Samsung Electronics Co., Ltd.v.Virginia Innovation Sciences, Inc.

Patent Trial and Appeal Board

Feb 18, 2015

13268001 (P.T.A.B. Feb. 18, 2015)

Trials@uspto.gov Paper 42
571-272-7822 Entered: February 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,

v.

VIRGINIA INNOVATION SCIENCES, INC.,
Patent Owner.

Case IPR2013-00569
Patent 8,145,268 B1

Before MICHAEL W. KIM, BRIAN J. McNAMARA, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition
requesting inter partes review of claims 21, 22, 25, and 27–29 (the
“challenged claims”) of U.S. Patent No. 8,145,268 B1 (Ex. 1001, “the ’268
patent”). Paper 5 (“Pet.”). Virginia Innovation Sciences, Inc. (“Patent
Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). On
March 6, 2014, we instituted an inter partes review of all challenged claims
on certain grounds of unpatentability alleged in the Petition. Paper 14
(“Dec. to Inst.”).
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 21, “PO Resp.”) to which Petitioner filed a Reply (Paper 26, “Pet.
Reply”).
Oral hearing was held on October 1, 2014.
1

The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Petitioner has shown, by a preponderance of the evidence, that claims
21, 22, 25, and 27–29 of the ’268 patent are unpatentable.
A. The ’268 Patent
The ’268 patent relates to mobile terminal signal conversion for
external display. Ex. 1001, 1:24–26. According to the ’268 patent,
multimedia information, such as television, 3-D images, network games, and
video phone calls, are transmitted from various service providers and
received for display on a screen of a mobile terminal. Id. at 1:41–45.

1
A transcript of the oral hearing is included in the record as Paper 40.
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However, the limited size and capability of the mobile terminal screen may
diminish user enjoyment of high rate data flow applications. Id. at 1:52–55,
2:6–9.
To address these issues, the ’268 patent discloses converting a
multimedia signal destined for the mobile terminal and providing it to an
external display system so that corresponding video and/or audio may be
reproduced using the external display system. Id. at 2:15–19. Figure 1 of
the ’268 patent is reproduced below:

Figure 1 depicts a schematic diagram illustrating an example of a system in
which mobile terminal signal conversion may reside. As shown in Figure 1,
service providers 102a and 102b deliver multimedia information through
network 104 to base station 106, which transmits the multimedia
information, among other things, to cellular phone 108. Id. at 3:35–40.
External display system 114 may be digital (e.g., HDTV, LCD, or plasma)
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or analog (e.g., NTSC, PAL, SECAM, SVGA, VGA), and does not have the
size constraints of a display screen on cellular phone 108. Id. at 3:46–54.
Mobile Terminal Signal Conversion Module (“MTSCM”) 112 resides within
separate housing 110 outside of cellular phone 108. Id. at 3:55–57. Cellular
phone 108 is connected to MTSCM 110 by a wired or wireless connection.
Id. at 4:4–19. A multimedia signal transmitted to cellular phone 108 may
include a video signal intended for reproduction by cellular phone 108 using
the display screen of cellular phone 108. Id. at 3:65–67. MTSCM 112
processes the video signal to provide a converted video signal that has a
display format and/or signal power level appropriate for external display
terminal 114. Id. at 4:20–23. Following signal conversion, MTSCM 112
provides the converted video signal to external display terminal 114 for
display. Id. at 4:33–39.
Figure 3 of the ’268 patent is reproduced below.

