Fallon et al

Patent Trials and Appeals Board

May 27, 2020

IPR2019-01280 (P.T.A.B. May. 27, 2020)

Trials@uspto.gov Paper 6
571.272.7822 Date: May 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

NETFLIX, INC., and COMCAST CABLE COMMUNICATIONS, LLC,
Petitioner,

v.

REALTIME ADAPTIVE STREAMING LLC,
Patent Owner.
_______________

IPR2019-002091
Patent 7,386,046 B2
_______________

Before GEORGIANNA W. BRADEN, GREGG I. ANDERSON, and
CHRISTA P. ZADO, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

1 Comcast Cable Communications, LLC, which filed a petition in IPR2019-
01280, has been joined as a party to this proceeding.
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We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, we determine Petitioner has not shown by a
preponderance of the evidence that claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19,
21, 23, 24, 26, 27, 29–32, 34, and 35 of U.S. Patent No. 7,386,046 B2 are
unpatentable.
I. INTRODUCTION
A. Procedural History
Netflix, Inc., (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
an inter partes review of claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19, 21, 23, 24,
26, 27, 29–32, 34, and 35 of U.S. Patent No. 7,386,046 B2 (Ex. 1001, “the
’046 patent”). Realtime Adaptive Streaming LLC (“Patent Owner”) timely
filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Pursuant to
35 U.S.C. § 314(a), we instituted an inter partes review of all challenged
claims on all proposed grounds of unpatentability. See Paper 7 (“Dec. to
Inst.”), 34–35.
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 13, “PO Resp.”), to which Petitioner filed a Reply (Paper 17,
“Reply”). Patent Owner then filed a Sur-Reply (Paper 22, “PO Sur-Reply”).
An oral argument was held on February 18, 2020. A transcript of the
oral argument is included in the record. Paper 29 (“Tr.”).
B. Real Parties-in-Interest
Petitioner certifies that it, Netflix Streaming Services, Inc., and Hulu,
LLC are real parties-in-interest. Pet. 72. Additionally, joined Petitioner,
Comcast Cable Communications, LLC, certifies that it and Comcast
Corporation are real parties-in-interest. See IPR2019-01280, Paper 1, 72.
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C. Related Matters
Petitioner informs us of multiple pending district court proceedings
involving the ’046 patent, some of which involve Petitioner. Pet. 71–74.
Patent Owner informs us of five pending district court proceedings involving
the ’046 patent. Paper 3, 2 (Patent Owner’s Mandatory Notices).
D. The ’046 Patent
The ’046 patent was filed on February 13, 2001, and is titled
“Bandwidth Sensitive Data Compression And Decompression.” Ex. 1001,
code (54). The ’046 patent issued on June 10, 2008. Id. at code (45).
1. Written Description
The specification describes systems and methods directed to
“compressing and decompressing based on the actual or expected throughput
(bandwidth) of a system employing data compression and a technique of
optimizing based upon planned, expected, predicted, or actual usage.”
Ex. 1001, 7:53–56, 9:12–14. The ’046 patent states “dynamic modification
of compression system parameters so as to provide an optimal balance
between execution speed of the algorithm (compression rate) and the
resulting compression ratio, is highly desirable.” Id. at 1:51–54. The ’046
patent also states that it seeks to “provide[] a desired balance between
execution speed (rate of compression) and efficiency (compression ratio).”
Id. at 8:10–12. For example, where the speed of the encoder causes a
“bottleneck” because “the compression system cannot maintain the required
or requested data rates,” “then the controller will command the data
compression system to utilize a compression routine providing faster
compression . . . so as to mitigate or eliminate the bottleneck.” Id. at 13:46–
54. The ’046 patent discloses that it can resolve “bottlenecks” in the
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throughput of a system by switching between different compression
algorithms applied to data. Id. at 9:57–60.
One embodiment of the ’046 patent is shown in Figure 2, reproduced
below.

