throbber
Paper 10
`Trials@uspto.gov
`Entered: August 9, 2021
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC.,
`Petitioner,
`v.
`BROADCOM CORPORATION,
`Patent Owner.
`
`IPR2021-00468
`Patent 6,982,663 B2
`
`
`
`
`
`
`
`
`
`
`
`Before MELISSA A. HAAPALA, Senior Lead Administrative Patent Judge,
`KRISTEN L. DROESCH and THOMAS L. GIANNETTI, Administrative
`Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2021-00468
`Patent 6,982,663 B2
`
`
`I. INTRODUCTION
`Netflix, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 12–16, 18, and 19 (the “challenged claims”)
`of U.S. Patent No. 6,982,663 B2 (Ex. 1001, “the ’663 patent”). Patent
`Owner, Broadcom, Inc., filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). At the request of the panel, Petitioner filed a supplemental brief
`(Paper 8) and Patent Owner filed a supplemental reply (Paper 9) addressing
`a specific argument raised by Patent Owner in the Preliminary Response.
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary response “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons stated below, we determine that Petitioner has not
`established a reasonable likelihood that it would prevail with respect to at
`least one claim. We therefore do not institute inter partes review as to any
`of the challenged claims of the ’663 patent on the asserted ground of
`unpatentability.
`
`A. Related Matters
`The parties identify the following district court proceedings as related:
`Broadcom Corp. et al. v. Netflix, Inc., Case No. 3:20-cv-04677-JD (N.D.
`Cal.); Broadcom Corp. et al. v. Netflix, Inc., Case No. 8:20-cv-00529-JVS-
`ADS (C.D. Cal.). Pet. 90, Paper 5, 1.
`In addition, the ’663 patent was previously before the Board in
`IPR2017-00964 (institution denied). IPR2017-00964, Paper 15.
`
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`Patent 6,982,663 B2
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`
`B. Real Parties-in-Interest
`Petitioner identifies Nexflix, Inc., and Netflix Streaming Services,
`Inc., as the real parties-in-interest. Pet. 90. Patent Owner identifies
`Broadcom Corporation as the real party-in-interest. Paper 5, 1. Neither
`party challenges those identifications.
`
`C. The ’663 Patent (Ex. 1001)
`The ’663 patent is titled “Method and System for Symbol
`Binarization.” Ex. 1001, (54). According to the Abstract, the invention is
`directed to an improved method for the binarization of data in an MPEG data
`stream.1 Id. at (57). Binarization is described in the ’663 patent as creation
`of binary representations of each inputted symbol in the form of a
`“codeword.” See id. at 4:1–4.
`The ’663 patent describes a practical application of binarization in
`transmitting MPEG video. Ex. 1001, 3:21–4:33. An MPEG video
`transmission is essentially a series of pictures or frames taken at closely
`spaced time intervals. Id. at 3:21–22. The ’663 patent discloses that a frame
`is divided into blocks. Id. at 3:22–26. According to the ’663 patent,
`transmitting block movements only (known as “motion vectors”) and
`differences between picture blocks, as opposed to the entire picture, results
`in considerable savings in data transmission. Id. at 3:26–38.
`Motion is usually represented as a difference from a predicted motion
`vector, known as a predicted motion vector residual. Id. at 3:39–41. In
`practice, the pixel differences between picture blocks are transformed into
`
`
`1 The ’663 patent uses MPEG “as a generic reference to a family of
`international standards set by the Motion Picture Expert Group.” Ex. 1001,
`1:16–18.
`
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`Patent 6,982,663 B2
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`frequency coefficients and then quantized into discrete levels by an encoder
`to further reduce the data transmission. Id. at 3:41–44. Figure 2 of the ’663
`patent follows:
`
`
`Figure 2 is a block diagram of an encoder for video compression. Id. at
`2:44, 3:50–51. The ’663 patent states that the “invention resides” in
`binarization module 62 depicted in Figure 2. Id. at 4:1–2. The encoder
`accepts as input video source 14. Id. at 3:51–52. Binarization module 62
`accepts, as input, symbols created by module 56 and creates a binary
`representation of each one, in the form of a codeword. Id. at 4:2–4.