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Figure 3 is a block diagram illustrating an example of the MTSCM.
Interface/buffer module 302 provides, for example, adequate buffering and
processing rate to provide real-time audio and video. Id. at 5:60–6:8. Video
Compress Decoder 304a receives a multimedia signal, typically in a
compressed format (e.g., MPEG-1, MPEG-2, MPEG-4), and outputs a
decompressed digital multimedia signal to Digital/Analog Video Encoder
(“DAVE”) 304b and/or Digital/Digital Video Encoder (“DDVE”) 304c. Id.
at 6:9–20, 6:29–32. DAVE 304b and DDVE 304c receive the decompressed
multimedia signal and convert the signal to the display format and signal
power level required for the external display terminals with which they
interface. Id. at 6:35–39. Exemplary signal formats for an analog display
terminal include S-video, RGBHV, RGBS, and EIA770.3. Id. at 6:40–42.
Exemplary signal formats for a digital display terminal include DVI, DVI-D,
HDMI, and IEEE1394. Id. at 6:42–43. The signals provided by DAVE
304b and DDVE 304c are provided to external display terminal 114 through
conventional interfaces 306a and 306b. Id. at 6:43–46.
B. Illustrative Claim
Of the challenged claims, claim 21 is independent, and claims 22, 25,
and 27–29 depend from claim 21. Claim 21 is reproduced below:
21. An apparatus for converting video signals, the apparatus
comprising:
an input interface for receiving a video signal appropriate
for displaying a video content on a mobile terminal, the video
signal being sent from a wireless network communication;
a processing unit for processing the video signal to
produce a converted video signal for use by the alternative
display terminal, wherein the processing includes converting a
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signal format appropriate for the mobile terminal to a display
format for the alternative display terminal that is different from
the signal format, the display format being a high definition
digital format, such that the converted video signal produced by
the processing unit comprises the high definition digital format
for output to the alternative display terminal; and
an output interface for providing the converted video
signal to the alternative display terminal to accommodate
displaying the video content by the alternative display terminal.
C. Prior Art Supporting the Instituted Challenge
The following prior art references were asserted in the instituted
ground:
Palin US 7,580,005 B1 Aug. 25, 2009 Ex. 1002
Seaman US 2004/0223614 A1 Nov. 11, 2004 Ex. 1003
D. The Instituted Challenge to Patentability
We instituted inter partes review of claims 21, 22, 25, and 27–29
under 35 U.S.C. § 103 as unpatentable over the combination of Palin and
Seaman.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). Also, claim terms are given their ordinary and customary meaning,
as would be understood by one of ordinary skill in the art in the context of
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the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).
1. “display terminal”
Independent claim 21 recites a “display terminal.” Petitioner proposes
that “display terminal” be construed as “device for video display.” Pet. 3–4
(citing Ex. 1001, 3:27–30, 3:46–51, 4:33–37). Patent Owner neither
disputes Petitioner’s proposed construction nor proposes a different
construction. Patent Owner repeatedly identifies a television as an example
of a “display terminal.” See, e.g., Prelim. Resp. 5 (“display terminal (e.g.,
television)”); see also id. at 7, 8, 26, 42. The ’268 patent describes the use
of a “separate multimedia display terminal including but not limited to a
monitor, television set, projector, or LCD display.” Ex. 1001, 3:28–30
(emphasis added). Each of the recited devices is a device for video display.
On this record, we are persuaded that Petitioner’s construction constitutes
the broadest reasonable interpretation consistent with the Specification.
Accordingly, we construe “display terminal” as “device for video display.”
2. “wireless network communication”
Independent claim 21 recites “wireless network communication.”
Petitioner proposes that “wireless network communication” be construed as
“transmission from a wireless network.” Pet. 4 (citing Ex. 1001, 3:35–45).
Patent Owner neither disputes Petitioner’s proposed construction nor
proposes a different construction. Apart from the claims, the ’268 patent
does not use the term “wireless network communication.” However, the
’268 patent discloses the “transmission of multimedia information, among
other things, to a cellular phone 108” (Ex. 1001, 3:38–40) by “any
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conventional or to-be-developed technology for delivering voice and/or data
to mobile terminals” (id. at 3:41–43), including “a cellular communications
network or a wireless local area network” (id. at 3:44–45). The disclosed
embodiments of a “wireless network” comprise at least base station 106 and
cellular phone 108. Petitioner’s proposed construction is ambiguous
because it is unclear whether it encompasses transmissions “from” only base
station 106, “from” only cellular phone 108, or “from” both. Nothing in the
’268 patent indicates that the term “wireless network communication”
implies a particular direction of communication—i.e., from a base station to
a mobile terminal, or from a mobile terminal to a base station. To the extent
that Petitioner’s proposed construction suggests that, because the
transmission is from the wireless network, it must be to something other than
the wireless network, the construction is not consistent with the
embodiments described in the ’268 patent. Finally, Petitioner’s use of the
word “transmission” is overly narrow to the extent that it excludes the act of
receiving information. In the context of the ’268 patent, “communication” is
broad enough to encompass both information being transmitted and
information being received. On this record, the broadest reasonable
interpretation consistent with the Specification encompasses any
communication over a wireless network, including information transmitted
from a base station to a cellular phone or vice-versa, and information
received by a base station from a cellular phone or vice-versa. Accordingly,
we construe “wireless network communication” as “information transmitted
or received over a wireless network.”
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3. “HDMI”
Dependent claim 27 recites “high definition multimedia interface
(HDMI).” Petitioner proposes that “HDMI” be construed as “high definition
multimedia interface.” Pet. 4 (citing Ex. 1001, 6:42–43, 10:47–50, claim
27). Patent Owner neither disputes Petitioner’s proposed construction nor
proposes a different construction. On this record, we are persuaded that
Petitioner’s construction constitutes the broadest reasonable interpretation
consistent with the Specification. Accordingly, “HDMI” is “high definition
multimedia interface.”
B. Claims 21, 22, 25, and 27–29 – Obvious over Palin and Seaman
Petitioner argues that claims 21, 22, 25, and 27–29 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Palin and Seaman. Pet. 21–45. In
support of this ground of unpatentability, Petitioner provides detailed
explanations as to how each claim limitation is taught or suggested by Palin
and Seaman, and relies upon the Declaration of Dr. Kevin C. Almeroth (Ex.
1004). Id. (citing Ex. 1004 ¶¶ 45–115, 159–193).
Patent Owner counters that claims 21, 22, 25, and 27–29 are not
obvious over the combination of Palin and Seaman because (1) the Petition
does not identify what Palin is lacking, and why it would have been obvious
to cure such deficiencies, as required by Graham v. John Deere Co., 383
U.S. 1 (1966) and KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007); (2) the
reason to combine articulated by Petitioner is based upon impermissible
hindsight; (3) the reason to combine articulated by Petitioner is improper
because it would change the principle of operation of Palin and also would
render Palin unsuitable for its intended purposes. PO Resp. 15–31, 44–49.
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Patent Owner also argues that the combination of Palin and Seaman does not
teach “converting a signal format appropriate for the mobile terminal to a
display format for the alternative display terminal that is different from the
signal format,” as recited in claim 21, because the signal being “convert[ed]”
is not the same signal that is “receiv[ed]” by the input interface. Id. at 31–
34. Patent Owner also argues that the reasons to combine articulated in the
Petition are conclusory and devoid of rational underpinning. Id. at 34–44.
Finally, Patent Owner argues claims 22, 27, and 28 separately. Id. at 44–
47.
Upon consideration of the parties’ contentions and supporting
evidence, we determine that Petitioner has demonstrated, by a
preponderance of the evidence, that claims 21, 22, 25, and 27–29 are
obvious over the combination of Palin and Seaman.
Palin (Exhibit 1002)
Palin describes wirelessly linking a mobile terminal to a display
device to provide better display quality to the user of a mobile terminal.
Ex. 1002, 2:11–15. Figure 1(a) of Palin is reproduced below.