Figure 2, above, illustrates a method for providing bandwidth
sensitive data compression. Id. at 12:65–66. The data compression system
is initialized during a boot-up process after a computer is powered on and a
default compression/decompression routine is initiated (step 20). Id.
at 13:4–7. According to the ’046 patent, the default algorithm comprises an
asymmetrical algorithm, because asymmetric algorithms provide “a high
compression ratio (to effectively increase the storage capacity of the hard
disk) and fast data access (to effectively increase the retrieval rate from the
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hard disk).” Id. at 13:8–18. According to the ’046 patent, depending on the
access profile, it “is preferable to utilize an asymmetrical algorithm that
provides a slow compression routine and a fast decompression routine so as
to provide an increase in the overall system performance as compared to
performance that would be obtained using a symmetrical algorithm.” Id.
at 12:2–6. The ’046 patent notes that symmetric routines “compris[e] a fast
compression routine.” Id. at 14:2–4. In one embodiment, the ’046 patent
discloses a controller “tracks and monitors the throughput . . . of the data
compression system 12.” Id. at 10:40–42. When the throughput of the
system falls below a predetermined threshold, the system generates control
signals to enable/disable different compression algorithms. Id. at 10:42–45.
2. Illustrative Claims
As noted above, Petitioner challenges claims 1, 4, 8, 10, 11, 13, 14,
16, 17, 19, 21, 23, 24, 26, 27, 29–32, 34, and 35, with claims 1, 8, 11, 14, 17,
19, 23, 24, 26, 27, 29, 34, and 35 being independent. Independent claims 1
and 24 are illustrative of the challenged claims and are reproduced below:
1. A method comprising:
compressing data using a first compression routine providing a
first compression rate, wherein the first compression routine
comprises a first compression algorithm;
tracking the throughput of a data processing system to
determine if the first compression rate provides a
throughput that meets a predetermined throughput
threshold, wherein said tracking throughput comprises
tracking a number of pending requests for data
transmission; and
when the tracked throughput does not meet the predetermined
throughput threshold, compressing data using a
second compression routine providing a second
compression rate that is greater than the first compression
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rate, to increase the throughput of the data processing
system to at least the predetermined throughput level,
wherein the second compression routine comprises a
second compression algorithm.
Ex. 1001, 20:14–32.
24. A system comprising:
a data compression system for compressing and decompressing
data input;
a plurality of compression routines selectively utilized by the
data compression system;
a controller for tracking throughput and generating a control
signal to select a compression routine based on the
throughput,
wherein when the controller determines that the throughput
falls below a predetermined throughput threshold, the
controller commands the data compression engine to use
one of the plurality of compression routines to provide a
faster rate of compression so as to increase the throughput;
and
a plurality of access profiles, operatively accessible by the
controller, to determine a compression routine that is
associated with a data type of data to be compressed.
Id. at 23:37–53.
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E. Evidence of Record and Asserted Challenges to Patentability
Petitioner asserts the following grounds of unpatentability:
Claim( Challenged 35 U.S.C. §2 References/Basis
1, 4, 8, 10, 11, 13, 14,
16, 17, 19, 21, 23, 26,
27, 29–32, 34, and 35
103 Imai3 and Couwenhoven4
24 103 Imai, Couwenhoven, and Ishii5
Pet. 5.
Petitioner submits (i) the Declaration of James A. Storer, Ph.D.
(“Dr. Storer”) in Support of Petition for Inter Partes Review (Ex. 1003) and
(ii) the Declaration of Sylvia D. Hall-Ellis, Ph.D (“Dr. Hall-Ellis”) (Ex.
1017) regarding the public availability of certain prior art references. Patent
Owner submits the Declaration of Kenneth A. Zeger, Ph.D. (“Dr. Zeger”) in
Support of Patent Owner’s Response (Ex. 2001).
II. ANALYSIS
A. Legal Standards
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(September 16, 2011) (“AIA”), included revisions to 35 U.S.C. § 100 et seq.
effective on March 16, 2013. Because the ’046 patent issued from an
application filed before March 16, 2013, we apply the pre-AIA versions of
the statutory bases for unpatentability.
3 Japanese Patent Application Publication No. H11331305, published
Nov. 30, 1999 (Ex. 1004, with corresponding English translation Ex. 1005,
“Imai”).
4 U.S. Patent No. 5,596,602, issued Jan. 21, 1997 (Ex. 1008,
“Couwenhoven”).
5 U.S. Patent No. 5,675,789, issued Oct. 7, 1997 (Ex. 1007, “Ishii”).
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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) objective evidence of nonobviousness,
i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 17–18 (1966). “[I]t is error to reach a conclusion of
obviousness until all [the Graham] factors are considered.” Apple v.
Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc)
(citations omitted). “This requirement is in recognition of the fact that each
of the Graham factors helps inform the ultimate obviousness determination.”
Id.
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review). Furthermore, Petitioner cannot satisfy its burden of
proving obviousness by employing “mere conclusory statements.” In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
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Thus, to prevail in an inter partes review, Petitioner must explain how
the proposed combinations of prior art would have rendered the challenged
claims unpatentable. At this final stage, we determine whether a
preponderance of the evidence of record shows that the challenged claims
would have been obvious over the cited prior art.
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 person who is presumed to have known the
relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573,
1579 (Fed. Cir. 1995). The level of ordinary skill in the art may be reflected
by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001). Factors that may be considered in determining the level of
ordinary skill in the art include, but are not limited to, the types of problems
encountered in the art, the sophistication of the technology, and educational
level of active workers in the field. GPAC, 57 F.3d at 1579. In a given case,
one or more factors may predominate. Id. Generally, it is easier to establish
obviousness under a higher level of ordinary skill in the art. Innovention
Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A
less sophisticated level of skill generally favors a determination of
nonobviousness . . . while a higher level of skill favors the reverse.”).
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Petitioner argues that a person of ordinary skill in the art relevant to
the ’046 patent would have had “a bachelor’s degree in electrical
engineering, computer science, or a similar field with at least two years of
experience in data compression” or “a master’s degree in electrical
engineering, computer science, or a similar field with a specialization in data
compression.” Pet. 6. Petitioner relies on the Declaration of Dr. Storer to
support its contentions. Dr. Storer proffers the same level of skill as that
argued by Petitioner but also states that “[a] person with less education but
more relevant practical experience may also meet this standard.” Ex. 1003
¶ 65.
Patent Owner does not contest Petitioner’s definition of a person of
ordinary skill in the art, but rather adopts it “[f]or purposes of this IPR
proceeding.” PO Resp. 8. Dr. Zeger also adopts Petitioner’s definition of a
person of ordinary skill in the art for his analysis. Ex. 2001 ¶ 26.
Based on our review of the ’046 patent, the types of problems and
solutions described in the ’046 patent and cited prior art, and the testimony
of Dr. Storer and Dr. Zeger, we find that a person of ordinary skill in the art
at the time of the claimed invention would have had “a bachelor’s degree in
electrical engineering, computer science, or a similar field with at least two
years of experience in data compression, or a master’s degree in electrical
engineering, computer science, or a similar field with a specialization in data
compression.”
C. Claim Construction
For petitions filed before November 13, 2018, we interpret the claims
of an unexpired patent that will not expire before issuance of a final written
decision using the broadest reasonable interpretation in light of the
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specification.6 See 37 C.F.R. § 42.100(b) (2018); Cuozzo Speed Techs., LLC
v. Lee, 136 S. Ct. 2131, 2144–46 (2016); see also Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11,
2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
Under that standard, claim terms are presumed to be given their ordinary and
customary meaning, as would have been understood by one of ordinary skill
in the art, in the context of the entire disclosure. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). To rebut this presumption by acting
as a lexicographer, the patentee must give the term a particular meaning in
the specification with “reasonable clarity, deliberateness, and precision.” In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Limitations, however, are
not to be read from the specification into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). In addition, the Board may not “construe
claims during [an inter partes review] so broadly that its constructions are
unreasonable under general claim construction principles.” Microsoft Corp.
v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (overruled by Aqua
Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) on other grounds).

6 The revised claim construction standard for interpreting claims in inter
partes review proceedings as set forth in the final rule published October 11,
2018, does not apply to this proceeding because the new “rule is effective on
November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
or after the effective date.” Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51340 (Oct. 11, 2018) (now codified at 37 C.F.R. §
42.100(b) (2019)).
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Our review does not identify any term whose construction is
necessary to our analysis. Accordingly, we decline to construe any claim
terms of the ’046 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need
only construe terms ‘that are in controversy, and only to the extent necessary
to resolve the controversy.’”).

D. Alleged Obviousness of Claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19, 21, 23,
26, 27, 29–32, 34, and 35 of the ’046 patent in View of Imai and
Couwenhoven
Petitioner contends claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19, 21, 23,
26, 27, 29–32, 34, and 35 of the ’046 patent are unpatentable under
35 U.S.C. § 103 as obvious in view of Imai and Couwenhoven. Pet. 12–66;
Reply 1–22. Patent Owner disputes Petitioner’s contentions. PO Resp. 14–
41; Sur-Reply 1–14. For reasons that follow, we determine Petitioner has
not established by a preponderance of the evidence that claims 1, 4, 8, 10,
11, 13, 14, 16, 17, 19, 21, 23, 26, 27, 29–32, 34, and 35 of the ’046 patent
are unpatentable under 35 U.S.C. § 103 as obvious in view of Imai and
Couwenhoven.
1. Overview of Imai (Ex. 1005)
Imai is a Japanese Patent Application7 titled “Transmitting apparatus
and transmitting method, receiving apparatus and receiving method, as well