`The ’663 patent recognizes that different binarization methods have
`different applications. Id. at 1:63–2:11. The patent identifies a need for a
`binarization system that retains the most valuable properties of two such
`binarization methods, unary and exp-Golomb. Id. at 2:1–3. In such a
`system, small codewords would be distinguishable, as with a unary
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`IPR2021-00468
`Patent 6,982,663 B2
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`binarization, and large codewords would have their binarization limited to a
`reasonable length. Id. at 2:3–6.
`The patent, therefore, describes a hybrid scheme using “unary
`binarization to create codewords up until an index threshold. Once the
`threshold has been met, succeeding code symbols have appended to them an
`exp-Golomb suffix.” Ex. 1001, (57). This hybrid binarization scheme
`reduces the complexity in processing codewords. Id. at 6:19–28, (57).
` According to the ’663 patent, “exp-Golomb codewords . . . use a
`unary prefix followed by a binary postfix, [and] may be regarded as
`compromise positions between unary and binary binarizations.” Ex. 1001,
`5:41–44. Golomb codewords with parameter “k” begin with unary
`binarizations representing the Most Significant Bits (MSB). Id. at 5:44–46,
`Table 2. Appended to the unary binarizations are “k” binary bits
`representing the Least Significant Bits (LSB). This combination produces 2k
`distinct binarizations for each MSB. Id. at 5:46–49.
`The ’663 patent discloses the following algorithm for constructing a
`hybrid binarization of a given index “v” that switches from unary to exp-
`Golumb at threshold “N”:
`If v<N
`1) use a unary code of v 1’s terminated with a 0
`If v>=N
`1) Form an initial prefix of (N-1) 1’s;
`2) Determine the number of bits γ+1 required to represent v-(N-2).
`For example, for N=64, γ=[log2 (v-62)], and put it in a unary
`representation. The unary representation is appended to the initial
`prefix to form the unary prefix . . . .
`3) Append the γ least significant bits of “g” where g=v-(N-2)-2**γ in
`its binary representation to the prefix. . . .
`Id. at 6:50–63.
`
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`IPR2021-00468
`Patent 6,982,663 B2
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`
`D. Illustrative Claim
`The ’663 patent has 21 claims. Of the challenged claims, claim 12 is
`the only independent claim and is illustrative of the subject matter. Claim
`12 is reproduced below:
`12. A method for generating a codeword from an index
`value for digital video encoding, comprising the steps of:
`(A) generating a first pattern in a first portion of said
`codeword in response to said index value being at least as great
`as a threshold;
`(B) generating a second pattern in a second portion of said
`codeword following said first portion representing an offset of
`said index value above said threshold; and
`(C) generating a third pattern in a third portion of said
`codeword following said second portion representing a value of
`said index value above said offset.
`
`
`Ex. 1001, 8:26–36. Each of the other challenged claims depends, directly or
`indirectly, from claim 12.
`E. The Asserted Ground of Unpatentability
`Petitioner asserts the following ground of unpatentability. Pet. 20.
`
`Claims Challenged
`
`12–16, 18, 19
`
`Basis
`35 U.S.C. §
`1032
`
`Reference
`
`Howard3
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284–88, amended 35 U.S.C. § 103. Because the effective filing date of
`the challenged claims of the ’663 patent is before March 16, 2013, the pre-
`AIA version of 35 U.S.C. §103 applies.
`3 Paul G. Howard and Jeffrey S. Vitter, Fast progressive lossless
`image compression, pp. 98-109, SPIE Proceedings Vol. 2186
`(“Image and Video Compression”) (1994). Ex. 1004
`
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`Patent 6,982,663 B2
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`In addition, Petitioner relies on a Declaration of James A. Storer, Ph.D. Ex.
`1003 (“Storer Decl.”).
`
`II. REQUEST FOR DISCRETIONARY DENIAL UNDER
`35 U.S.C. § 325(D)
`Patent Owner contends that the Board should exercise its discretion to
`deny the Petition under 35 U.S.C. § 325(d) because “Howard is similar to,
`and cumulative of, Cheung, which the Board had previously considered and
`rejected in [IPR2017-00964].” Prelim. Resp. 46. Patent Owner continues,
`“Howard and Cheung are similar references with few material differences
`(other than the fact that Cheung was allegedly an anticipatory reference,
`while Petitioner does not even allege that Howard is anticipatory), and in
`particular, the same failing with regard to limitations of the independent
`Challenged Claim 12.” Id. at 46–47.
