. 5A, 8:19–23.
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`Figure 5A shows the VCT “establishing a connection channel between a
`mobile device held by a conference participant [PAD1, PAD2 and PAD3]
`and a video conference terminal that are at a site.” Id. at 8:11–18. This
`connection may be a “direct connection channel between the mobile device
`held by the conference participant and a VCT that are at the site or
`establishing, using another mobile device, an indirect connection channel
`between the mobile device held by the conference participant and a VCT
`that are at the site.” Id. The ’366 patent describes that a “direct connection
`channel between the mobile device and the VCT refers to a channel on
`which no routing mobile device (or relay mobile device) exists between the
`mobile device and the VCT, and the mobile device is directly connected to
`the VCT” as shown in Figure 5A. Id. at 8:19–23.
`The ’366 patent further discloses that an “indirect connection channel
`between the mobile device and the VCT includes a connection channel
`between the mobile device and a routing mobile device (or a relay mobile
`device), and a connection channel between the routing mobile device (or the
`relay mobile device) and the VCT.” Ex. 1001, 8:24–32. Thus, “the mobile
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`device is not directly connected to the VCT, and a routing mobile device or a
`relay mobile device exists between the mobile device and the VCT.” Id.
`
`B. Illustrative Claims
`Claims 1 and 8 are independent and illustrative of the claims under
`challenge:
`[1.1] A method for playing a conference signal,
`1.
`comprising:
`[1.2] establishing a connection channel between a plurality
`of mobile devices held by a plurality of conference
`participants located at a site and a video conference
`terminal located at the site, wherein the video conference
`terminal comprises a primary playing device;
`[1.3] sending, through the established connection channel,
`a first type signal in to-be-played signals to each of the
`mobile devices for play, wherein the to-be-played signals
`are signals that are received by the video conference
`terminal and are to be played; and
`[1.4] sending a second type signal in the to-be-played
`signals to the primary playing device of the site for play,
`[1.5] wherein the first type signal is a presentation stream
`signal when the second type signal is a main stream signal,
`or the first type signal is the main stream signal when the
`second type signal is the presentation stream signal,
`[1.6] wherein the presentation stream signal comprises at
`least one of a document and a demonstration slide to be
`displayed, and
`[1.7] wherein the main stream signal comprises real-time
`content to be displayed.
`8. [8.1] A video conference terminal, comprising:
`[8.2] a processor configured to establish a connection
`channel between a plurality of mobile devices held by a
`plurality of conference participants located at a site and the
`video conference terminal located at the site; and
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`[8.3] a signal distributor configured to:
`[8.4] send, through the connection channel established by
`the processor, a first type signal in to-be-played signals to
`each of the mobile devices for play, wherein the to-be-
`played signals are signals that are received by the video
`conference terminal and are to be played; and
`[8.5] send a second type signal in the to-be-played signals
`to a primary playing device of the site for play,
`[8.6] wherein the first type signal is a presentation stream
`signal when the second type signal is a main stream signal,
`or the first type signal is the main stream signal when the
`second type signal is the presentation stream signal,
`[8.7] wherein the presentation stream signal comprises at
`least one of a document and a demonstration slide to be
`displayed, and
`[8.8] wherein the main stream signal comprises real-time
`content to be displayed.
`Ex. 1001, 29:13–34, 31:12–35 (bracketed numbering added).
`
`C. Instituted Grounds of Unpatentability
`We instituted inter partes review of the challenged claims of the
`’366 patent on the following grounds. Pet. 33, 40–69; Inst. Dec. 7, 41.
`35 U.S.C. §2
`Claims Challenged
`References/Basis
`1, 5, 8, 12, 15–17, 19, 20
`103
`Saleh,3 Chu4
`19, 20
`103
`Saleh, Chu, Tian5
`
`
`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.
`3 Saleh, U.S. Patent No. 8,208,002 B2, issued Jun. 26, 2012 (Ex. 1004).
`4 Chu, U.S. Publ’n No. 2013/0106977, published May 2, 2013 (Ex. 1005).
`5 Tian, U.S. Patent No. 8,890,923 B1, issued Nov. 18, 2014 (Ex. 1006).
