Microsoft Corporationv.Bradium Technologies LLC

Patent Trial and Appeal Board

Dec 23, 2015

13027929 (P.T.A.B. Dec. 23, 2015)

Trials@uspto.gov
571-272-7822
Paper 15
Entered: December 23, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
MICROSOFT CORPORATION,
Petitioner,
v.
BRADIUM TECHNOLOGIES LLC,
Patent Owner.
____________
Case IPR2015-01435
Patent 8,924,506 B2
Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
MINN CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
Microsoft Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
requesting an inter partes review of claims 1–21 (the “challenged claims”)
of U.S. Patent No. 8,924,506 B2 (Ex. 1001, “the ’506 patent”). Bradium
Technologies LLC (“Patent Owner”) filed a Preliminary Response (Paper
12, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which provides that an inter partes review may not be
instituted unless the information presented in the Petition “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.” Upon consideration of the
Petition and the Preliminary Response, we conclude that the information
presented in the Petition does not establish a reasonable likelihood that
Petitioner would prevail in showing the unpatentability of any of the
challenged claims on the grounds set forth in the Petition. Accordingly, we
deny Petitioner’s request to institute an inter partes review of claims 1–21.
A. Related Proceedings
According to Petitioner, the ’506 patent is the subject of the following
pending patent infringement case: Bradium Techs. LLC v. Microsoft Corp.,
No. 1:15-cv-00031-RGA (D. Del.). Pet. 1–2. Petitioner has also filed
petitions for inter partes review in Microsoft Corp. v. Bradium Techs. LLC,
Cases IPR2015-01432 and IPR2015-01434, challenging U.S. Patent Nos.
7,139,794 B2 (“the ’794 patent”) and 7,908,343 B2 (“the ’343 patent”),
respectively. The ’506 patent issued from a continuation-in-part application
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of the application that resulted in the ’343 patent. The ’794 patent discloses
similar subject matter and claims the benefit of priority from the same set of
provisional applications as the ’343 and ’506 patents.
B. The ’506 Patent
The ’506 patent describes an image distribution system for retrieving
high-resolution or large-scale images from a network image server over a
limited-bandwidth communications channel for display on client devices,
where a user may navigate over the images displayed on the client device by
controlling a viewing frustum placed over the displayed images. See
Ex. 1001, Abstract; col. 1, ll. 29–34; col. 5, ll. 31–59. The retrieval of large-
scale or high-resolution images is achieved by selecting, requesting, and
receiving update image parcels relative to an operator or user controlled
image viewpoint. See id. at Abstract; col. 3, ll. 50–59. In an embodiment,
when the viewing frustum is changed by user navigation commands, the
client device determines the priority of the image parcels to be requested
from the server “to support the progressive rendering of the displayed
image,” and the image parcel requests are placed in a request queue to be
issued in priority order. See id. at col. 7, ll. 50–65.
On the server side, high-resolution source image data is pre-processed
by the image server to create a series of derivative images of progressively
lower resolution. See id. at col. 6, ll. 7–12. Figure 2 of the ’506 patent is
reproduced below.
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Figure 2 depicts preparation of pre-processed image parcels at the network
image server. See id. at col. 4, ll. 60–63; col. 5, ll. 60–63; col. 6, ll. 7–10.
As illustrated in Figure 2, source image data 32 is pre-processed to obtain a
series K1-N of derivative images of progressively lower image resolution. Id.
at col. 6, ll. 10–12. Initially, the source image data—i.e., the series image
K0—is subdivided into a regular array of image parcels of a fixed byte size,
e.g., 8K bytes. Id. at col. 6, ll. 12–17. In an embodiment, the resolution of a
particular image in the series is related to the predecessor image by a factor
of four while, at the same time, the array subdivision is also related by a
factor of four, such that each image parcel of the series images has the same
fixed byte size, e.g., 8K bytes. Id. at col. 6, ll. 17–22.
In another embodiment, the image parcels are compressed by a fixed
ratio—for example, the 8K byte parcels are compressed by a 4-to-1
compression ratio such that each image parcel has a fixed 2K byte size. Id.
at col. 6, ll. 23–28. This allows each image parcel to fit into a single
network data packet, which improves data delivery and avoids the
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transmission latency and processing overhead of managing image parcel
data broken up over multiple network data packets. See id. at col. 8, ll. 15–
22.
C. Illustrative Claim
Of the challenged claims, claims 1, 8, and 15 are independent. Claim
1 is illustrative of the challenged claims and is reproduced below:
1. A method of retrieving large-scale images over network
communications channels for display on a limited
communication bandwidth computer device, said method
comprising:
issuing, from a limited communication bandwidth
computer device to a remote computer, a request for an update
data parcel wherein the update data parcel is selected based on
an operator controlled image viewpoint on the computer device
relative to a predetermined image and the update data parcel
contains data that is used to generate a display on the limited
communication bandwidth computer device;
processing, on the remote computer, source image data to
obtain a series K1-N of derivative images of progressively lower
image resolution and wherein series image K0 being subdivided
into a regular array wherein each resulting image parcel of the
array has a predetermined pixel resolution wherein image data
has a color or bit per pixel depth representing a data parcel size
of a predetermined number of bytes, resolution of the series
K1-N of derivative images being related to that of the source
image data or predecessor image in the series by a factor of
two, and said array subdivision being related by a factor of two
such that each image parcel being of a fixed byte size;
receiving said update data parcel from the data parcel
stored in the remote computer over a communications channel;
and
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displaying on the limited communication bandwidth
computer device using the update data parcel that is a part of
said predetermined image, an image wherein said update data
parcel uniquely forms a discrete portion of said predetermined
image.