Figure 1(a) depicts a base station, mobile phone, and external display device.
As shown in Figure 1(a), a conventional wireless connection has a wireless
link 12 between base station 10 and mobile terminal 20 to exchange
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conventional Radio Frequency (RF) signals. Id. at 4:5–10. Wireless short
range RF link 22, such as a Bluetooth link, is established between mobile
terminal 20 and an external display device, like television 30. Id. at 4:15–
18.
In operation, a service provider transmits data frames as packets to
mobile terminal 20 over the wireless communication network. Id. at 5:30–
32. A packet containing video information may have a data frame structure
that can be split into a mobile terminal part 54, and external display device
part 56, as shown in Figures 4(a) and 4(b). Id. at col. 5:33–38. Figures 4(a)
and 4(b) are reproduced below.

Figures 4(a) and 4(b) depict, respectively, first and second possible data
frame structures for transmitting a combined audio and video signal. Mobile
terminal part 54 includes voice data, images, and other data to be used by the
mobile terminal such as textual information, caller-ID, and e-mail. Id. at
5:39–44. In contrast:
External display device part 56 is the part to be forwarded to
the external display device 30 and generally follows the mobile
terminal part 54 within the signal sent by a base station 10 to
allow the mobile terminal part 54 to be split off first and used
by the mobile terminal 20. The external display device part 56
generally includes a video portion of the signal and may include
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an audio portion to be played with the video on the external
display device.
Id. at 5:44–51 (emphasis added). After a packet is received by mobile
terminal 20, splitting application 218 splits mobile terminal part 54 from
external display device part 56. Id. at 6:28–31. Once the data is split,
external display device part 56 is processed further by, in one embodiment,
Bluetooth protocol stack 65, where one or more external display device parts
56 are reassembled into one or more Bluetooth-compliant packets. Id. at
6:45–52. These packets are then transmitted to external display device 30.
Id. at 6:61–64.
Seaman (Exhibit 1003)
Seaman describes a device that is capable of delivering a video-on-
demand feed to an input of a TV set. Ex. 1003 ¶ 11. Figure 1 of Seaman is
reproduced below.