7 The original application is in Japanese and provided in the record as
Exhibit 1004. A certified English language translation of Imai is provided in
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as providing medium.” Ex. 1005, Title. Imai is related to encoding and
transmitting digital signals to the receiving side where they are decoded and
reproduced in real time. Ex. 1005 ¶ 1. According to Imai, real time
encoding, transmitting, and decoding can present several problems. Id.
¶¶ 3–5. For example, the transmission rate of the network can vary and drop
below the data rate of the coded data, which leads to the encoded digital
signals arriving too late. Id. ¶ 3. The hardware capabilities or decoding
method of the receiving device can also slow down real time decoding of the
received signals. Id. ¶ 4. To address these problems, Imai includes a
plurality of coding methods and selects the appropriate coding method to
encode the digital signals, or part of the digital signals, based on certain
relevant factors. Id. ¶ 7. The digital signals Imai is particularly concerned
with are audio signals, and the plurality of coding methods can include
PCM, ADPCM, layers 1, 2, 3, of MPEG, ATRAC, ATRAC2, and HVXC.
Id. ¶ 67. The factors that can affect which coding method is used include the
processing capability of the receiving device (see id. at Fig. 9, ¶¶ 88–99),
transmission rate of the network (see id. ¶¶ 145–166), and the audio content
of the audio signals (see id. ¶¶ 101–102). For example, Imai describes a
situation where the audio signal is predominantly voice, in which case
HVXC may be appropriately used as the coding method. Id. ¶ 102. On the
other hand, if the audio signal is predominantly instrument sounds, then
ATRAC may be appropriately used as the coding method. Id.

the record as Exhibit 1005. All citations to Imai in the Petition, Patent
Owner Response, and this Decision are made to Exhibit 1005.
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One embodiment of a coding unit in Imai is illustrated in Figure 5,
reproduced below.

As shown above in Figure 5, Imai’s coding unit encodes audio signals using
a chosen encoder 531-53N. Id. ¶ 66, Fig. 5. According to Imai, the encoders
are constructed to encode the audio signal with different coding methods
from each other. Id. ¶ 67. Selection instructing unit 55 then decides the
appropriate coding methods corresponding to encoders 531 to 53N, and
instructs encoding selecting circuit 56 to select the decided coding method.
Id. ¶ 70. Imai discloses that switch 52 may be changed midway through a
sequence of continued encoding of the audio signal; so one portion of the
audio signal is encoded with one coding method while another part of the
audio signal is encoded with another coding method. Id. ¶ 72. Imai further
discloses that header inserting circuit 54 adds, to the coded data of each
frame, an ID indicating the coding method selected to encode the frame. Id.
The coded data added with the ID in header inserting circuit 54 is supplied
to multiplexing unit 42 and transmitted to a client. Id. ¶ 74.
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Another embodiment of a coding unit in Imai is illustrated in
Figure 16, reproduced below. See, e.g., id. ¶¶ 165–171.

As shown above in Figure 16, the audio signal is encoded into coded
data by encoders 531–53N and stored in storage 911–91N. Id. ¶ 167.
According to Imai, when a request for an audio signal is issued from client
terminal 3, encoding selecting circuit 56 controls read-out unit 92 in
accordance with an instruction based on the encoding schedule provided
from selection instructing unit 55. Id. ¶ 169.
2. Overview of Couwenhoven (Ex. 1008)
Couwenhoven is a U.S. Patent titled “Data Compression Rate Control
Method And Apparatus.” Ex. 1008, code(54). Couwenhoven is related to
data compression, specifically controlling a fixed rate output of a variable
rate data compression module that is capable of operating in a number of
different configurations, where the bit rate for each configuration may be
controlled over some finite range by a control signal supplied by a rate
controller. Ex. 1008, 1:18–24. According to Couwenhoven, “in many
applications the transmission channel is a fixed rate link, which means that a
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method of coupling the output of the variable rate data compression module
into the fixed rate channel is required.” Id. at 1:42–45.
One embodiment of Couwenhoven is shown in Figure 1, reproduced
below.

Couwenhoven discloses, with reference to Figure 1, that a known solution in
the prior art is to provide rate buffer 14 and rate controller 20 “which feeds a
control signal S on line 22 back to the compression module, modifying its
output bit rate.” Id. at 1:60–62. Couwenhoven also teaches that the overall
performance of a compression technique can be characterized by a rate
distortion curve. Id. at 2:5–7. “For a rate controlled compression technique,
the value of the control signal S is correlated with the bit rate 20 and signal
distortion that the compression technique delivers, and hence defines the
point on the rate distortion curve where the compression technique will
perform.” Id. at 2:18–22. Couwenhoven further teaches that “more
advanced compression techniques will often contain several distinct
operating configurations, each of which is designed to achieve a certain
average bit rate or distortion level.” Id. at 2:41–44. Thus, “[t]he task of the
rate controller in a more advanced compression technique with multiple
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configurations now becomes more complex, as the rate controller must
determine when it is appropriate to switch between the available
configurations as well as modulate the bit rate within a given configuration.”
Id. at 2:57–62.
Another embodiment of Couwenhoven is shown in Figure 5,
reproduced below.