D. Asserted Grounds of Unpatentability
Petitioner asserts the following three grounds of unpatentability (Pet.
13–59):
Claims Challenged Statutory Basis Ground
1–21 § 103(a) Potmesil,1 Hornbacker,2 and
Lindstrom3 (Pet. 13–34, Ground 1)
1–3, 5–10, 12–17,
and 19–21
§ 103(a) Rutledge,4 Ligtenberg,5 and
Cooper6 (Pet. 34–58, Ground 2)
4, 11, and 18 § 103(a) Rutledge, Ligtenberg, Cooper, and
Hassan7 (Pet. 58–59, Ground 3)

1 Ex. 1002, Ex. A, Michael Potmesil, Maps Alive: Viewing Geospatial
Information on the WWW, Computer Networks and ISDN Systems Vol. 29,
No. 7, 1327–42 (Aug. 1997) (“Potmesil”).
2 Ex. 1003, WO 99/41675 (Aug. 19, 1999) (“Hornbacker”).
3 Ex. 1004, Peter Lindstrom et al., An Integrated Global GIS and Visual
Simulation System (“Lindstrom”).
4 Ex. 1006, U.S. Patent No. 6,650,998 B1 (Nov. 18, 2003) (“Rutledge”).
5 Ex. 1005, U.S. Patent No. 5,682,441 (Oct. 28, 1997) (“Ligtenberg”).
6 Ex. 1007, U.S. Patent No. 6,118,456 (Sept. 12, 2000) (“Cooper”).
7 Ex. 1008, U.S. Patent No. 5,940,117 (Aug. 17, 1999) (“Hassan”).
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The Petition also mentions four additional grounds which are not
discussed in the Petition but discussed only in the Declaration of William R.
Michalson (“Michalson Decl.,” Ex. 1009). See Pet. 12 (citing Ex. 1009
¶¶ 285–479). For the reasons discussed below in Section III.D, we will not
consider these additional grounds not presented in the Petition.
II. CLAIM CONSTRUCTION
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed
Tech., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015), reh’g en banc denied,
793 F.3d 1297 (Fed. Cir. 2015). Under the broadest reasonable
interpretation (BRI) standard, and absent any special definitions, claim terms
are given their ordinary and customary meaning, as would be understood by
one of ordinary skill in the art in view of the specification. In re Translogic
Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions
for claim terms or phrases must be set forth with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
Petitioner proposes that each claim term of the challenged claims be
construed to have its ordinary and customary meaning under the BRI
standard. Pet. 11. Patent Owner does not dispute Petitioner’s proposed
claim construction. Hence, we need not construe any claim terms expressly
for purposes of this Decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in
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controversy need to be construed, and only to the extent necessary to resolve
the controversy).
III. ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
A. Obviousness over Potmesil, Hornbacker, and Lindstrom
Petitioner contends claims 1–21 are unpatentable under 35 U.S.C.
§ 103(a) over the combination of Potmesil, Hornbacker, and Lindstrom. Pet.
13–34. Petitioner asserts that Potmesil, Hornbacker, and Lindstrom are prior
art to the ’506 patent under § 102(b). Id. at 11.
As an initial matter, Patent Owner notes that Lindstrom is undated and
contends that Petitioner has not met its burden to show Lindstrom qualifies
as printed publication prior art. Prelim. Resp. 4–9. In particular, Patent
Owner contends that Petitioner has not demonstrated Lindstrom was
publicly accessible prior to the critical date of the ’506 patent. Id. at 6–9.
Under 35 U.S.C. § 311(b), a petitioner in an inter partes review may
only challenge the claims of a patent based on “prior art consisting of patents
or printed publications.” 35 U.S.C. § 311(b). Petitioner has the initial
burden of production, i.e., “going forward with evidence,” to establish that
there is prior art that renders the claims unpatentable. See Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir.
2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327
(Fed. Cir. 2008)). As noted by Patent Owner, the Lindstrom article lacks
any indication on the face of the reference that may suggest the date or the
manner of its publication or dissemination. See Prelim. Resp. 4. Hence, it is
not clear from the face of Lindstrom whether it qualifies as prior art in an
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inter partes review. Thus, Petitioner must make a threshold showing that
Lindstrom is a prior art “printed publication[].” 35 U.S.C. § 311(b).
Whether a reference qualifies as a “printed publication” involves a
case-by-case inquiry into the facts and circumstances surrounding the
reference’s disclosure to members of the public. In re Klopfenstein, 380
F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference
was made “sufficiently accessible to the public interested in the art” before
the critical date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting
In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). A reference is
considered “publicly accessible” upon a satisfactory showing that the
document has been “disseminated or otherwise made available to the extent
that persons interested and ordinarily skilled in the subject matter or art
exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v.
ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citation and internal quotation
marks omitted). Often, the determination of public accessibility turns on
whether a reference is indexed and catalogued in a meaningful way. For
example, an uncatalogued and unshelved thesis in a university library,
notwithstanding its accessibility to a graduate committee, was not
sufficiently accessible to the public to constitute a printed publication within
the meaning of 35 U.S.C. § 102(b) because the “thesis could have been
located in the university library only by one having been informed of its
existence by the faculty committee, and not by means of the customary
research aids available in the library.” In re Bayer, 568 F.2d 1357, 1361–62
(CCPA 1978). In contrast, a dissertation shelved in the stacks and indexed
in the catalog at a university library was found to be a printed publication.