Figure 1 illustrates primary embodiment 10 of the device. Id. ¶ 17. Primary
embodiment 10 comprises radio 60 and video decoder 150. Id. ¶¶ 22–23.
Radio 60 changes a wireless encrypted video data stream into an
unencrypted video data stream. Id. ¶ 22. “A video decoder (150) decodes
the unencrypted data stream into a standard video format that TV set (1001)
or monitor can display.” Id. ¶ 23. Copyright protection circuit 160 adds
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copyright protection to the signal, which is then sent to TV set 1001. Id.
Seaman discloses various coding schemes that may be used:
Coding and de-coding of video is described. MPEG is a coding
scheme that has the advantage of reducing the size of the
required data stream, thus reducing the required minimum size
of the data link. There are variants of MPEG that can be used
that are within the scope of this invention such as MPEG-2,
MPEG-3, MPEG-4 etc. Also there are other types of encoding
that can be used and still be within the scope of this invention.
A non-exhaustive list includes NTSC, PAL, SECAM, HDTV,
SDTV, RGB, YcbCr, YpbPr, S-Video, CVBS, SDI, HDMI, and
DVI.
Id. ¶ 47.
Analysis
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 21, 22, 25, and 27–29 are unpatentable as obvious over the
combination of Palin and Seaman.
For example, independent claim 21 recites “an input interface for
receiving a video signal appropriate for displaying a video content on a
mobile terminal, the video signal being sent from a wireless network
communication.” Petitioner relies upon Palin’s teaching of a mobile
terminal that receives video signals from a cellular network. Pet. 34–35.
Palin teaches that “[t]he mobile terminal receives image data from a base
station in a wireless communication network or from another device
utilizing any transmission method including, but not limited to GSM,
EDGE, WCDMA, DAB, DVB or Bluetooth link.” Ex. 1002, 2:25–29. Palin
further clarifies: “the term ‘image’ is used interchangeably with the term
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‘video’ and includes a single image, picture, or graphic, a stream or plurality
of still pictures, or graphics, or a conventional video.” Id. at 2:29–32.
Claim 21 also recites “a processing unit for processing the video
signal to produce a converted video signal for use by the alternative display
terminal.” Petitioner relies upon Seaman’s teaching of a video decoder. Pet.
37. Seaman teaches that “video decoder (150) decodes the unencrypted data
stream into a standard video format that a TV set (1001) or monitor can
display.” Ex. 1003 ¶ 23; fig. 1.
Claim 21 also recites:
wherein the processing includes converting a signal format
appropriate for the mobile terminal to a display format for the
alternative display terminal that is different from the signal
format, the display format being a high definition digital
format, such that the converted video signal produced by the
processing unit comprises the high definition digital format for
output to the alternative display terminal.
Petitioner relies upon Seaman’s teachings with respect to video decoder 150
and a video coder. Pet. 39–40. Specifically, Seaman teaches several known
coding schemes. Ex. 1003 ¶ 47. Seaman teaches that the signal output to
TV set 1001 for display is in one of the following: “In accordance with
claim 1, further that said standard video format is selected from the group
consisting of NTSC, PAL, SECAM, HDTV, SDTV, RGB, YcbCr, YpbPr,
S-Video, CVBS, SDI, HDMI, HDCP and all their variants whereby users
can see the video on their existing TV set.” Id. at 6 (claim 7).
Finally, claim 21 recites “an output interface for providing the
converted video signal to the alternative display terminal to accommodate
displaying the video content by the alternative display terminal.” Petitioner
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relies upon Seaman’s teaching that the signal from video decoder 150 that is
output to TV set 1001 is in “a standard video format that a TV set (1001) or
monitor can display” (Ex. 1003 ¶ 23), such as “NTSC, PAL, SECAM,
HDTV, SDTV, RGB, YcbCr, YpbPr, S-Video, CVBS, SDI, HDMI, HDCP
and all their variants” (id. at 6 (claim 7)). Pet. 41. Thus, the interface
between device 10 and TV set 1001 is the recited “output interface.”
We are persuaded that Petitioner’s citations support Petitioner’s
contentions.
Patent Owner presents several arguments as to how Petitioner has
failed to provide an adequate reason to modify the references to reach the
claimed invention and why Palin and Seaman do not teach all of the
limitations of the claims. PO Resp. 10–51. Petitioner responds to these
arguments. Pet. Reply 1–15. We address each argument in turn below.
Whether Petition Supports the Asserted Ground of Unpatentability