`Under § 325(d), in determining whether to institute an inter partes
`review, “the Director may take into account whether, and reject the petition
`or request because, the same or substantially the same prior art or arguments
`previously were presented to the Office.” Because of our disposition of this
`Petition on the merits, however, we do not address Patent Owner’s request
`that we exercise our discretion to deny the Petition under § 325(d). See
`infra.
`
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review, claims of a patent shall be construed using
`the same claim construction standard that would be used to construe the
`claims in a civil action under 35 U.S.C. § 282(b), including construing the
`claims in accordance with the ordinary and customary meaning of such
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`claims 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); see also Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). Under that standard,
`and absent any special definitions, we give claim terms their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must
`be set forth with reasonable clarity, deliberateness, and precision. See In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for two terms: “generating a
`codeword from an index value for digital video encoding” and “representing
`an offset of said index value above said threshold.” Pet. 29–36. Patent
`Owner does not agree with Petitioner’s construction of these terms, and
`contends that they should be construed “in accordance with their plain and
`ordinary meaning.” Prelim. Resp. 12. Patent Owner contends further that
`“Petitioner's proposed constructions are immaterial to whether Board should
`deny institution of inter partes review.” Id. at 13.
`We construe claim terms only as relevant to the parties’ contentions
`and only to the extent necessary to resolve the issues in dispute. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy,’” (citation
`omitted)).
`We agree with Patent Owner that the proposed constructions are not
`necessary to resolve the issues in dispute. Therefore, we do not construe any
`terms for purposes of this Decision.
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`
`B. Obviousness over Howard (Ex. 1004)
`Petitioner contends that claims 12–16, 18, and 19 would have been
`obvious in light of Howard. Pet. 20.
`A claim is unpatentable as obvious under 35 U.S.C. § 103 “if the
`differences between the claimed invention and the prior art are such that the
`claimed invention 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 the
`claimed invention pertains.” 35 U.S.C. § 103(a). 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) so-called “secondary considerations,” including commercial
`success, long-felt but unsolved needs, failure of others, and unexpected
`results. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Neither
`party has presented any evidence on the fourth Graham factor.
`1. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the pertinent field to
`the ’663 patent “would have been a bachelor’s degree in electrical
`engineering, computer engineering, mathematics, or a similar field with at
`least two years of experience with data compression or a person with a
`master’s degree in electrical engineering, computer engineering, or a similar
`field with a specialization in data compression.” Pet. 28 (citing Storer Decl.
`¶ 17). Furthermore, Petitioner contends “[a] person with less education but
`more relevant practical experience may also meet this standard.” Id.
`Patent Owner does not dispute Petitioner’s formulation of a person of
`ordinary skill in the art or provide its own formulation.
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`
`We regard Petitioner’s definition as consistent with the ’663 patent
`and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).
`Therefore, for the purpose of this Decision, we adopt Petitioner’s
`formulation.
`
`2. Overview of Howard (Ex. 1004)
`Howard is an article titled “Fast Progressive Lossless Image
`Compression.” Ex. 1004, 64. Petitioner contends the article was presented
`at a conference in February 1994, and subsequently was published in the
`conference proceedings. Pet. 21. Patent Owner does not challenge
`Howard’s status as prior art to the ’663 patent under 35 U.S.C. § 103.
`Howard describes a method for the compression of digital images
`called “Progressive FELICS.” Ex. 1004, 8; Storer Decl. ¶119. As part of
`the Progressive FELICS compression method, Howard introduces a new
`family of “subexponential codes.” Id. at 10. According to Howard, in these
`new codes, “the codewords are identical to those of the corresponding Rice
`codes for n < 2k+1, but for larger values of n the codeword lengths increase
`logarithmically as in Elias codes.” Id. Howard presents the following
`mathematical algorithm for computing the subexponential codes:
`
`Id.
`
`
`4 Unless otherwise stated, citations to exhibits in this Decision reference the
`page numbers assigned by the parties and not the original page numbers.