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In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). However, indexing and
cataloging must be prepared in a “meaningful” way, e.g., in relationship to
the subject matter of the references, to allow an interested researcher
exercising reasonable diligence to locate the prior art. See Cronyn, 890 F.2d
at 1161.
Although Petitioner asserts that Lindstrom is prior art under § 102(b)
(Pet. 11), the Petition does not discuss at all why that is the case. Instead,
when identifying Lindstrom as prior art, the Petition without any explanation
points to “associated” Exhibits 1013 and 1014, which are Declarations of Dr.
Peter Lindstrom (“Lindstrom Decl.”) and Mr. Charles Randall Carpenter
(“Carpenter Decl.”), respectively. See Pet. ii–iii, 3–4. We discuss each of
these Declarations in turn.
In his Declaration, Dr. Lindstrom states that he is the “lead author” of
the Lindstrom article. Ex. 1013 ¶ 3. Dr. Lindstrom also asserts that the
Lindstrom article was “published and made publicly accessible in 1997.” Id.
¶ 5. According to Dr. Lindstrom, the Lindstrom article was “published
online” as a GVU (Graphics, Visualization, and Usability Center at Georgia
Institute of Technology) Technical Report in 1997, and was “available to the
public . . . through the Georgia Tech website and File Transfer Protocol
(FTP) site.” Id. ¶ 4. Dr. Lindstrom further asserts that the Lindstrom article
“could be located by the general public through a search of the online
Georgia Tech catalog” or “through an Internet or web search engine.” Id.
Dr. Lindstrom, however, does not explain what the “online Georgia Tech
catalog” is or provide any supporting evidence regarding the online catalog.
Nor does he provide any evidence to support his assertion regarding public
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accessibility “through an Internet or web search engine” in 1997. Dr.
Lindstrom testifies that he checked the GVU FTP site in 1997 and observed
that the Lindstrom article was available for download from the site. Id.
None of this testimony was cited or discussed in the Petition itself. Hence,
we give no weight to Dr. Lindstrom’s testimony. See Google Inc. v.
ART+COM Innovationpool GmbH, Case IPR2015-00788, slip. op. at 10
(PTAB Sept. 2, 2015) (Paper 7) (citing 37 C.F.R. § 42.104(b)(5) (“The
Board may exclude or give no weight to the evidence where a party has
failed to state its relevance or to identify specific portions of the evidence
that support the challenge.”)).
Furthermore, the mere fact that the Lindstrom article was available on
the GVU FTP site is not sufficient to demonstrate the public accessibility of
the article because Dr. Lindstrom does not provide any evidence how the
interested members of the public could have found the FTP site in 1997 and,
upon finding it, navigated the site to locate the article—for example, whether
the FTP server contained an index or catalog to allow customary and
meaningful research. See SRI Int’l, Inc. v. Internet Security Sys., Inc., 511
F.3d 1186, 1194–97 (Fed. Cir. 2008) (holding that, although a paper on an
FTP server was available to anyone who knew how to find it, the FTP server
did not contain an index or catalogue or other tools for customary and
meaningful research, and, therefore, the paper was “not publicized or placed
in front of the interested public”).
The Lindstrom Declaration attaches two exhibits, Exhibits B and C,
which, according to Dr. Lindstrom, are copies of electronic mails “relating
to the publication of the Lindstrom Publication” he received in 1997 from
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Ms. Elaine Swobe, who was the GVU’s technical report coordinator at the
time. Ex. 1013 ¶¶ 7–10. None of these attachments is mentioned or
discussed in the Petition itself, nor is Dr. Lindstrom’s testimony regarding
the attachments cited or discussed in the Petition. Hence, we decline to give
any weight to Exhibits B and C or Dr. Lindstrom’s testimony regarding
them. See Google, Case IPR2015-00788, slip. op. at 10.
We also note that neither Exhibits B and C nor Dr. Lindstrom’s
testimony demonstrate public accessibility of the Lindstrom article. For
example, according to Dr. Lindstrom, Exhibit C shows “a message from Ms.
Swobe to the GVU Advisory Board, faculty, and 15 graduate students . . .
announcing the release and public availability of GVU Technical reports in
March and April of 1997, including the Lindstrom Publication.” Dr.
Lindstrom does not explain how this message demonstrates that the
Lindstrom article was accessible to the interested public. At most, Dr.
Lindstrom’s testimony indicates that the article was made accessible to
certain members of GVU, a research center within Georgia Institute of
Technology, including the Advisory Board, faculty, and graduate students of
GVU. This is not sufficient to demonstrate that the interested public, e.g.,
interested researchers outside GVU, exercising reasonable diligence could
have located the Lindstrom article at the relevant time. See Bayer, 568 F.2d
at 1361–62 (although accessible to a graduate committee, an uncatalogued
and unshelved thesis in a university library was not a printed publication
within the meaning of 35 U.S.C. § 102(b)). Further, although a list of
keywords appears in Exhibits B and C, neither the exhibits nor the
Lindstrom Declaration describe how the keywords were used or identify any
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other indexing that would lead a person exercising reasonable diligence to
the Lindstrom article.