Patent Owner argues that “Petitioner did not specifically identify how
Palin is being modified by Seaman.” PO Resp. 10–15. According to Patent
Owner, “the actual rejection articulated on pages 14-16 of the [Decision to
Institute] (i.e., ‘the asserted Palin/Seaman obviousness rejection’) is not
presented in the Petition or in Dr. Almeroth’s declaration.” Id. at 11
(emphasis omitted). Patent Owner continues that “the Board’s choice of
‘video decoder 150’ from among the undifferentiated list presented by
Petitioner . . . is not supported by the Petition or the declaration.” Id. at 14
(emphasis omitted). Petitioner counters that Patent Owner “waived this
baseless argument when it failed to request a rehearing of the [Decision to
Institute].” Pet. Reply 2. According to Petitioner, “[t]he Petition made clear
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that features such as the ‘video decoder (150)’ of Seaman could be added to
Palin in the event that the PTAB did not agree that Palin’s ‘splitting
application’ satisfied the ‘converting’ limitation.” Id. at 3. Petitioner
continues that “the Almeroth Declaration makes this perfectly clear in
stating that, ‘[t]o the extent Palin is deemed not to disclose this
[‘converting’] limitation, it would have been rendered obvious in light of
Seaman.’” Id. at 4 (citing Ex. 1004, 271–72). We find Petitioner’s
arguments to be persuasive.
The Petition explicitly identifies video decoder 150 for “converting.”
Pet. 41. Although the claim chart includes a reference to Palin—i.e., “See
the above discussion of Palin and associated claim chart with regard to
anticipation of this claim element” (id.)—for that limitation, it is clear that
the citations to Seaman are being relied upon to teach the limitation. The
Almeroth Declaration confirms explicitly this intuitive reading of the claim
chart. Ex. 1004, 271–72. As such, we are not persuaded that the Petition
does not identify adequately how Palin would be modified by Seaman.
Sufficiency of Graham Analysis
Patent Owner argues that “the Petition provided no Graham v. John
Deere Co. or KSR Int’l Co. v. Teleflex, Inc. analysis as required to make out
a prima facie case of obviousness.” PO Resp. 17. According to Patent
Owner, “none of the claim charts for Ground 3 provide any discussion
identifying at least: (1) what the primary reference is lacking; and (2) why it
would have been obvious to cure such deficiencies, as required under
Graham and KSR.” Id. at 17–18. Petitioner counters that “[Patent Owner]
ignores the detailed information provided in the Petition and supporting
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declaration” and refers to the “numerous valid rationales justifying the
combination [that] are provided in the Petition and declaration.” Pet. Reply
4 (citing Pet. 23–32; Ex. 1004 ¶¶ 45–115, 175–193). We determine that
Petitioner’s arguments are persuasive.
As discussed above, the Petition explicitly identifies video decoder
150 for “converting.” Pet. 41. Although the claim chart includes a reference
to Palin—i.e., “See the above discussion of Palin and associated claim chart
with regard to anticipation of this claim element” (id.)—for that limitation, it
is clear that the citations to Seaman are being relied upon to teach the
limitation. The Almeroth Declaration confirms explicitly this intuitive
reading of the claim chart. Ex. 1004, 271–272. As such, we are not
persuaded that the Petition does not identify adequately how Palin would be
modified by Seaman.
With respect to why a person of ordinary skill in the art would have
made such a modification, Petitioner cites Dr. Almeroth’s Declaration for
setting forth several reasons why a person of ordinary skill in the art would
have been motivated to combine references like Palin and Seaman, albeit
without identifying Palin and Seaman by name. Pet. 23–32 (citing Ex. 1004
¶¶ 175–193). For example, Petitioner argues that:
A person of ordinary skill in the art would have been aware of a
wide variety of ways in which received content could be
converted, and would have known to use whatever techniques
were available and appropriate for a given device to better
facilitate display on an alternative display terminal. In the prior
art, this conversion could (and in some instances did) even
include changing the underlying content. Incorporating any of
the range of possible conversion types into a mobile device
already receiving content and then providing it to an alternative
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display device would not have required undue experimentation,
but rather would have only required incorporating the
appropriate hardware and/or software into the existing device.
A person having ordinary skill in the art would have a high