Couwenhoven notes, with reference to Figure 5, that “[s]witching between
these configurations based on the fill conditions of the buffer is effective at
controlling the rate, but is not optimal from a rate distortion standpoint due
to the fact that different sources will produce different sets of rate distortion
curves.” Id. at 3:4–9. Couwenhoven notes that “discontinuous jumps in the
bit rate will make the process more difficult to control, and discontinuous
jumps in the reconstructed signal quality are undesirable.” Id. at 3:14–17.
To address these problems, Couwenhoven provides
a data compression system that can operate in a number of
different configurations, and wherein the bit rate produced by a
given configuration can be controlled over some finite range by
a control signal from a rate controller for smoothly transitioning
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between the configurations so that discontinuous jumps in bit
rate and distortion are minimized.
Id. at 3:29–35. The system in Couwenhoven accomplishes this “by
determining thresholds on the feedback control signals, the thresholds being
used to determine when to switch in or out of each configuration; the
thresholds furthermore being determined from the intersection points of the
rate distortion curves for the available configurations.” Id. at 3:35–40.
Couwenhoven discloses two “major advantages” of this solution. “[F]irst,
since the output bit rate of the compression technique now varies smoothly
across the mode transition boundary, then the controllability of the
compression technique is increased.” Id. at 3:51–54. “Secondly, the
distortion level also varies smoothly across the mode transition boundary, so
the configuration transition is not perceived as a discontinuous jump in the
quality of the reconstructed signal.” Id. at 3:54–57. This second advantage
is especially significant “when the source is image data, as the human
observer will not detect the configuration transition as a quality change in
the reconstructed image.” Id. at 3:59–61. The Couwenhoven system
accomplishes this by determining minimum (SMIN) and maximum (SMAX)
values of the control signal for each configuration from the intersection
points of the rate distortion curves. Id. at 5:61–65. “If the value of the
control signal becomes less than the minimum value or greater than the
maximum value, then the rate controller changes the configuration
appropriately by changing the value of the configuration select signal C to
correspond to the new configuration.” Id. at 6:8–12. “Coincident with the
configuration change, the rate controller changes the value of the control
signals so that the performance point of the compression technique remains
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at the intersection point of the rate distortion curves of the old and new
configurations after the configuration change.” Id. at 6:12–17. According to
Couwenhoven, “[t]his ensures that the configuration change will not create
discontinuous jumps in the rate or distortion level of the reconstructed
signal, which is advantageous over the methods described in the prior art.”
Id. at 6:39–42.
3. Analysis of Cited Art as Applied to Independent Claim 1
a. “compressing data using a first compression routine providing a
first compression rate, wherein the first compression routine
comprises a first compression algorithm”
Independent claim 1 recites “compressing data using a first
compression routine providing a first compression rate, wherein the first
compression routine comprises a first compression algorithm.”
Ex. 1001, 20:15–18.
Petitioner contends Imai teaches this limitation, because Imai
discloses “a plurality of coding methods corresponding to the encoders 531
to 53N” and “[a person of ordinary skill in the art] would have understood
that Imai’s encoders compress data because they represent data using fewer
bits, and because they include MPEG and other well-known compression
standards.” Pet. 21–22 (citing Ex. 1005, Fig. 5 and ¶¶ 65–72; Ex. 1003
¶ 118).
Although Patent Owner disputes Petitioner’s challenge to independent
claim 1, Patent Owner does not address specifically this limitation of the
claim. Nonetheless the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
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Based on the entire record before us, including Imai’s disclosure of “a
plurality of coding methods corresponding to the encoders 531 to 53N” (Ex.
1005 ¶¶ 65–72, Fig. 5), we determine Petitioner has shown by a
preponderance of the evidence that the combined teachings from Imai and
Couwenhoven satisfy the challenged claim limitation.
b. “tracking a number of pending requests for data
transmission”
Claim 1 recites “tracking the throughput of a data processing system
to determine if the first compression rate provides a throughput that meets a
predetermined throughput threshold, wherein said tracking throughput
comprises tracking a number of pending requests for data transmission.”
Ex. 1001, 20:23–25.
Petitioner contends Couwenhoven teaches this limitation, because
Couwenhoven discloses “tracking the number of units in the rate buffer that
are pending transmission across the channel” and “[a person of ordinary skill
in the art] would have understood that each unit of data in the rate buffer is a
request for data transmission because the data was placed in the buffer for
the purpose of being transmitted across the channel.” Pet. 25 (citing
Ex. 1008, Fig. 1, 1:54–62, 4:43–47, 8:1–5; Ex. 1003 ¶ 135). Petitioner
argues that the items in Couwenhoven’s buffer are “units of data.” Reply 5
(citing Ex. 2002, 38:9–19). According to Petitioner, “[b]y placing a data
unit in the buffer, the system is requesting for the data unit to be transmitted
across the channel.” Pet. 25 (citing Ex. 1003 ¶ 135). Petitioner relies on the
testimony of Dr. Storer to support its position. Dr. Storer testifies that “[t]he
amount of data or number of data units in the buffer represent the number of
pending requests for transmission across the channel.” Ex. 1003 ¶ 135.
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Petitioner also contends that the units of data can be packets of data,
where the packets are pending transmission. Tr. 9:13–22; Reply 5–6 (citing
Ex. 1003 ¶ 135). Petitioner then argues a person of ordinary skill in the art
at the time of the ’046 patent “would have found it obvious for units of data
in Couwenhoven’s rate buffer to be the size of packets when combined with
Imai’s teachings of a packetized network.” Reply 5–6 (citing Ex. 2002,
46:15–47:12, 82:21–83:14, 53:22–54:10, 55:22–56:6, 57:7–13). Dr. Storer
further testifies that “each buffered data packet is a pending request for data
transmission and Couwenhoven teaches tracking the buffered requests.”
Ex. 1003 ¶ 135. According to Petitioner, “[t]racking the number of pending
requests for data transmission refers to ‘track[ing] the number that are ready
to go out.’” Reply 12 (citing Ex. 1003 ¶ 135; Ex. 2002, 19:15–23).
Petitioner specifically argues that “[f]or packets, this includes tracking the
number of packets in the output buffer that have been filled to the
‘maximum transmission unit’ (MTU) and are ‘ready to go out’—each such
packet is a pending request for data transmission.” Id. (citing Ex. 2002,
47:9–12; 57:15–23, 18:18–20:5).
Petitioner further contends that Couwenhoven’s rate controller
monitors the fill conditions of its rate buffer and creates a control signal S
and a configuration select signal C, which are fed back to compression
module 10. Tr. 8:7–11 (citing Ex. 1008, 4:41–54, Fig. 1). According to
Petitioner, Cowenhoven’s compression module is responsive to the signals
generated by the rate controller and results in changes to its compression
rate. Id. at 8:12–14. Petitioner again relies on Dr. Storer, who testifies:
Monitoring buffer occupancy measures compression rate
because, with the fixed transmission rate systems taught by
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Couwenhoven (Ex. 1008, 1:41–45, 1:54–58, 4:41–46, 31:2–22,
32:9–26), the buffer is emptied at a fixed rate, meaning the
number of pending transmission requests in the buffer depends
on the rate at which the compressor can fill it. Couwenhoven
thus teaches using a rate buffer to measure throughput based on
the amount of input data a compressor can compress and make
available to the rate buffer for data transmission per unit of time
at a given compression ratio.
Ex. 1003 ¶ 137.
Petitioner analogizes Couwenhoven’s module 10 to the ’046 patent’s
teaching regarding controller 11 (Reply 3 (citing Ex. 1001, 9:53–60, 10:40–
45)) and argues that “[i]n both cases, a controller in the transmitter tracks
pending requests for data transmission, based the fullness or emptiness of
the output buffer, and changes the configuration of the encoder for rate
control purposes” (id. at 3–4 (citing Ex. 2002, 23:7–25:6, 59:17–22, 41:15–
42:10)).
Patent Owner contests Petitioner’s reliance on Imai and Couwenhoven
to meet the limitations of claim 1 for several reasons. PO Response 16–28.
Patent Owner first contends “Couwenhoven never describes or defines a
‘unit of data’ in the rate buffer.” Id. at 16–17. Patent Owner argues that the
number of units of data in Couwenhoven’s buffer do not equate to the
number of pending transmission requests because these two things are
different concepts and there is no necessary relationship between the two.
Id. at 18. According to Patent Owner, “a buffer could contain many units of
data and be subject to a single pending transmission request” and conversely
a “single unit of data in a buffer could be subject to multiple access requests
from a particular controller or multiple controllers.” Id. at 18–19 (citing Ex.
2001 ¶¶ 54–55). Patent Owner cites to the ’046 patent to support its