Turning to the Carpenter Declaration, Mr. Carpenter states that he was
the Manager of the GVU Lab between 1994 and 1998. Ex. 1014 ¶ 3. In his
Declaration, Mr. Carpenter makes essentially the same assertions as those in
the Lindstrom Declaration regarding the alleged online publication of the
Lindstrom article via the GVU FTP site (see id. ¶¶ 6–7) and regarding the
same two electronic mails received from Ms. Swobe (attached as Exhibits B
and C) mentioned in the Lindstrom Declaration (see id. ¶¶ 15–17). In
addition, the Carpenter Declaration includes two other items of information:
a screen shot of a computer display showing the directory listing of the
directory on the GVU FTP server containing the files comprising the
Lindstrom article (id. ¶¶ 11–12); and a printout of an Internet Archive’s
“Wayback Machine” capture of the GVU Technical Reports website as of
June 28, 1998, which is attached as Exhibit D (id. ¶ 13). Similar to the
Lindstrom Declaration, none of these attachments, information, or testimony
is cited or discussed in the Petition itself. Hence, we give no weight to
Exhibits B, C, and D, or Mr. Carpenter’s testimony regarding them. See
Google, Case IPR2015-00788, slip. op. at 10; see also Hughes Network
Systems, LLC v. California Institute of Technology, Case IPR2015-00060,
slip. op. at 2–4 (PTAB Nov. 6, 2015) (Paper 20) (declining to consider
evidence and testimony regarding the date of publication of prior art on a
website, which are presented only in a declaration and not discussed at all in
the petition itself).
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Even if they were presented properly, the additional information and
testimony in the Carpenter Declaration do not demonstrate public
accessibility of the Lindstrom article. First, regarding Mr. Carpenter’s
assertion that the screen shot shows that the Lindstrom article and
accompanying figures were uploaded on May 8, 1997 to the directory on the
GVU FTP server captured in the screen shot (Ex. 1014 ¶¶ 11–12), the
testimony is directed to the assertion that the Lindstrom article was stored on
the GVU FTP server in May 1997, not the public accessibility of Lindstrom.
Mr. Carpenter does not explain how interested members of the public could
have found the GVU FTP site, navigated to the directory shown in the
screen shot, and located the Lindstrom article as being related to the subject
matter claimed in the ’506 patent among the dozens of files listed in the
screen shot. Hence, the screen shot and Mr. Carpenter’s testimony regarding
it fail to demonstrate that interested researchers exercising reasonable
diligence could have found the Lindstrom article before the critical date.
Next, Mr. Carpenter asserts that Exhibit D shows that the Lindstrom
article was publicly available as of June 1998. Id. ¶ 13. Mr. Carpenter
further testifies that he was the designer of the GVU Technical Reports
website and that the Wayback Machine capture of the website at
http://www.gvu.gatech.edu/gvu/reports/1997/ shown in Exhibit D is
consistent with his recollection of how the website would have appeared in
mid-1998. See id. ¶ 14. Mr. Carpenter also asserts that Exhibit D shows
that the Lindstrom article was available for download from the GVU website
in mid-1998. Id.
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The Carpenter Declaration, however, does not explain how a
researcher interested in the subject matter of the ’506 patent claims would
have found the GVU website prior to the critical date. Nor does Mr.
Carpenter explain how Exhibit D shows an interested researcher would have
located the Lindstrom article from the website. Assuming Exhibit D
accurately depicts how the GVU Technical Reports website would have
appeared in June 1998, the GVU website shows a listing of 25 papers
including the title and the author (or authors) for each paper. The papers
appear to be listed by a paper number that is unrelated to the subject matter
or the title of the paper. Id., Ex. D. In Cronyn, the Federal Circuit held that
indexing based on author’s name was not sufficient to render college thesis
papers publicly available, even when the title of the papers was listed along
with the author’s name in the index cards, because the indexing by name
bore “no relationship to the subject of [the papers].” Cronyn, 890 F.2d at
1161. Similarly, here, the listing of papers shown in Exhibit D by itself is
insufficient to demonstrate public accessibility of the Lindstrom article
without further evidence or explanation. The Carpenter Declaration does not
say anything about whether the GVU website was catalogued or indexed to
allow interested researchers to find the Lindstrom article based on the
subject matter of the paper or the ’506 patent claims. Mr. Carpenter also
says nothing about whether the keywords mentioned in Exhibits B and C
were used in connection with the GVU website. Thus, the Carpenter
Declaration does not present sufficient information to demonstrate that an
interested researcher exercising reasonable diligence could have found the
Lindstrom article before the critical date. See Groupon, Inc. v. Blue
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Calypso, LLC, Case CBM2013-00044, slip. op. 16–22 (PTAB Dec. 17,
2014) (Paper 47) (a technical report listed on a university department’s
website was not shown to be publicly accessible because the paper was only
available for viewing and downloading to members of the public who
happened to know that the paper was there, and insufficient evidence was
presented to establish the department’s webserver contained an index or
catalog, or any other tools for finding the paper based on the subject matter
of the paper).
In consideration of the above, we are not persuaded that Petitioner has
met its initial burden of production of evidence establishing that Lindstrom
is applicable as prior art. Therefore, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood that it would prevail in its challenge to
patentability of claims 1–21 under 35 U.S.C. § 103(a) as obvious over the
combination of Potmesil, Hornbacker, and Lindstrom.