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`In support of its arguments, Petitioner relies on the Declarations of
`Samrat Bhattacharjee, Ph.D. (Exs. 1003, 1023). Dr. Bhattacharjee was
`cross-examined by Patent Owner, and a transcript of his deposition has been
`entered into the record. Ex. 2020. Patent Owner relies on Declarations by
`Tajana Šimunić Rosing, Ph.D. Exs. 2015. Dr. Rosing was cross-examined
`by Petitioner, and a transcript of her deposition has been entered into the
`record (Ex. 1022).
`
`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
`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 Proceedings
`The parties identify one related federal district court case, Huawei
`Technologies Co. v. Verizon Communications, Inc., Case No. 6:20-cv-00090
`(W.D. Tex.). Pet. 2; Paper 3, 2.
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`III. DISCUSSION
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`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.6 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`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)).
`
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`6 The parties do not address objective indicia of nonobviousness, which
`accordingly do not form part of our analysis.
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`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
`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 (“POSA”)
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`would have had a working knowledge of video conference
`systems and screen sharing, including knowledge of how real-
`time content and presentation data were shared during
`videoconferences. EX1003, ¶¶ 23–25; see also id., ¶¶ 1–11. A
`POSA would have had a bachelor’s degree in computer science,
`computer engineering, or an equivalent degree, and 3–4 years of
`professional experience with distributed multimedia or
`videoconference systems. Id., ¶ 24. The lack of work experience
`can be remedied by additional education, and vice versa. Id.
`
`Pet. 33–34. Petitioner supports its proposal with testimony by
`Dr. Bhattacharjee. Ex. 1003 ¶¶ 23–24.
`
`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. 15–16. Patent Owner supports its proposal with testimony by
`Dr. Rosing. Ex. 2015 ¶ 13–14.
`
`Both proposals appear reasonable on the record before us. Neither
`party articulates whether material differences exist between their respective
`proposals, nor whether the proposals alter the obviousness analysis.
`Furthermore, we discern no material difference in the application of the
`parties’ proposals. Accordingly, we apply the proposal articulated by Patent
`Owner, but would have reached the same conclusion under either party’s
`proposed level of ordinary skill in the art.
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`C. 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).
`Petitioner proposes several terms for construction. Pet. 24–32. Our
`Decision on Institution rejected Petitioner’s proposed constructions. Inst.
`Dec. 21–23. Patent Owner provides no argument in response to Petitioner’s
`proposed claim constructions, arguing instead that “Patent Owner’s positions
`on claim interpretation and the ‘part-to-part relationships set forth in the
`claims’ are included in the arguments” presented with respect to the claim
`limitation. PO Resp. 16 (citing Lindemann Maschinenfabrik GMBH v.
`American Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). We
`briefly address Petitioner’s contentions below.
`a. “Primary Playing Device” (Claims 1, 5, 8, 12, 19, and 20) &
`“Mobile Device” (Claims 1, 5, 8, 12, 19, and 20)
`Petitioner argues that the term “primary playing device” should be
`construed to mean “a device shared by conference participants at a
`conference site that has one or more of a picture playing capability, an audio
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`playing capability or a video playing capability, including without limitation
`a screen, a television or a sound box.” Pet. 24; Ex. 1003 ¶¶ 69–71.
`Petitioner contends that the specification, figures, and claims support this
`construction showing the capabilities of the primary playing device. Pet 24–
`26; see, e.g., Ex. 1001, 6:63–67, 29:24–34, 30:29–38, Figure 5A.
`Petitioner argues that the term “mobile device” should be construed to
`mean “a portable terminal capable of displaying picture or video content or
`playing audio content, including without limitation a laptop or notebook
`computer, a tablet computer, or a smartphone.” Pet. 26; Ex. 1003 ¶¶ 72–73.
`Petitioner contends that the specification, figures, and claims are consistent
`with the proposed construction. Pet. 26–28; Ex. 1003 ¶¶ 72–73.