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position, because the specification describes that “the controller may track
the number of pending disk accesses (access requests) to determine whether
a bottleneck is occurring.” Id. at 20 (citing Ex. 1001, 13:44–47). Patent
Owner notes that the ’046 patent never discusses “units of data” or suggests
that it is a metric used for tracking throughput. Id. at 20. Patent Owner
contrasts the disclosure in the ’046 patent with the fact that Couwenhoven
does not describe pending transmission requests at all. PO Response 20.
Patent Owner next contends Couwenhoven does not disclose the
challenged limitation because it only teaches variable rate compression and
each item placed in the buffer is a variable length binary word. Id. at 20.
Patent Owner argues that Couwenhoven’s teachings are specific to a
variable rate compressor being output to a fixed rate buffer. Id. at 21 (citing
Ex. 2001 ¶¶ 58–62). According to Patent Owner, Couwenhoven’s buffers
are a means for achieving conversion from a variable rate sequence of
compressed data to a fixed rate sequence of transmitted data. Ex. 2001
¶¶ 69–74. Patent Owner then argues that “the number of items in the
Couwenhoven rate buffer (i.e. 7) does not indicate how full the buffer is.”
Id. at 23 (citing Ex. 2001 ¶ 73). Rather, per Patent Owner, Couwnhoven
teaches
keeping track of the “fill fraction” of the buffer (in this
example 10/20 = 0.5), not the number of items in the buffer
(i.e. 7). Id. Couwenhoven’s teaching would make sense to a
[person of ordinary skill in the art at the time of the invention]
since the number of bits in the buffer directly indicates how
likely it is to overflow, whereas the number of items in the buffer
does not.
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Id. Patent Owner argues that the person of ordinary skill in the art at the
time of the invention would have understood Couwenhoven’s “‘buffer fill
conditions’ or ‘buffer fill fraction’ to mean at most the fraction or percentage
of a buffer that is filled.” Id. at 25 (citing Ex. 2001 ¶ 84).
Patent Owner relies on the testimony of Dr. Zeger to support its
position. Dr. Zeger testifies that “buffer fill fraction” is
calculated as the number of bits (or bytes) of data in the buffer
divided by the maximum number of bits (or, respectively, bytes)
that could fit in the buffer. That is, the buffer fill fraction would
measure a quantity related to counting the number of bits (or
bytes) in it, not counting the number of items, or units of data,
(i.e. variable length binary codes) in the buffer.
Ex. 2001 ¶ 84. Dr. Zeger walks through Couwenhoven’s computer codes
for calculating the “buffer fill fraction.” See id. ¶¶ 84–88. Dr. Zeger further
testifies that Couwenhoven’s “buffer fill fraction is taught to be a number
between 0 and 1,” “indicat[ing] that the monitored buffer fill conditions
count how many bits are in the buffer pending transmission, not the number
of items of units of data (i.e. variable length binary codes).” Id. ¶¶ 89–90
(citing Ex. 1008, 6:48–50).
Petitioner contends Patent Owner’s variable rate argument is
irrelevant. Reply 11–13. Petitioner first argues that the units of data in
Couwenhoven’s output buffer are subdivided into packets. Id. at 12.
Petitioner then argues that “[t]racking the number of pending requests for
data transmission refers to ‘track[ing] the number that are ready to go out’”
and that “[f]or packets, this includes tracking the number of packets in the
output buffer that have been filled to the ‘maximum transmission unit’
(MTU) and are ‘ready to go out’—each such packet is a pending request for
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data transmission.” Id. (citing Ex. 1003 ¶ 135; Ex. 2002, 18:18–20:5,
19:15–23, 47:9–12; 57:15–23). Petitioner next argues that Couwehoven
establishes a threshold number that is monitored and such threshold is
comparable to tracking a number because Couvehoven must be tracking an
explicit number in order to determine if the threshold is met. Tr. 16:17–
17:11. Petitioner further notes that if the threshold is not met, then the
encoder configuration and compression rate are changed. Id.
We find that Couwenhoven monitors the rate at which its output
buffer fills and the output data could be subdivided into packets. We do not
agree, however, that Couwenhoven’s teachings regarding the items in its
output buffer would be understood by a person of ordinary skill in the art to
qualify as a “tracking a pending number of requests for data transmission” as
required by the challenged claim limitation. Rather, we understand
Couwehoven to teach the monitoring of the fill rate fraction for its output
buffer, which would neither provide an indication of the exact number of
items in the buffer nor the exact number of pending requests for data.
Couwenhoven is directed at ensuring that its output buffer does not overflow
and, therefore, only monitors the fill rate and fill percent. Monitoring these
characteristics of Couwenhoven’s output buffer does not require the tracking
of a specific quantity or number of pending requests. Petitioner presents
insufficient evidence that a person of ordinary skill in the art would
understand how to correlate the items in Couwenhoven’s output buffer with
an exact number of pending requests for data transmission. The plain
language of the claim requires the “tracking a number,” not tracking of a
different qualitative property or a faction of a buffer. Testimony from both
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Dr. Zeger and Dr. Storer supports the reading of the claim to mean tracking
or recording a specific number. See Ex. 2001 ¶ 73; Ex. 2002, 18:23–19:1.
Accordingly, we determine Petitioner has not shown by a
preponderance of the evidence that Couwenhoven’s disclosure of “tracking
the number of units in the rate buffer that are pending transmission across
the channel” satisfies the challenged claim limitation.
c. “when the tracked throughput does not meet the predetermined
throughput threshold, compressing data using a second
compression routine providing a second compression rate that
is greater than the first compression rate, to increase the
throughput of the data processing system to at least the
predetermined throughput level”
Claim 1 recites “when the tracked throughput does not meet the
predetermined throughput threshold, compressing data using a second
compression routine.” Ex. 1001, 20:25–32. Petitioner contends this
limitation is met by “at least three disclosures” in Couwenhoven, specifically
(1) the prior art teachings, (2) the disclosed rate controls, and (3) the
disclosed danger thresholds to guard against overflow and underflow.
Pet. 27–37 (citing Ex. 1003 ¶¶ 138–154; Ex. 1008, 1:59–2:4, 3:36–38, 4:43–
54, 5:24–30, 32:9–26, 3:36–38).
Patent Owner contends the combined teachings of Imai and
Couwenhoven fail to meet this challenged limitation for several reasons. PO
Resp. 28–32.
As discussed previously, we find that Petitioner fails to demonstrate
that Couwenhoven teaches “tracking throughput” because it does not teach
“tracking a number of pending requests for data transmission.” See supra,
Section II.D.3.b. Because Couwenhoven does not teach “tracked
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throughput,” it cannot teach compressing data in response to said tracked
throughput failing to meet a predetermined throughput threshold.
Accordingly, we determine Petitioner has failed to establish by a
preponderance of the evidence that Imai and Couwenhoven must respond
“when the tracked throughput does not meet the predetermined throughput
threshold, [by] compressing data using a second compression routine
providing a second compression rate that is greater than the first
compression rate” as required by the challenged claim.
d. “wherein the second compression routine comprises a second
compression algorithm”
Claim 1 recites “wherein the second compression routine comprises a
second compression algorithm.” Ex. 1001, 20:32–33.
Petitioner contends Imai teaches this limitation, because Imai
discloses “Imai’s encoders 531 to 53N employ ‘different coding methods
from each other’ including different algorithms such as MPEG layers 1, 2, 3;
ATRAC; ATRAC 2; HVXC; and ‘various coding methods’” and “[a person
of ordinary skill in the art] would have understood that Imai’s ‘encoders’ use
compression routines to compress data, and that the different encoders
include different compression algorithms.” Pet. 37–38 (citing Ex. 1005
¶¶ 67–71, 172; Ex. 1003 ¶¶ 156–159).
Patent Owner does not address specifically this limitation of
independent claim 1, but nonetheless the burden remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Having reviewed the entirety of the record and cited evidence, we
determine Petitioner has shown Imai’s disclosure of “different algorithms
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such as MPEG layers 1, 2, 3; ATRAC; ATRAC 2; HVXC” satisfies the
challenged claim limitation. See Ex. 1005 ¶¶ 67–71, 172.
e. Summary regarding Independent Claim 1
Based on the foregoing, we conclude Petitioner has not demonstrated
by a preponderance of the evidence that challenged independent claim 1
would have been obvious under 35 U.S.C. § 103 in view of the combined
teachings of Imai and Couwenhoven.
4. Analysis of Cited Art as Applied to Independent Claims 8, 11, 14, 17,
19, 23, 26, 27, 29, 34, and 35
Petitioner contends independent claims 8, 11, 14, 17, 19, 23, 26, 27,
29, 34, and 35 of the ’046 patent are unpatentable under 35 U.S.C. § 103 as
obvious in view of Imai and Couwenhoven, and provides specific arguments
for each challenged claim. Pet. 38–66. Patent Owner does not address the
additional limitations of independent claims 8, 11, 14, 17, 19, 23, 26, 27, 29,
34, and 35, but states that Petitioner fails to meet its burden with regards to