B. Obviousness over Rutledge, Ligtenberg, and Cooper
Petitioner contends claims 1–3, 5–10, 12–17, and 19–21 are
unpatentable under 35 U.S.C. § 103(a) over the combination of Rutledge,
Ligtenberg, and Cooper. Pet. 34–58. We are not persuaded that Petitioner
has established a reasonable likelihood of prevailing on the asserted ground
for the reasons explained below.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
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person having ordinary skill in the art to which the 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) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
2. Analysis
Patent Owner asserts that the obviousness analysis presented in the
Petition is deficient because the Petition generally does not identify the
differences between the claims and the asserted references as required under
the Graham framework. Prelim. Resp. 12–14, 17–18. Patent Owner also
contends that the Petition does not adequately explain how the asserted
references are to be combined. Id. at 20–21. Patent Owner further contends
that the Petition is also deficient because the Petition omits the claim
language from the obviousness analysis and never links the actual terms of
the claim elements to any particular teaching of the asserted prior art
references. Id. at 31–34. Although Patent Owner argues that most of
Petitioner’s analysis suffers from these problems, for purposes of this
Decision, we focus on a limitation that is included in all claims and relates to
a significant aspect of the invention claimed in the ’506 patent.
Claims 1, 8, and 15
Independent claims 1, 8, and 15 all recite the following limitation (the
“common limitation”):
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resolution of the series K1-N of derivative images being related
to that of the source image data or predecessor image in the
series by a factor of two, and said array subdivision being
related by a factor of two such that each image parcel being of a
fixed byte size.
Ex. 1001, col. 12, ll. 47–52; col. 13, ll. 55–60; col. 14, ll. 57–62. For claim
1, Petitioner identifies this limitation as elements 1.H, 1.I, and 1.J.8
Ex. 1012, 1. Petitioner treats these elements separately as if they are three
distinct limitations, each describing or capturing a discrete feature or
concept. See Pet. 44–45. As discussed below, Petitioner’s analysis is
fundamentally flawed because the common limitation set forth above must
be considered as a whole. The reason is that the limitation captures a single
concept described in the Specification—a concept that can be understood
only when the limitation is considered as a whole. Petitioner’s omission of
the actual claim language in its analysis and using the labels (e.g., claim
elements 1.H, 1.I, or 1.J) in place of the claim language obscures the
problem underlying Petitioner’s approach and reinforces the erroneous
impression that the Petitioner-identified elements are separate and distinct
limitations.
As discussed above in Section I.B, the Specification of the ’506 patent
describes preparation of pre-processed images at the network image server,
where a source image data is pre-processed to obtain a series K1-N of
derivative images, which are subdivided into a regular array of image

8 Petitioner identifies the same limitation as elements 8.N, 8.O, and 8.P for
claim 8; and as elements 15.O, 15.P, and 15.Q for claim 15. Ex. 1012, 4, 6.
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parcels. Ex. 1001, col. 6, ll. 10–17. The resolution of a particular image in
the series of images is related to the predecessor image by a factor of four
while, at the same time, the array subdivision is also related by a factor of
four, such that each image parcel of the series images has the same fixed
byte size, e.g., 8K bytes. Id. at col. 6, ll. 17–22. For example, if the array
subdivision decreases by a factor of four from one image to the next one in
the series, the resolution would also decrease by a factor of four such that the
size of each image parcel would remain at the same fixed byte size. The
claim language of the common limitation quoted above essentially tracks
this disclosure in the Specification except that a factor of two is recited in
the claims instead of a factor of four mentioned in the Specification. Hence,
in view of the Specification, a person of ordinary skill would understand the
ordinary and customary meaning of the common limitation to be that, for
successive images in the series K1-N of images, the resolution and the array
subdivision are each related by a factor of two such that each image parcel
of the series images has the same fixed byte size. In other words, the
common limitation quoted above operates as a whole to capture the concept
of varying the resolution and array subdivision of the series images in
relation to each other so as to maintain the size of each image parcel at the
same fixed byte size. Thus, a proper obviousness analysis must address the
common limitation as an integral whole because the limitation describes a
single unitary concept that can only be understood when considering the
limitation as a whole.
Petitioner’s analysis, however, arbitrarily breaks up the common
limitation into three elements, e.g., elements 1.H, 1.I, and 1.J for claim 1,
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and treats each of them separately in isolation from each other. See Pet. 44–
45. For example, Petitioner asserts that the combination of Rutledge,
Ligtenberg, and Cooper teaches element 1.H (“resolution of the series K1-N
of derivative images being related to that of the source image data or
predecessor image in the series by a factor of two”), the combination of
Rutledge and Ligtenberg teaches element 1.I (“said array subdivision being
related by a factor of two”), and Ligtenberg teaches element 1.J (“such that
each image parcel being of a fixed byte size”). Id. However, Petitioner does
not address the meaning of the common limitation as a whole in view of the
Specification, nor does the Petition or the Michalson Declaration present any
discussion of how the combination of Rutledge, Ligtenberg, and Cooper
teaches the claimed feature of varying the resolution and the array
subdivision in relation to each other, so as to keep the image parcel size the
same for the series of images. See id.; Ex. 1009 ¶¶ 216–218. This is a basic
error fatal to Petitioner’s case. See Anchor Wall Sys., Inc. v. Rockwood
Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) (“[T]he claim
limitation, as a whole, [] must be considered in claim construction.”); United
States v. Telectronics, Inc., 857 F.2d 778, 781 (Fed. Cir. 1988) (holding that
district court’s interpretation of the term “avoid” based on the dictionary
definition without regard to the rest of the limitation was error). Because
Petitioner fails to address a significant feature recited in the claim, the
Petition fails to present a prima facie case of obviousness based on the
combination of Rutledge, Ligtenberg, and Cooper.