`
`
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`
`3. Analysis of Claim 12
`Claim 12 is directed to “[a] method for generating a codeword from
`
`an index value for digital video encoding.” Ex. 1001, 8:26–27. The method
`comprises three separate steps (identified in the claim as (A), (B), and (C)),
`each providing for generating a pattern. Step (A) recites “generating a first
`pattern in a first portion of said codeword in response to said index value
`being at least as great as a threshold.” Id. at 8:28–30. Step (B) recites
`“generating a second pattern in a second portion of said codeword following
`said first portion representing an offset of said index value above said
`threshold.” Id. at 8:31–33. Step (C) recites “generating a third pattern in a
`third portion of said codeword following said second portion representing a
`value of said index value above said offset.” Id. at 8:34–36.
`
`Petitioner provides a step-by-step analysis of claim 12 in relation to
`Howard. Pet. 43–73; Storer Decl. ¶¶ 137–219. Petitioner first contends that
`Step (A) is met by Howard. Pet. 48–56; Storer Decl. ¶¶ 153–172. Petitioner
`contends that “Howard teaches subexponential codes that use a threshold of
`2k+1, which demarcates the switch between Rice and Elias coding
`techniques.” Id. at 49. Petitioner also asserts that “Howard teaches that the
`codeword for all values greater than 2k—which includes all index values that
`are at least as great as the threshold, 2k+1—will begin with a leading one.”
`
`11
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`Id. at 50. Petitioner provides the following illustration based on Table 2 of
`Howard, annotated by Petitioner:
`
`
`Id. at 52. Table 2 (Annotated) shows the new subexponential code of
`Howard highlighted by Petitioner in green to show the “leading one.”
`Petitioner identifies this leading one as the “first pattern” recited in claim 12.
`Pet. 51 (“This initial prefix (‘first pattern’) is reflected in the following
`annotated version of Howard’s Table 2.”).
`
`Petitioner contends that Howard meets Step (B) of claim 12 in that the
`initial prefix in Howard (the “first portion” of the codeword) is followed by
`a unary number (i.e., the remaining portion of the unary prefix appearing
`
`12
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`IPR2021-00468
`Patent 6,982,663 B2
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`before the dot (•) in Table 2). Pet. 57. Petitioner illustrates this with another
`annotated version of Table 2:
`
`Id. at 58. Table 2 (Annotated) shows the new subexponential code of
`Howard highlighted by Petitioner in red to show the portion of the unary
`prefix identified by Petitioner as the recited “second pattern.” Id.
`
`
`Petitioner contends Howard meets Step (C) in describing the lower
`order bits n representing a binary number that is added to the offset and
`
`
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`threshold to arrive at the total index value. Pet. 66. Petitioner illustrates this
`with a third annotated version of Table 2 following:
`
`
`Pet. 68. Table 2 (Annotated) shows the new subexponential code of Howard
`highlighted by Petitioner in gold to show the “binary suffix.” Petitioner
`identifies this as the recited “third pattern.” Id. at 67 (“This third portion of
`Howard’s subexponential codewords (the lower order b bits of n) are
`highlighted in gold in the following annotated version of Howard’s Table
`2.”).
`
`Patent Owner responds that “[t]he '663 Patent teaches a specific
`technique for generating a codeword from an index value for digital video
`encoding.” Prelim. Resp. 6. Patent Owner refers to this as a “Three Pattern
`Approach.” Id. Patent Owner contends this approach is “embodied” in
`claim 12, and in the three-step algorithm described in the ’663 patent and
`discussed supra, where “N” is the threshold at which unary to exp-Golumb
`switching occurs:
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`
`(1) For a given index "v" that is greater than or equal to a
`threshold value "N," forming an (N–1) leading "1's";
`(2) Appending a unary representation of γ to the (Ν−1) leading “1’s”
`to form (together with the leading “1’s”) a Unary Prefix, where “γ+1”
`is the number of bits required to represent v=(N–2) and where
`γ=[log2(v-(N-2))];
`(3) Appending a binary representation (having γ least significant
`bits) of "g" as the exp-Golomb Suffix to the Unary Prefix, where
`
`𝑔𝑔=𝑣𝑣-(N–2)–2γ.