`Upon reviewing Petitioner’s proposed constructions and cited
`evidence, we find that no claim construction is necessary. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`b. “To-Be-Played Signals” Limitations (Claims 1, 5, 8, and 12)
`Petitioner argues that the “to-be-played signals” in independent claims
`1, 5, 8, and 12 are sent to both the mobile devices and primary playing
`devices and “should be construed to make clear that the mobile devices only
`receive and play either the presentation stream signal or the main stream
`signal, and the primary playing device receives and plays only the other
`signal. Pet. 28 (emphasis omitted) (citing Ex. 1001, 29:19–25, 30:21–28,
`31:19–26, 32:27–32). For each of the claim limitations containing “to-be-
`played signals” of claims 1, 5, 8, and 12, Petitioner asserts the construction
`limits the mobile devices of claims 1, 5, and 8 to receive and play only a first
`type of signal, while the primary playing device receives and plays a second
`type of signal. Id. at 28–30. Similarly, for claim 12, Petitioner argues that
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`the player only receives and plays one type of signal, while the primary
`playing device plays another type of signal. Id. at 30.
`Petitioner argues that the constructions are consistent with the claims
`and specification of the ’366 patent. Id. at 30–31 (citing Ex. 1001, 2:32–46,
`4:45–60, Fig. 3 (Steps 302, 303)). Petitioner avers that the Applicant during
`prosecution of the application for the ’366 patent overcame a Section 112
`enablement rejection by describing how two different signals are sent to
`different devices at a conference site to be played. Pet. 31–32 (citing
`Ex. 1002, 290, 309–311 (Examiner interview noting that “[t]he 112
`problems are cleared up when applicant showed how 1 signal stream is
`going to the conferees and another signal stream is going to the main
`conference device delineated as ‘VCT’ on the drawings.”); Ex. 1003 ¶ 77).
`In addition, Petitioner argues that the Applicant argued during examination
`that the independent claims required separately displaying the first signal on
`mobile devices and second signal on primary playing devices and
`distinguished Tian on that basis. Pet. 32; Ex. 1002, 332; Ex. 1003 ¶¶ 78–79.
`We are not persuaded by Petitioner’s constructions limiting the “to-
`be-played signals” received at either the primary player or the mobile
`(separate player) at the site to only be one type of distinct signal.
`Petitioner’s evidence and argument in support of the narrowed construction
`for the “to-be-played signals” in claims 1, 5, 8, and 12 address the resulting
`content displayed at each of the primary playing device or mobile device of
`each claim. See Pet. 30–32. However, Petitioner has not presented
`persuasive evidence that the Applicant’s arguments during prosecution or
`the ’366 patent specification limits the received and played signals at each
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`device to only the specific type of signal received. Thus, we determine that
`no claim construction is necessary.
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`D. Obviousness over Saleh and Chu
`Petitioner asserts that claims 1, 5, 8, 12, 15–17, 19, and 20 of the ’366
`patent would have been obvious over Saleh and Chu. Pet. 40–64. We
`describe the asserted prior art and address the parties’ contentions below.
`1. Overview of Asserted Prior Art
`We start with an overview of the asserted prior art, Saleh and Chu,
`and Petitioner’s motivation to combine Saleh and Chu.
`a. Saleh (Ex. 1004)
`Saleh is entitled “Distance Learning Via Instructor Immersion Into
`Remote Classroom.” Ex. 1004, code (54). Saleh “relates generally to
`videoconferencing systems, and more particularly to distance learning
`videoconferencing systems.” Id. at 1:6–8. Figure 6 of Saleh, depicted
`below, shows “[a] local classroom can include one or more local participants
`and an instructor/presenter.” Id. at 2:34–35.
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`Figure 6 shows “[i]mage capturing devices, such as cameras, can capture
`images of the local participants and the local instructor and transmit them to
`[a] remote classroom.” Id. at 2:35–38. Saleh stated that “[t]he remote
`classroom can include a display screen for displaying received images of
`local participants, and an instructor display screen for displaying received
`images of the local instructor.” Id. at 2:2:38–41. Figure 6 shows instructor
`602 conducting a distance learning session from a local classroom 600. Id.