The Petition fails for additional reasons, including its failure to link
the actual terms of the claim element to a particular teaching of Rutledge,
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Ligtenberg, or Cooper. For example, Petitioner contends that Ligtenberg
teaches element 1.J because Ligtenberg teaches “the use of fixed size image
parcels, e.g., 64x64 or 128x128 pixel resolution parcels for each layer of
resolution.” Pet. 44–45 (citing Ex. 1005, Abstract; col. 1, ll. 42–56; col. 2,
ll. 31–38; col. 6, ll. 51–57; col. 13, ll. 30–37). However, Petitioner’s
argument does not match the actual claim term “such that each image parcel
being of a fixed byte size” to the teaching of Ligtenberg. Since the phrase
“such that” ties element 1.J to preceding elements 1.H and 1.I, a person of
ordinary skill would understand “each image parcel” recited in element 1.J
to mean “each image parcel of any image” of the series K1-N images in view
of the Specification and in the context of the common limitation as a whole.
In contrast, the cited portions of Ligtenberg at most teach that images are
divided into image tiles for some layer of resolution such that the image tiles
are of the same size within a particular resolution layer. See Ex. 1005,
Abstract (“decomposing the input image into a number of images at various
resolutions, subdividing at least some of these images into tiles (rectangular
arrays) . . . the tiles are 64x64 pixels or 128x128 pixels”); col. 6, ll. 55–56
(“the tile blocks are all of equal length in a given layer”) (emphases added).
Petitioner does not cite, nor do we discern, where in Ligtenberg the
reference teaches each image parcel having the same byte size for any
resolution layer or across all resolution layers, i.e., “each image parcel
being of a fixed byte size” for any image in the series images, as recited in
the claim.
The Michalson Declaration does not remedy the deficiency in the
Petition. Citing column 13, lines 30–37 of Ligtenberg, Dr. Michalson
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testifies that “[s]ince each tile in a layer has the same size (‘fTileSize’) . . . it
would be obvious that each image parcel could have the same fixed byte
size.” Ex. 1009 ¶ 218. However, the cited portion in column 13 of
Ligtenberg appears to be a listing of C language source code, which shows
that “fTileSize” is a variable for storing 16-bit integer values. See Ex. 1005,
col. 13, ll. 30–37 (“UInt16 fTileSize;”). Dr. Michalson does not cite any
disclosure in Ligtenberg that requires this value to remain constant for all
layers of resolution. Instead, Dr. Michalson asserts that “it would be
obvious that each image parcel could have the same fixed byte size” because
“using a fixed size . . . could improve predictability of the system” by
making “the caching process more straightforward.” Ex. 1009 ¶ 218
(emphases added). However, “obviousness concerns whether a skilled
artisan not only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
Nov. 5, 2015) (citing InTouch Technologies, Inc. v. VGO Communications,
Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Dr. Michalson justifies his
“could have” reasoning by making an analogy to stacking cubic boxes of the
same size in a room. Ex. 1009 ¶ 218. We are not persuaded by Dr.
Michalson’s testimony because it is conclusory and provides insufficient
explanation why a person of ordinary skill would have modified Ligtenberg
to teach the claimed feature, i.e., each image parcel having the same byte
size for any resolution layer or across all resolution layers. The lack of
adequate reasoning in Dr. Michalson’s testimony indicates that Dr.
Michalson relies on impermissible hindsight. See KSR, 550 U.S. at 421 (“A
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factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”);
Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)
(“Where, as here, the necessary reasoning is absent, we cannot simply
assume that ‘an ordinary artisan would be awakened to modify prior art in
such a way as to lead to an obviousness rejection.’ It is in such
circumstances, moreover, that it is especially important to guard against the
dangers of hindsight bias.” (citation omitted)); ActiveVideo Networks, Inc. v.
Verizon Communications, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012)
(“[T]he expert’s testimony on obviousness was essentially a conclusory
statement that a person of ordinary skill in the art would have known, based
on the ‘modular’ nature of the claimed components, how to combine any of
a number of references to achieve the claimed inventions. This is not
sufficient and is fraught with hindsight bias.”). Therefore, we are not
persuaded that Petitioner has demonstrated Ligtenberg teaches element 1.J,
“such that each image parcel being of a fixed byte size,” as recited in claim
1.
Lack of Sufficient Reasons to Combine
Furthermore, even if the elements are considered individually,
Petitioner does not explain adequately the reasons to combine the references
to teach elements 1.H, 1.I, and 1.J. An invention “composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” KSR, 550 U.S. at 418.
Petitioner must also show that there was a reason to combine those elements
to achieve the claimed invention with a reasonable expectation of success.
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See PAR Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir.
2014).