these claims for the same reason as put forth for claim 1 above. PO
Resp. 38–41. Additionally, the burden nonetheless remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
We have considered carefully all arguments and supporting evidence
in light of the limitations recited in challenged independent claims 8, 11, 14,
17, 19, 23, 26, 27, 29, 34, and 35, including testimony from Dr. Storer (see
Ex. 1003 ¶¶ 170–241) and Dr. Zeger (see Ex. 2001 ¶¶ 147–148). Although
these claims do not depend from claim 1, they each require “tracking the
throughput of a data processing system” similar to claim 1. Therefore, for
the same reasons Petitioner fails to meet its burden with regards to claim 1,
we determine Petitioner fails to meet its burden with regards to these
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specific claims. Accordingly, we conclude Petitioner has failed to
demonstrate by a preponderance of the evidence that challenged claims 8,
11, 14, 17, 19, 23, 26, 27, 29, 34, and 35 would have been obvious under
35 U.S.C. § 103 in view of Imai and Couwenhoven.
5. Analysis of Cited Art as Applied to Dependent Claims 4, 10,
13, 16, 21 and 30–32
Petitioner contends dependent claims 4, 10, 13, 16, 21 and 30–32 of
the ’046 patent are unpatentable under 35 U.S.C. § 103 as obvious in view of
Imai and Couwenhoven and provides specific arguments for each challenged
claim. Pet. 51–52, 63–64 (citing Ex. 1003 ¶¶ 163–66, 230–32). Patent
Owner does not address the additional limitations of dependent claims 4, 10,
13, 16, 21 and 30–32, but states that Petitioner fails to meet its burden with
regards to these claims for the same reason as put forth for claim 1 above.
PO Resp. 39. Additionally, the burden nonetheless remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
We have considered carefully all arguments and supporting evidence
in light of the limitations recited in challenged dependent claims 4, 10, 13,
16, 21 and 30–32, including testimony from Dr. Storer (see Ex. 1003
¶¶ 162–167) and Dr. Zeger (see Ex. 2001 ¶¶ 147–148). Although these
claims do not all depend from claim 1, they each require “tracking the
throughput of a data processing system” similar to claim 1. Therefore, for
the same reasons Petitioner fails to meet its burden with regards claim 1, we
determine Petitioner fails to meet its burden with regards to these specific
claims. Accordingly, we conclude Petitioner has failed to demonstrate by a
preponderance of the evidence that challenged claims 4, 10, 13, 16, 21
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and 30–32 would have been obvious under 35 U.S.C. § 103 in view of Imai
and Couwenhoven.
6. Alleged Reasons to Combine the Teachings of Imai and
Couwenhoven
Petitioner contends a person of ordinary skill in the art would have
had many reasons to combine Imai and Couwenhoven. Pet. 13–18.
Petitioner provides distinct rationales to combine Imai with Couwenhoven’s
“embodiment-related teachings” and “prior art-related teachings.” Id. at 15.
Specifically, Petitioner argues that a person of ordinary skill in the art would
have had reason to combine the systems of Imai and Couwenhoven “because
they are directed to similar streaming media systems and naturally
complement each other.” Id. at 13 (citing Ex. 1003 ¶ 107). According to
Petitioner, a person of ordinary skill in the art would have been “motivated
to apply Couwenhoven’s teachings to Imai because Imai suggests the rate of
compression should be controlled, and Couwenhoven provides numerous
teachings for doing so.” Reply 17 (citing Ex. 1003 ¶ 109). Petitioner relies
on the testimony of Dr. Storer to support its position. Specifically, Dr.
Storer testifies that “the teachings of both references would have motivated
[a person of ordinary skill in the art] to combine the teachings to improve the
bit rate control of the combined system.” Ex. 1003 ¶ 107 (citing Ex. 1005
¶ 66; Ex. 1008 3:29–39).
Petitioner further contends that the respective teachings of Imai and
Couwenhoven “provide complimentary aspects of media streaming, with
Imai providing a plurality of selectable encoders and Couwenhoven
providing selection mechanisms for controlling throughput.” Reply 17
(citing Ex. 1003 ¶ 109). It is Petitioner’s position that a person of ordinary
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skill in the art would have “appreciated the synergistic benefits of the
combination, particularly for CPU constrained workloads on streaming
media servers.” Id. at 17–18 (citing Ex. 1003 ¶ 110).
Petitioner then contends Couwenhoven does not teach away from
multiple compressors. Id. at 18. Rather, according to Petitioner,
“Couwenhoven then proceeds to teach compression techniques with multiple
configurations, despite the increased complexity.” Id. (citing Ex. 1008,
2:57–62, 3:29–36). Petitioner argues that “[t]he combination of Imai and
Couwenhoven provides additional functionality, for example by selecting
optimal encoders based on content and CPU workload.” Id. (citing Ex. 1003
¶ 110).
Patent Owner contests Petitioner’s position, arguing that Petitioner
fails to provide an adequate rationale as to why a person of ordinary skill in
the art would have combined the system of Imai with Couwenhoven. PO
Resp. 32–38. Patent Owner first argues that a person of ordinary skill in the
art “would not have understood and found it obvious that switching between
configurations in Couwenhoven includes switching between compression
routines” because Couwenhoven never discloses nor suggest using (1)
separate compression routines or (2) more than one compression routine,
specifically DPCM. PO Resp. 34 (citing Ex. 2001 ¶ 128; Pet. 30).
Therefore, according to Patent Owner, a person of ordinary skill in the art
would not have had any reason to modify Couwenhoven from using one
compressor form using one compressor in different configurations to a
multi-compressor system like Imai. Id.
Patent Owner further contends a person of ordinary skill in the art
would not have been motivated to combine Couwenhoven’s specific rate
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control teachings with Imai’s system because Couwenhoven’s teachings are
inapplicable or incompatible with Imai. Id. at 35. Patent Owner argues that
“Couwenhoven teaches only one specific method of rate control, whose
applicability is limited to the very specific variable rate DPCM system to
which Couwenhoven is focused on.” Id. at 36 (citing Ex. 2001 ¶ 136).
Patent Owner then argues “there are no teachings in Couwenhoven for a
non-DPCM rate controller.” Id. at 36 (citing Ex. 2001 ¶¶ 138–141). In
particular, Patent Owner argues “Couwenhoven’s teachings about how rate
control is implemented (multiplying a DPCM difference signal by a control
signal S) is specific to DPCM and does not generally apply in other
compression systems.” Id. at 36 (citing Ex. 2001 ¶ 142; Ex. 1008, 8:13–15).
Patent Owner then contends Couwenhoven teaches away from using
multiple compressors because of concerns about additional complexity. Id.
at 35 (citing Ex. 1008, 2:57–62). Patent Owner then argues that a person of
ordinary skill in the art would have needed to “do substantial modification”
to Couwenhoven in order to apply it to Imai’s system. PO Resp. 38 (citing
Ex. 2001 ¶ 147). Patent Owner concludes that “[s]uch a system would go
beyond the teachings of Imai or Couwenhoven, and certainly not be
obvious.” Id.
We have considered carefully all arguments and supporting evidence
regarding the rationale for combining Imai and Couwenhoven. Given the
level of skill in the art at the time of the invention, we find that
Couwenhoven does not teach away from using multiple configurations.
Additionally, we find Imai and Couwenhoven both are directed to similar
purposes, such as encoding data for streaming media. Pet. 13 (citing Ex.
1003 ¶ 107). These reference, however, are directed to different problems
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and use different rate control systems. Specifically, Imai is directed to
providing coding methods that will provide coded data having a bit rate
corresponding to a detected transmission rate. Ex. 1005, Abstract, ¶ 146.
Couwenhoven, on the other hand, monitors its rate buffer in relation to fill
thresholds to determine when to switch compression configurations in order
to minimize discontinuous jumps in bit rate so that distortion is reduced.
Ex. 1008, 3:29–41, 3:46–50, 4, 43–46.
For its obviousness challenge, Petitioner appears to bring in
Couwenhoven to provide a more specific teaching of tracking throughput
using a throughput threshold for Imai’s system using compression
algorithms directed to image data blocks because Couwenhoven teaches use
of well-known compression techniques for image data compression. Id.
Dr. Storer testifies that “Imai suggests the rate of compression should be
controlled, and Couwenhoven provides numerous teachings for doing so.”
Ex. 1003 ¶ 109. Yet, Imai already provides a method whereby server 1 is
designed to detect the transmission rate so that it can change or alter the
encoding schedule in order to (1) use the most efficient encoder for a
particular data block and (2) not produce a bit rate higher than the detected
transmission of network 2. See Ex. 1004 ¶ 146, Fig. 1.
When questioned on this issue, Petitioner’s counsel argued that
Couwenhoven’s rate control solutions are simple, well-known in the art, and
easy to implement. Tr. 85:14–21. According to Petitioner, Imai’s method
involves round trip processing delays, so using Couwenhoven would provide
a tighter feedback loop that would enhance Imai. Tr. 85:21–5; see also
Ex. 1003 ¶ 109 (discussing Couwenhoven’s feedback loop). Thus,
Petitioner concludes that a person of ordinary skill in the art would have