degree of success in combining the prior art references to
develop the claimed technology. Ex. 1004 ¶¶ 179-80; see also
id. ¶¶ 45-115.
Pet. 25–26. Thus, the Petitioner has justified sufficiently this combination
by showing “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Use of Hindsight
Patent Owner argues that the reason to combine articulated by
Petitioner is based upon impermissible hindsight. PO Resp. 22–24.
According to Patent Owner, “Dr. Almeroth’s analysis . . . us[es] the claim as
a template into which he would place teachings from any one of the cited
references depending on ‘how somebody would try and argue that there’s
something missing from Palin.’” Id. at 23. Patent Owner continues:
The only reason presented is “if it’s determined that there’s a
missing [element recited in the claims]” in Palin, then that
missing element would be pulled in from Seaman. There is no
independent reason or explanation, other than the fact that a
feature is recited in the challenged claims, why a particular
feature would be taken from Seaman and added into Palin.
This is hindsight reconstruction.
Id. at 24. Petitioner counters that “[Patent Owner] ignores the detailed
information provided in the Petition and supporting declaration” and refers
to the “numerous valid rationales justifying the combination [that] are
provided in the Petition and declaration.” Pet. Reply 4 (citing Pet. 23–32;
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Ex. 1004 ¶¶ 45–115, 175–193). We determine that Petitioner’s arguments
are persuasive.
Patent Owner’s argument emphasizes Dr. Almeroth’s deposition
testimony, but ignores the nine different reasons to combine discussed in the
Petition and in Dr. Almeroth’s Declaration. See, e.g., Pet. 23–32 (citing Ex.
1004 ¶¶ 175–193).
Whether Reason to Combine Is Valid
Patent Owner argues that “[t]he difference in the basic operation and
functional requirements of [a] mobile phone . . . when compared to a set-top
box . . . would not lead a PHOSITA to combine the two references.” PO
Resp. 24–25. According to Patent Owner:
[T]he modification of Palin based on Seaman adopted by the
PTAB in the [Decision to Institute]: 1.) would change the
principle of operation of Palin; 2.) would render Palin
unsatisfactory for its intended purpose; and 3.) overlooks
fundamental technical details that a PHOSITA would readily
understand as contrary to the position adopted in the [Decision
to Institute].
Id. at 25 (citing Ex. 2007 ¶¶ 21, 7686). We address each of these
arguments in turn.
First, Patent Owner argues that “[t]he asserted combination changes
principle of operation by inserting Seaman’s decoder (which outputs
uncompressed data) into a compressed data stream of Palin.” Id. at 28
(citing Ex. 2007 ¶¶ 76112). According to Patent Owner, “decoder 150 of
Seaman does decoding, i.e., decompression – so that the output is
uncompressed video data” whereas “Palin transmits compressed data via
Bluetooth to a TV.” Id. (citation omitted). Thus, Patent Owner concludes,
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“[i]nserting uncompressed data as output by decoder 150 would change the
principle of operation of Palin’s wireless transmission protocol that relies on
a Bluetooth connection to a TV.” Id. (citing Ex. 2007 ¶¶ 7686). Petitioner
counters that “[Patent Owner]’s arguments regarding Palin are all predicated
on the incorrect assumption that Palin requires a wireless RF link and that
this link must be implemented using Bluetooth,” but that Palin “makes clear
in at least seven places that Bluetooth is optional, not required.” Pet. Reply
10–11 (citations omitted). According to Petitioner, “[b]oth [parties’] experts
confirm that other wireless technologies were available for use in mobile
devices at the time, including IEEE 802.11, which were commonly used to
transmit compressed (e.g., MPEG-2 compressed HD) and uncompressed
video data.” Id. (citations omitted). We determine that Petitioner’s
arguments are persuasive.
Although Palin describes an exemplary embodiment with a “short
range RF link 22” between mobile terminal 20 and TV 30, Patent Owner
cites nothing in Palin that would preclude the use of either a wireless
protocol other than Bluetooth or a wired connection. Thus, we are not
persuaded that the output of Seaman’s video decoder must be capable of
transmission over a Bluetooth wireless link. Moreover, we are not
persuaded that the output of Seaman’s video transceiver is necessarily
uncompressed data. Seaman teaches that the signal output to TV set 1001
for display is in one of the following: “In accordance with claim 1, further
that said standard video format is selected from the group consisting of
NTSC, PAL, SECAM, HDTV, SDTV, RGB, YcbCr, YpbPr, S-Video,
CVBS, SDI, HDMI, HDCP and all their variants whereby users can see the