First, we note that not all combinations elements 1.H and 1.I satisfy
element 1.J, “such that each image parcel being of a fixed byte size.” For
example, if the resolution increased by a factor of two while the array
subdivision decreased by a factor of two from one image to the next in the
series of images, the byte size of the image parcels would increase by a
factor of four. In another example, reducing the resolution by a factor of
four while reducing the array subdivision by a factor of eight would increase
the byte size of the image parcels by a factor of two. In both examples,
elements 1.H and 1.I would be satisfied but not element 1.J because each
image parcel of the two successive images would not be of a fixed size as
required by the claim. Hence, in order to show that the combination of
Rutledge, Ligtenberg, and Cooper teaches the claimed feature of elements
1.H, 1.I, and 1.J, Petitioner must show how a person of ordinary skill would
be motivated to combine the references to teach varying the resolution and
array subdivision in a specific way, e.g., both decreasing by a factor of four,
“such that each image parcel [is] of a fixed byte size.”
Petitioner contends that Rutledge teaches element 1.H because
Rutledge discloses zoom layers, where each zoom layer can be a factor of
eight greater in scale from the preceding layer. See Pet. 44 (citing Ex. 1006,
col. 2, ll. 31–38; col. 4, ll. 41–47; col. 5, ll. 15–24, 50–64; Fig. 3). Petitioner
also asserts that Ligtenberg teaches element 1.H because the image layers of
Ligtenberg are related by a reduction of a factor of two. Id. (citing Ex. 1005,
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col. 2, ll. 9–22, 25–38, 56–62; col. 5, ll. 21–27, 34–53; col. 7, ll. 19–21;
col. 9, ll. 6–20; App. A).
Petitioner does not present a separate argument for element 1.I (“said
array subdivision being related by a factor of two”), but, instead, relies on its
arguments and evidence advanced for element 1.H. Id. However, the cited
portions of Ligtenberg include no disclosure regarding the array subdivisions
being related by a factor of two. See Ex. 1005, col. 2, ll. 56–62 (describing
reduction of resolution by a factor of two in each dimension). Furthermore,
Petitioner provides no explanation why Rutledge’s description of the “zoom
layers” being related by “a factor of eight . . . in scale” shows both the
resolution and the array subdivision being related by a factor of two. See
Pet. 44. In this regard, we discern no evidence or explanation presented in
the Petition that supports Petitioner’s contention that Rutledge teaches both
elements 1.H and 1.I. If anything, the cited passages of Rutledge appear to
relate to the array subdivisions for zoom levels corresponding to the scale in
a geographical map display, rather than the resolution of the map image
itself. See Ex. 1006, col. 5, ll. 15–24, 50–64; Fig. 3. Based on this record,
for purposes of this Decision, we accept that Petitioner relies on Ligtenberg
to teach element 1.H while Rutledge is relied upon to teach element 1.I. For
element 1.J, Petitioner argues that Ligtenberg teaches the element (Pet. 44–
45), which we find unpersuasive for the reasons discussed above.
Petitioner’s argument is also unpersuasive for a failure to articulate
adequate reasons to combine. As discussed above, Ligtenberg teaches
reducing the resolution by a factor of two in each dimension, i.e., a factor of
four, from one image to next in the series of layers, whereas Rutledge
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teaches varying the array subdivision by a factor of eight. Hence, when
combining these teachings without modification, the byte size of the image
parcels would increase by a factor of two, not maintained at a fixed size as
required by the claim. As discussed above, Petitioner does not contend that
there is express teaching in either Rutledge or Ligtenberg for varying the
resolution and the array subdivision in relation to each other so as to
maintain the byte size of each image parcel at a fixed byte size. Rather,
citing the testimony of Dr. Michalson, Petitioner contends that a person of
ordinary skill in the art “would have recognized the benefit of combining
Ligtenberg’s file format and fixed size compression as an implementation
choice in combination with the image download and view techniques taught
by Rutledge along with Cooper’s priority queue to efficiently use network
bandwidth and memory on a client device.” Id. at 45 (citing Ex. 1009
¶ 218). But this rationale does not address the feature claimed in elements
1.H, 1.I, and 1.J and, therefore, is not sufficient to provide an adequate
reason for why one of ordinary skill would combine the teachings of
Rutledge, Ligtenberg, and Cooper to teach varying the resolution and array
subdivision in relation to each other, e.g., both decreasing by a factor of
four, such that each image parcel is of a fixed byte size. Further, Dr.
Michalson’s testimony that “it would be obvious that each image parcel
could have the same fixed byte size” based on an analogy to stacking cubic
boxes of the same size in a room is unpersuasive because Dr. Michalson
fails to address the reasons for combining elements 1.H and 1.I in a specific
way such that each image parcel is of a fixed byte size. See Ex. 1009 ¶ 218
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(emphasis added). As discussed above, this failure indicates that Dr.
Michalson relies on impermissible hindsight.
Thus, the Petition fails to demonstrate that the combination of
Rutledge, Ligtenberg, and Cooper teaches the common limitation set forth
above. Although our discussion is focused on claim 1, the same analysis is
applicable to claims 8 and 15 because the common limitation is also recited
in those claims. Accordingly, on this record, the information presented in
the Petition does not demonstrate a reasonable likelihood of Petitioner
prevailing in its challenge to independent claims 1, 8, and 15 under 35
U.S.C. § 103(a) as obvious over the combination of Rutledge, Ligtenberg,
and Cooper.
Claims 2, 3, 5–7, 9, 10, 12–14, 16, 17, and 19–21
Claims 2, 3, and 5–7; 9, 10, and 12–14; and 16, 17, and 19–21 depend
from claims 1, 8, and 15, respectively. Petitioner’s arguments and evidence
presented with respect to these dependent claims do not remedy the
deficiencies in Petitioner’s analysis of the challenged independent claims.