`at 8:27–30. Local classroom 600 includes local participants 606 and a set of
`image display screens 608 displaying remote participants. Id. Instructor 602
`can present education materials “such as a black/white board, presentation
`screen, touch-screen, etc.” Id. at 8:30–32. Saleh teaches that the “[t]he
`content displayed on the touch sensitive monitor [used by the instructor] can
`also be displayed on pop-up personal content displays 618, or laptops 620
`positioned in front of the local participants.” Id. at 8:36–39. Thus, “[t]he
`instructor can use presentation aids such as interactive white/black board,
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`document camera, large computer monitors, projection screen, etc., for
`presenting additional material to the participants.” Id. at 3:7–10. Saleh
`further teaches that “[t]he content shown on the presentation aids can be
`displayed to the remote participants on a separate display screen placed near
`the instructor or on personal display screens and laptops.” Id. at 3:10–13.
`b. Chu (Ex. 1005)
`Chu is entitled “Pairing Devices In Conferencing Using Ultrasonic
`Beacon.” Ex. 1005, code (54). Chu states that “[d]uring the conference, . . .
`the portable devices communicate audio to the conferencing unit in a
`wireless connection, while the conferencing unit communicates with a far-
`end in a conferencing connection.” Ex. 1005 ¶ 5. During video
`conferences, “the portable device can optionally communicate video in
`addition to or instead of audio.” Id. ¶ 6. Figure 1 of Chu, depicted below,
`discloses “[a] videoconferencing system [that] has a videoconference unit
`that use[s] portable devices as peripherals for the system.” Id., code (57),
`¶ 16.
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`Figure 1 shows videoconferencing unit 100 with “a loudspeaker 122 coupled
`to an audio interface 120.” Id. ¶ 23. “The system 10 also has a display 142
`and one or more cameras 144 coupled to a video interface [140].” Id.
`“Internally, the unit 100 has a processing unit 110 with an audio codec 112
`and a video codec 114 respectively connected to the audio and video
`interfaces 120 and 140 for encoding and decoding audio and video for the
`videoconference.” Id. ¶ 25. “Finally, the unit 100 has a network interface
`130 connected to the codecs 112 and 114 for communicating audio and
`video between the near-end unit 100 and far-end units 30.” Id.
`Chu discloses that “[d]uring a videoconference, many of the
`participants would likely have their own portable device 50 available
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`because portable devices 50 have become a common appliance.” Ex. 1005
`¶ 26. Chu describes that users can use portable devices 50 as
`videoconferencing peripherals, and that such devices “can include any of a
`number of available devices, including, but not limited to, peripheral
`devices, cellular telephones, smartphones, tablet PCs, touch screen PCs,
`PDAs, hand-held computers, netbook computers, laptop computers, and the
`like.” Id. ¶ 27. Furthermore, “participants can connect their portable
`devices 50 with the wireless network 134 to the LAN 132 so transport
`between the portable devices 50 and the videoconferencing unit 100 can use
`the wireless network 134 and the LAN 132.” Id. ¶ 28.
`c. Motivation to Combine
`Petitioner asserts that Chu’s disclosure of a transport between portable
`devices 50 and videoconferencing unit 100 via wireless network 134 and
`LAN 132 constitutes a connection channel and that a person of ordinary skill
`in the art would have been motivated to combine the connection channel in
`Chu with the videoconferencing system in Saleh. Pet. 46–47 (citing Ex.
`1003 ¶¶ 8989–94, 135, 136; Ex. 1005 ¶¶ 12, 28, 32, 65). Petitioner notes
`that both references are assigned to the same entity and address similar
`technical issues regarding the transfer of video and audio signals between
`local and remote locations and the interaction of mobile devices with the
`videoconferencing systems. Id. at 47 (citing Ex. 1004, 2:35–45, 5:18–21,
`8:27–45; Ex. 1005 ¶¶ 5–6, 12, 26–28, 65). Petitioners cite the benefits of
`efficient arrangement for distributing content to a plurality of mobile devices
`through videoconferencing terminals including reduced bandwidth. Id. at
`47–48 (citing Ex. 1003 ¶¶ 91, 92). Finally, Petitioner argues that a person of
`ordinary skill in the art would have been motivated to use the use the
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`connection channel between the video conference terminal and the mobile
`devices taught by Chu to allow user edits to the presentation stream. Id. at
`48 (citing Ex. 1003 ¶ 93).