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video on their existing TV set.” Ex. 1003, 6 (claim 7). HDTV is a
compressed format. See, e.g., Ex. 2011, 12 (“Broadcast quality 720p or
1080i HDTV under the MPEG-2 standard requires nearly 20Mbps of
bandwidth, and this is exactly how it is currently delivered by both over-the-
air and most cable systems.”). Because Seaman teaches outputting a video
signal in a compressed format, we are not persuaded that Seaman’s video
transceiver necessarily outputs uncompressed data.
Second, Patent Owner argues that the proposed combination of Palin
and Seaman would render Palin unsuitable for its intended purposes of
minimizing battery drain and maintaining wireless mobility. PO Resp. 29–
31. Petitioner counters that Patent Owner’s alleged “intended purposes” of
Palin “are not actually requirements of Palin,” and that “[Patent Owner]’s
attempt to limit the teachings of Palin to the design choices made to
implement the preferred embodiment is improper.” Pet. Reply 6. We
address each of the intended purposes identified by Patent Owner in turn.
With respect to minimizing battery drain, Patent Owner argues that
“[t]he key intended purpose of Palin (‘Goal #1’) is to avoid unnecessarily
draining the battery while using the mobile terminal to send video to an
external display with better display capabilities.” PO Resp. 26 (citing Ex.
2007 ¶ 23). Patent Owner argues that Palin achieves this intended purpose
by having “the mobile device function[] only as a ‘pass-through’ for the TV
receiver part 56, without any conversion.” Id. (citing Ex. 2007 ¶¶ 2532).
According to Patent Owner, “decoder 150 of Seaman would be a hardware
chip, such as Broadcom BCM7411 High-Definition Decoder,” and would
“demand[] almost twice the power as the rest of the phone,” which “would
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no longer avoid unnecessarily draining the battery.” Id. at 29 (citing Ex.
2007 ¶ 83). Petitioner points out that “Palin teaches that the displaying of
the video on a separate display having a separate power source avoids
draining the battery unnecessarily,” and that “[i]t is uncontested that both
Palin and Seaman teach displaying the video on a separate display that has a
separate power source.” Pet. Reply 7. According to Petitioner, “Palin says
nothing about avoiding decoding or conversion of the incoming video
signal” and, to the contrary, it teaches splitting and reformatting a received
signal for transmission, all of which consumes power. Id. at 7–8. Petitioner
continues that “Seaman expressly states that ‘no powerful generic processor’
is needed for the additional processing,” and that even Patent Owner’s
expert, Dr. Brody, “admi[tted] that all the technology necessary to
implement the additional processing was known at the time.” Id. at 8
(citations omitted). We determine that Petitioner’s arguments are
persuasive.
Palin teaches not to avoid draining the battery generally, as Patent
Owner contends, but to “avoid unnecessarily draining . . . the mobile
terminal’s battery by displaying the video on a separate display device that
has a separate power source.” Ex. 1002, 1:37–39 (emphasis added). The
proposed combination of Palin and Seaman displays the video on a separate
display that has a separate power source. Neither the Petition nor Dr.
Almeroth proposes to modify Palin’s mobile terminal 20 to power the
separate display. Moreover, we are not persuaded by Patent Owner’s
arguments based on the power demands of a Broadcom CBM7411 High-
Definition Decoder. Even assuming that that chip is representative of the
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video transceiver taught in Seaman, the test for obviousness is not whether
one could physically incorporate such a chip into Palin, but whether a person
of ordinary skill in the art would have been motivated to incorporate the
teachings of Seaman to modify Palin. In that regard, we note that both
parties’ experts agreed that one of ordinary skill in the art could have
incorporated the video processing functionality of Seaman into Palin using
software and/or hardware known at the time. Pet. Reply 8 (citing Ex. 1003
¶ 13; Ex. 1004 ¶ 180; Ex. 2007 ¶¶ 81–86).
With respect to wireless mobility, Patent Owner argues that “[a]
second major intended purpose (‘Goal #2’) [of Palin] is for the user to view
the larger display while conveniently holding the mobile terminal and use
the other functions of the mobile device.” PO Resp. 26 (citing Ex. 2007
¶ 24). Patent Owner argues that Palin achieves this intended purpose by
using a wireless link between the mobile terminal and the external display
device. Id. at 26–27 (citing Ex. 1002, 1:62–64 (“This would be best
implemented using a wireless link between the mobile terminal and the