Therefore, Petitioner fails to demonstrate a reasonable likelihood of
Petitioner prevailing in its challenge to claims 2, 3, 5–7, 9, 10, 12–14, 16,
17, and 19–21 under 35 U.S.C. § 103(a) as obvious over the combination of
Rutledge, Ligtenberg, and Cooper.
Dr. Michalson attaches as Appendix V a claim chart for claims 1–3,
5–10, 12–17, and 19–21, which cites various portions of Rutledge,
Ligtenberg, and Cooper without any explanation. See Ex. 1009 ¶ 282,
App. V. We decline to consider Appendix V, which is not discussed at all in
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the Petition or the Michalson Declaration. Accordingly, on this record, the
information presented in the Petition does not demonstrate a reasonable
likelihood of Petitioner prevailing in its challenge to claims 1–3, 5–10, 12–
17, and 19–21 under 35 U.S.C. § 103(a) as obvious over the combination of
Rutledge, Ligtenberg, and Cooper.
C. Obviousness over Rutledge, Ligtenberg, Cooper, and Hassan
Petitioner contends claims 4, 11, and 18 are unpatentable under 35
U.S.C. § 103(a) over the combination of Rutledge, Ligtenberg, Cooper, and
Hassan. Pet. 58–59. Claims 4, 11, and 18 depend from claims 1, 8, and 15,
respectively, and each further recite “the limited communication bandwidth
computer device further comprises one of a mobile computer system, a
cellular computer system, an embedded computer system, a handheld
computer system, a personal digital assistants and an internet-capable digital
phone and a television.” Petitioner relies on Hassan to teach the additionally
recited limitation of claims 4, 11, and 18. Id.
Petitioner’s arguments and evidence presented with respect to
dependent claims 4, 11, and 18 do not remedy the deficiencies in Petitioner’s
analysis of the challenged independent claims 1, 8, and 15. Dr. Michalson
attaches as Appendix W a claim chart for claims 4, 11, and 18, which cites
various portions of Rutledge, Ligtenberg, Cooper, and Hassan without any
explanation. See Ex. 1009 ¶ 286, App. W. We decline to consider
Appendix W, which is not discussed at all in the Petition or the Michalson
Declaration.
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Accordingly, on this record, the information presented in the Petition
does not demonstrate a reasonable likelihood of Petitioner prevailing in its
challenge to claims 4, 11, and 18 under 35 U.S.C. § 103(a) as obvious over
the combination of Rutledge, Ligtenberg, Cooper, and Hassan.
D. Additional Grounds Not Discussed in the Petition
In addition to the grounds discussed above, Petitioner contends that
the Michalson Declaration shows claims 1–21 are obvious “for four more
grounds in view of additional prior art.” Pet. 12 (citing Ex. 1009 ¶¶ 285–
479). Dr. Michalson’s discussion of these four additional grounds spans a
total of 57 pages. Dr. Michalson also attaches claim charts for these
additional grounds, which are not discussed in the Petition or the Michalson
Declaration. Ex. 1009 ¶¶ 387, 473.
These four additional grounds are not discussed at all in the Petition
itself and may not be incorporated by reference. See 37 C.F.R. § 42.6(a)(3)
(prohibiting incorporation by reference). Among other problems,
Petitioner’s incorporation by reference serves to circumvent the page limit
imposed on petitions for inter partes review. Accordingly, we will not
consider arguments that are not made in the Petition, but are instead
incorporated by reference to the cited paragraphs and claims charts of Dr.
Michalson’s Declaration. See Cisco Systems, Inc., v. C-Cation Techs., LLC,
Case IPR2014-00454, slip op. at 9–10 (PTAB Aug. 29, 2014) (Paper 12)
(Informative) (expanded panel decision explaining that arguments not made
in the Petition will not be considered); Fidelity National Information
Services, Inc., v. Datatreasury Corp., Case IPR2014-00489, slip op. at 9
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(PTAB Aug. 13, 2014) (Paper 9) (“Under our rules, the petition must contain
a ‘full statement of the reasons for the relief requested, including a detailed
explanation of the significance of the evidence . . . .’ 37 C.F.R.
§ 42.22(a)(2). We, therefore, decline to consider information presented in a
supporting declaration, but not discussed sufficiently in a petition”).
IV. CONCLUSION
Based on the arguments and evidence presented in the Petition, we
conclude Petitioner has not demonstrated a reasonable likelihood that
Petitioner would prevail in showing at least one of the challenged claims of
the ’506 patent is unpatentable based on any asserted ground of
unpatentability. Therefore, we do not institute an inter partes review with
respect to any of the challenged claims of the ’506 patent.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims of
the ’506 patent.
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PETITIONER:
Bin Ai, Lead Counsel
Matthew C. Bernstein, Back-up Counsel
Patrick McKeever, Back-up Counsel
Perkins Coie LLP
ai-ptab@perkinscoie.com
MBernstein@perkinscoie.com
PMcKeever@perkinscoie.com

PATENT OWNER:
Michelle Carniaux, Lead Counsel
Dervis Magistre, Back-up Counsel
Christopher Coulson, Back-up Counsel
Mark Hannemann, Back-up Counsel
Kenyon &Kenyon LLP
mcarniaux@kenyon.com
dmagistre@kenyon.com
ccoulson@kenyon.com
mhannemann@kenyon.com