`
`Prelim. Resp. 7 (citing Ex. 1001, 6:44–63) (emphasis omitted). Patent
`Owner illustrates the Three Pattern Approach with an annotated version of
`Figure 6 of the ’663 patent, following:
`
`
`
`Prelim. Resp. 8. Figure 6 of the ’663 patent (annotated by Patent Owner)
`shows the correspondence between the First, Second, and Third Patterns in
`Figure 6 (indicated in red, blue, and tan, respectively) and the steps of the
`algorithm described in the ’663 patent and reproduced above.
`Turning to Petitioner’s obviousness contentions, Patent Owner’s
`principal argument centers on Howard’s failure to describe a Three Pattern
`Approach. Prelim. Resp. 17. According to Patent Owner, Howard instead
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`describes a “Two Pattern Approach.” Id. Patent Owner asserts: “Petitioner's
`rearrangement of Howard's disclosed methodology, and subsequent
`arguments dividing Howard's unary part into two patterns, finds no support
`in the text of Howard.” Id. More specifically, Patent Owner argues that
`Howard fails to disclose the three patterns as described in claim 12. Id. at
`17. Referring to Howard’s description of Table 2 (“a midpoint (•) separates
`the higher-order (unary) part from the lower-order (binary) part of each
`codeword”), Patent Owner contends “Howard teaches, at most, generating
`two patterns in a codeword, with one following the other (i.e., unary number
`u (‘Unary Pattern’) followed by low order b bits (‘Additional Pattern’)).”
`Prelim. Resp. 21 (quoting Ex. 1004, 10). Petitioner illustrates the two
`patterns in Howard with an annotated version of Figure 2, following:
`
`
`Prelim. Resp. 22. Figure 2 of Howard (annotated by Patent Owner) shows a
`green region identified as the Unary Pattern (or high-order unary part) and a
`yellow region identified as an Additional Pattern (or low order binary part).
`Id. The two regions are separated by midpoint (•). Ex. 1004, 10.
`Patent Owner contends that this relationship between the two patterns
`in Howard is dictated by the algorithm disclosed in Howard and shown in
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`the above figure. Prelim. Resp. 23–25. Patent Owner concludes that
`“contrary to the assertions of Petitioner, Howard provides no teaching,
`suggestion, or disclosure of generating a codeword using three patterns.” Id.
`at 25.
`We are persuaded by Patent Owner’s argument that Howard fails to
`
`describe generating three separate patterns and therefore does not teach or
`suggest the subject matter of claim 12 to a person of ordinary skill. We
`agree with Patent Owner that Petitioner’s contention that the “leading 1”
`(shown above in green in Petitioner’s annotated Table 2 (see Pet. 52)) meets
`the “first pattern” limitation of Step (A) of claim 12 is not supported by the
`algorithm provided in Howard for generating Table 2.
`
`Petitioner contends that the “+1” in Howard’s algorithm “[i]ndicates
`that codewords will begin with a prefix of +1 for values greater than 2k.”
`Pet. 51. From this Petitioner concludes that the “leading 1” in Table 2 of
`Howard is a separate pattern. Id. at 51 (“All values at or above 2k+1 will thus
`have a first pattern of a leading one”). We do not agree. The algorithm in
`Howard for generating the unary number u provides but two choices: (1) if n
`is less than 2k, the value of u is 0; and (2) if n is greater than or equal to 2k,
`the value of u is b-k+1. Ex. 1004, 10. There is no indication in the Howard
`algorithm of generating a third pattern consisting of just the prefix “1.” See
`Prelim. Resp. 36–39. As Patent Owner points out, “a 1-based unary number,
`by definition, has a leading 1 (with a single ending zero) for non-zero, non-
`negative values. That, however, does not mean that the leading 1 is
`considered or treated as a separate pattern.” Id. at 38 (citation omitted). We
`agree with this analysis.
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`Petitioner’s argument that claim 12 would have been obvious over
`
`Howard is unavailing for a further reason. Petitioner does not demonstrate
`sufficiently that the alleged first pattern in Howard is “generat[ed] in
`response to [the] index value being equal to or greater than” the threshold, as
`claim 12 requires. See Prelim. Resp. 39–46. As Patent Owner points out,
`“Howard makes clear that its subexponential coding uses the same
`Rice/Elias combination both before and after the purported threshold of
`2k+1.” Id. at 41.