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“found it obvious to use Couwenhoven’s teachings to select an encoder from
Imai’s plurality of encoders.” Pet. 14–15 (citing Ex. 1003 ¶ 109).
Even though a person of ordinary skill in the art could have applied
the teachings of Couwenhoven to Imai’s system, we find Petitioner’s
position lacking insofar as it fails to explain how Couwenhoven’s additional
steps of monitoring of a rate buffer in relation to fill thresholds for an output
buffer create a tighter feedback loop and why a person of ordinary skill in
the art would forego the explicit teachings of Imai. Given Imai’s express
teaching of controlling the rate of compression and providing its own
method of doing so, we do not agree with Petitioner’s position that a person
of ordinary skill would have been motivated to turn to Couwenhoven’s
monitoring of a rate buffer in relation to fill thresholds for an output buffer
for use with Imai’s system.
Based on the entirety of the record, we find Petitioner does not
provide sufficient rationale for why a person of skill in the art would have
combined the teachings from the cited prior art to arrive at the inventions
recited in the challenged claims. Accordingly, for this additional reason, we
determine Petitioner has not established by a preponderance of the evidence
that claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19, 21, 23, 26, 27, 29–32, 34, and
35 would have been obvious under 35 U.S.C. § 103 in view of Imai and
Couwenhoven.
E. Alleged Obviousness of Claim 24 of the ’046 patent in View of Imai,
Couwenhoven, and Ishii
Petitioner contends claim 24 of the ’046 patent is unpatentable under
35 U.S.C. § 103(a) in view of Imai, Couwenhoven, and Ishii. Pet. 70–71.
Patent Owner disputes Petitioner’s contentions. PO Resp. 41–46. For the
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reasons that follow, we determine Petitioner has not established by a
preponderance of the evidence that claim 24 would have been obvious under
35 U.S.C. § 103 in view of Imai, Couwenhoven, and Ishii.
1. Prior Art Overview
a. Overview of Imai (Ex. 1005)
See supra Section II.D.1.
b. Overview of Couwenhoven (Ex. 1008)
See supra Section II.D.2.
c. Overview of Ishii (Ex. 1007)
Ishii is a U.S. Patent titled “File Compression Processor Monitoring
Current Available Capacity And Threshold Value.” Ex. 1007, codes
(54), (57). Ishii discloses a file attribute controller that stores “control
information” for files “including the last access date, the number of accesses,
whether the file is already compressed or not and a search portion which
searches for files not yet compressed with low access frequency based on the
control information so as to select files to be compressed.” Id. at code (57).
One embodiment of Ishii’s system is illustrated in Figure 4,
reproduced below.
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Ishii’s file processing system comprises file compression
processor 100, user program 120, and file unit 130. Id. at 5:20–22. File
compression processor 100 provides automatic file compression and
decompression processing asynchronously with user program 120 for
disk 131 in the file unit 130. Id. at 5:23–26. File compression processor 100
comprises file status monitor portion 101, file search portion 102, file
compression method selection portion 104, file compression portion 105,
and file decompression portion 106. Id. at 5:32–36. Ishii’s file unit 130 is
controlled by file attribute controller 132. Id. at 5:38–39. File attribute
controller 132 contains file control information, including a list of file names
and directories, last access data, and the number of accesses of each file. Id.
at 5:51–54. When available capacity in the file unit becomes lower than a
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threshold value, files are compressed. Id. at 7:4–5. At step 220, a search for
files to be compressed is conducted based on the file control information of
file attribute controller 132. Id. at 7:6–8. File compression method selection
portion 104 selects the method with suitable compression ratio and
compression/decompression speed depending on the file access frequency
and data attribute. Id. at 7:16–20. Ishii discloses:
In selecting a data compression method, the file
compression method selection portion 104 selects the one
suitable for the applicable data attribute by checking the data
attribute held by the file attribute controller 132. Next, the access
frequency is determined from the last access date and the number
of accesses at the file attribute controller 132. The file
compression method with a shorter decompression time is
selected for files with higher access frequency and the file
compression method with a higher compression ratio is selected
for files with lower access frequency.
Id. at 7:21–31.
2. Analysis of the Prior Art as Applied to Independent Claim 24
Independent claim 24 recites similar limitations as claim 1 (albeit in
system form), with the additional limitation of “a plurality of access profiles,
operatively accessible by the controller, to determine a compression routine
that is associated with a data type of data to be compressed.” Ex. 1001,
23:51–53.
Petitioner contends Ishii teaches this additional limitation because
Ishii teaches “select[ing] an appropriate data compression method for
compression” based on the “access frequency and file type” of the file (data
type) to be compressed. Pet. 70 (citing Ex. 1007, 5:60–6:6; Ex. 1003 ¶ 255).
According to Petitioner, the “access frequency of a file [in Ishii] is
determined based on the last access date and the number of accesses for that
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file.” Id. (citing Ex. 1007, 5:54–6:6; Ex. 1003 ¶ 255). Thus, Petitioner
concludes that Ishii’s file control information teaches this element. Id.
(citing Ex. 1003 ¶ 255). Alternatively, Petitioner contends Ishii teaches this
limitation because Ishii teaches a classification system that assigns a
particular profile to data. Id. at 71 (citing Ex. 1007 5:54–59, 6:12–17).
Patent Owner contests Petitioner’s position, arguing that the proposed
combination does not satisfy the “access profile” limitation. PO Resp. 42–
43.
As discussed previously, see supra Section II.A.2, we determine that
“access profile” encompasses “information, such as the number or frequency
of reads or writes, that enables the controller to select a suitable compression
algorithm.” Based on the explicit disclosure in Ishii, we agree with
Petitioner that Ishii satisfies the additional limitation of “a plurality of access
profiles, operatively accessible by the controller, to determine a compression
routine that is associated with a data type of data to be compressed” as
recited in claim 24. See Ex. 1007, 5:54–6:6.
Claim 24 additionally recites “a controller for tracking throughput and
generating a control signal to select a compression routine based on the
throughput.” Ex. 1001, 23:51–53. For this limitation, Petitioner relies on its
arguments regarding claim 26, and indirectly its arguments regarding
claim 23. See Pet. 58, 70. Petitioner explicitly states that this limitation
“can at least be satisfied by ‘tracking a number of pending requests for data
transmission.’” Pet. 58.
As discussed previously, we find Petitioner fails to demonstrate that
Couwenhoven teaches “tracking a number of pending requests for data
transmission.” See supra, Section II.D.3.b. Additionally, we also find
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Couwenhoven does not teach “tracked throughput.” See supra,
Section II.D.3.c. Accordingly, it cannot teach “a controller for tracking
throughput and generating a control signal to select a compression routine
based on the throughput” as required by claim 24.
3. Rationale to Combine Imai, Couwenhoven, and Ishii
As discussed previously in Section II.D.6, Petitioner contends one of
ordinary skill would have been motivated to combine the teachings of Imai
with Couwenhoven in order to extend Imai’s system to select an encoding
method based on tracking throughput, as taught by Couwenhoven. Pet. 13–
18. According to Petitioner, a person of ordinary skill in the art would have
been motivated to apply Ishii’s teachings related to file control information
to the encoder-selection process taught by Imai and Couwenhoven. Id.
at 66–70.
Patent Owner contests Petitioner’s position, arguing it provides almost
no evidence about (a) what the proposed combination is, (b) why a POSITA
would be motivated to make the combination, or (c) how the proposed
combination is supposed to work. PO Resp. 42–43 (citing Ex. 2001 ¶ 154).
We have considered carefully all arguments and supporting evidence
regarding the rationale for combining Imai and Couwenhoven with Ishii.
For the same reasons provided above in Section II.D.6, we determine
Petitioner does not provide sufficient rationale for why a person of skill in
the art would have combined the teachings from Imai and Couwenhoven,
and therefore does not provide sufficient rationale for making the
combination argued by Petitioner to arrive at the inventions recited in the
challenged claim. Accordingly, we determine Petitioner has not established
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by a preponderance of the evidence that claim 24 would have been obvious
under 35 U.S.C. § 103 in view of Imai, Couwenhoven, and Ishii.
III. CONCLUSION8
Based on the full record before us, we determine Petitioner has failed
to show by a preponderance of the evidence that claims 1, 4, 8, 10, 11, 13,
14, 16, 17, 19, 21, 23, 26, 27, 29–32, 34, and 35 of the ’046 patent would
have been obvious in view of Imai and Couwenhoven. In addition, we
determine Petitioner has not shown by a preponderance of the evidence that
claim 24 would have been obvious under 35 U.S.C. § 103 in view of Imai,
Couwenhoven, and Ishii. In summary:

8 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the
April 2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding, 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of
the challenged patent, we remind Patent Owner of its continuing
obligation to notify the Board of any such related matters in updated
mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35 U.S.C. § References/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 4, 8, 10,
11, 13, 14,
16, 17, 19,
21, 23, 26,
27, 29–32,
103 Imai,
Couwenhoven
1, 4, 8, 10, 11,
13, 14, 16, 17,
19, 21, 23, 26,
27, 29–32, 34,
and 35
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34, and 35
24 103 Imai,
Couwenhoven,
Ishii
24
Overall
Outcome
1, 4, 8, 10, 11,
13, 14, 16, 17,
19, 21, 23, 24,
26, 27, 29–32,
34, and 35
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not shown by a preponderance of the
evidence that claims 1, 4, 8, 10, 11, 13, 14, 16, 17, 19, 21, 23, 24, 26, 27,
29–32, 34, and 35 of the ’046 patent are unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

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PETITIONER: (Comcast Cable Communications, LLC):

James Day
Daniel Callaway
FARELLA BRAUN + MARTEL LLP
jday@fbm.com
dcallaway@fbm.com

PATENT OWNER in IPR2019-00209:

Philip X. Wang
C. Jay Chung
Reza Mirzaie
Neil A. Rubin
Kent N. Shum
RUSS AUGUST & KABAT
pwang@raklaw.com
jchung@raklaw.com
rmirzaie@raklaw.com
nrubin@raklaw.com
kshum@raklaw.com

For PETITIONER in IPR2019-00209 (Netflix):

Harper Batts
Chris Ponder
Jeffrey Liang
SHEPPARD MULLIN RICHTER & HAMPTON LLP
hbatts@sheppardmullin.com
cponder@sheppardmullin.com
jliang@sheppardmullin.com