`Patent Owner argues that Petitioner fails to sufficiently explain why a
`person would have been motivated to modify Saleh’s original solution, and
`erringly relies on broad characterizations of the prior art field to show that a
`person of ordinary skill in the art would have modified Saleh’s teachings.
`PO Resp. 31–32 (citing inter alia Belden Inc. v. Berk-Tek LLC, 805 F.3d
`1064, 1073 (Fed. Cir. Nov. 5, 2015); PersonalWeb Techs., LLC v. Apple,
`Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)).
`Patent Owner further argues that the asserted prior art’s assignment to
`the same entity, Polycom, Inc., is not informative regarding the motivation
`to combine. Id. Patent Owner’s overview of the prior art notes that Saleh
`identifies and references well-known conference device products by
`Polycom (PO Resp. 4) and describes the Polycom products discussed in
`Saleh as “[c]onsistent with the state of the art” (id. at 9). See id. at 10–11, 21
`(discussing Polycom conference devices). In the present case, we find that
`the Saleh and Chu are in the same field as well as assigned to the same
`entity, which supports Petitioner’s arguments regarding the motivation to
`combine.
`Patent Owner further asserts that Petitioner’s arguments regarding
`efficient distribution are unfounded and erroneous because Saleh does not
`teach that laptops receive content in the remote classroom. PO Resp. 31–32
`(citing Ex. 2015 ¶¶ 70–83). Specifically, Patent Owner contends that
`Saleh’s references to laptops are only mentioned in reference to local
`participants (Ex. 1004, 8:30–45 (“laptops 620 positioned in front of the local
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`participants”)) and not used at remote sites. PO Resp. 32; Ex. 2015 ¶ 72.
`Patent Owner further argues that Saleh’s statement that “[t]he content shown
`on the presentation aids can be displayed to the remote participants on a
`separate display screen placed near the instructor or on personal display
`screens and laptops” (Ex. 1004, 3:10–13) is ambiguous and subject to
`“hypothetical revisions that would clarify Saleh’s . . . disclosure.” PO Resp.
`33. In sum, Patent Owner argues that Saleh fails to teach use of laptops and
`thus, Petitioner’s motivation to combine is unfounded. Id. at 31–34.
`We are not persuaded by Patent Owner’s argument regarding the
`alleged ambiguity of Saleh’s teachings. See PO Resp. 33–34. Considering
`Saleh’s teachings as a whole, Figure 4B of Saleh “illustrates a remote
`classroom 450 including remote participants 456” and depicts a laptop being
`used in the remote classroom. Ex. 1004, 7:40–41, Fig. 4B. Considering
`Petitioner’s analysis of Saleh as a whole, Figure 4B in combination with
`Saleh’s teaching that remote participants can use personal display screens
`and laptops (Ex. 1004, 3:10–13) provides persuasive support that Saleh
`teaches the use of laptops at the remote classroom. See Reply 11; Ex. 1023
`¶ 29.
`Patent Owner further argues that an ordinarily skilled artisan would
`not have combined Chu’s wireless technique with Saleh to pursue reducing
`bandwidth and that a similar result could be obtained by using Saleh’s pre-
`installed pop-up personal displays. PO Resp. 35–36; Ex. 2015 ¶¶ 82–83. To
`the contrary, Patent Owner asserts, combining Chu and Saleh would be
`bandwidth inefficient and add costly networking equipment. Id. Patent
`Owner’s arguments are unavailing. We note, that “just because better
`alternatives exist in the prior art does not mean that an inferior combination
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`is inapt for obviousness purposes.” See In re Fulton, 391 F.3d 1195, 1201
`(Fed. Cir. 2004); In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). In
`other words, “obviousness ‘does not require that the motivation be the best
`option, only that it be a suitable option from which the prior art did not teach
`away.’” Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328
`(Fed. Cir. 2017). In this regard, we credit Petitioner’s evidence that Saleh
`depicts and discusses the use of pers