`We note that the parties disagree on the threshold in Howard.5
`
`Petitioner asserts the threshold is 2k+1. Pet. 49; Paper 8. Patent Owner
`asserts that Howard’s definition for unary numbers changes at n≥2k. Prelim.
`Resp. 43; Paper 9. Patent Owner contends that “if any threshold exists in
`Howard, that threshold would be 2k, not 2k+1.” Prelim. Resp. 45.
`
`While we are more persuaded by Patent Owner’s argument that a
`threshold of 2k is reflected by Howard’s algorithm (see Paper 9), even
`accepting Petitioner’s threshold of 2k+1, we find there is insufficient proof in
`the Petition that the alleged first pattern in Howard (the leading “1”) is
`“generat[ed] in response to [the] index value being equal to or greater than”
`that threshold, as claim 12 requires. See Prelim. Resp. 43–46.
`
`Patent Owner demonstrates that, using Petitioner’s threshold of 2k+1,
`the leading “1” in Howard appears for values of n both above and below that
`threshold. Id. at. 43–45 (citing Pet. 55). As Patent Owner points out,
`“[t]hus, Petitioner's ‘leading 1’ assertion, as well as Petitioner's ‘threshold of
`2k+1’ assertion, are incorrect because such assertions find no support from
`
`
`5 The Board ordered separate briefing on this issue. See Papers 8, 9.
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`Howard's disclosure and are inconsistent with Howard's definition of u.” Id.
`at 44.
`
`Nor are we persuaded by Petitioner’s argument that for “one code,”
`Howard’s algorithm generates subexponential codes that are allegedly
`“identical to the first pattern generated using the exemplary algorithm
`provided in column 6 of the ’663 patent.” Id. at 53 (emphasis omitted). The
`fact that for one case the initial prefixes resemble each other does not
`demonstrate that Howard’s algorithm generates a first pattern “in response to
`[an] index value being at least as great as a threshold.” See Prelim. Resp.
`40–41.
`
`Finally, we address an alternative argument, advanced by Petitioner,
`based on the prosecution history of the ’663 patent. Pet. 15–18. Petitioner
`contends that “Patent Owner identified another example of a ‘second pattern
`. . . representing an offset’ during prosecution of the ’663 patent.” Id. at 35
`(citing Storer Decl. ¶ 109). Petitioner refers to this alternative as the
`“Prosecution Example,” and the example from the ’663 patent discussed
`supra as the “Litigation Example.” See Pet. 18. Petitioner contends that
`Howard teaches the three patterns recited in claim 12 and present in both
`examples. See id. at 41–42.
`
`For the reasons given above, we determine that whether we are
`considering the Prosecution Example or the Litigation Example, the
`limitations of claim 12 are not met by Howard because Howard does not
`disclose generation of three separate patterns as required by claim 12.
`
`In summary, we agree with Petitioner that Howard teaches a “Two-
`Pattern Approach.” The first pattern is the unary pattern to the left of the
`midpoint (•) in Table 2, and the second pattern is the additional pattern to the
`
`19
`
`

`

`IPR2021-00468
`Patent 6,982,663 B2
`
`right of the midpoint. Petitioner has failed to convince us that there is a
`reasonable likelihood of prevailing on its challenge to claim 12.
`4. Claims 13–16, 18, and 19
`These claims depend from claim 12 and therefore incorporate claim
`
`12’s recitation of three patterns. For the reasons given for claim 12,
`Petitioner has failed to demonstrate that there is a reasonable likelihood of
`prevailing on its challenge to those claims.
`
`IV. CONCLUSION
`We conclude that Petitioner has not demonstrated a reasonable
`likelihood of prevailing on its assertion that claims 12–16, 18, and 19 of the
`’663 patent are unpatentable on the asserted ground.
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`20
`
`

`

`IPR2021-00468
`Patent 6,982,663 B2
`
`
`
`PETITIONER:
`Harper Batts
`Chris Ponder
`Jeffrey Liang
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`hbatts@sheppardmullin.com
`cponder@sheppardmullin.com
`jliang@sheppardmullin.gom
`
`PATENT OWNER:
`
`Daniel Young
`Chad King
`ADSERO IP LLC d/b/a
`SWANSON & BRATSCHUN LLC
`dyoung@adseroip.com
`chad@adseroip.com
`
`21
`
`

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