external display device.”)). According to Patent Owner, “[i]ncorporating [a
set top box – TV connection from Seaman] into Palin would result in a
wired connection to the TV,” rendering the combination “unsatisfactory for
the explicit purpose of maintaining mobility while using the mobile
terminal.” Id. at 30 (citations omitted). Petitioner counters that the wireless
link taught in Palin “reflects a preferred embodiment, as confirmed by the
phrase ‘particularly advantageous.’” Pet. Reply 9. Petitioner continues that
Palin “refers only to ‘holding’ the device, not to ‘wireless mobility,’” and
that “[n]othing in the combination of Palin and Seaman prevents holding the
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modified Palin device during operation.” Id. at 9–10. We determine that
Petitioner’s arguments are persuasive.
Palin recognizes that “[i]t would be particularly advantageous to
enable the user to view the content, such as a video clip on a larger display,
while the user is actually holding the mobile terminal, and allow the user to
select what is viewed using the mobile terminal, or to otherwise use the
mobile device while viewing the video clip.” Ex. 1002, 1:57–62. Even
assuming that is an intended purpose of Palin, it does not require a wireless
link. A wired connection could achieve the same advantage. Ex. 1009 ¶¶ 9,
10. Accordingly, we are not persuaded that modifying Palin to incorporate
one of Seaman’s wired outputs, such as HDMI, to connect to the larger
display, would prevent “enabl[ing] the user to view the content, such as a
video clip on a larger display, while the user is actually holding the mobile
terminal, and allow the user to select what is viewed using the mobile
terminal, or to otherwise use the mobile device while viewing the video clip”
(Ex. 1002, 1:57–62).
Whether Reason to Combine Is Devoid of Rational Underpinnings
Patent Owner argues that the nine reasons to combine articulated in
the Petition are conclusory and devoid of rational underpinning. PO Resp.
34–44. Petitioner counters that Patent Owner’s arguments are predicated
upon improper characterizations of Palin. Pet. Reply 14. According to
Petitioner, “[Patent Owner]’s argument is that Palin and Seaman cannot be
combined if it would change the preferred embodiment of Palin.” Id.
Petitioner continues that “[w]hen the actual teachings of Palin are properly
considered, the articulated motivations to combine are fully supported by
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Palin and Seaman.” Id. We determine that Petitioner’s arguments are
persuasive. We address Patent Owner’s arguments in turn.
We are not persuaded by Patent Owner’s argument that there is no
link between the factual findings and the legal conclusion of obviousness.
PO Resp. 37. Petitioner cites Dr. Almeroth’s Declaration for setting forth
several reasons why a person of ordinary skill in the art would have been
motivated to combine references like Palin and Seaman, albeit without
identifying Palin and Seaman by name. Pet. 23–32 (citing Ex. 1004 ¶¶ 175–
193). Thus, the Petitioner has justified sufficiently this combination by
showing “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting
Kahn, 441 F.3d at 988). It is well settled that a reason to combine prior art
teachings can be from the ordinary knowledge of skilled artisans, or the
nature of the problem to be solved. WMS Gaming, Inc. v. Int’l Game Tech.,
184 F.3d 1339, 1355 (Fed. Cir. 1999). Moreover, “‘[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.’” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550
U.S. at 416). “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” KSR, 550 U.S. at 419–20
We also are not persuaded that “the different constraints and goals of
a mobile phone and a set-top box would militate against the combination and
the results of the combination would not be suitable for the task at hand.”
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PO Resp. 38; see also id. at 39–43. While a mobile phone and a set-top box
may operate under different constraints and goals, generally, here, Palin and
Seaman are both directed to receiving video signals over a cellular
communication network, converting the received signal, and outputting the
converted video signal for display on a separate display terminal, such as a
television. Pet. Reply 4. Accordingly, we credit Dr. Almeroth’s testimony
that one skilled in the art would be motivated to include the additional
processing of Seaman in Palin to better facilitate display on the alternative
display and to provide flexibility with respect to conversion among many
different video signal formats. Ex. 1004 ¶¶ 176, 180; Ex. 1009 ¶¶ 11, 14.
Finally, we are not persuaded that the reasons to combine render Palin
unsatisfactory for its intended purposes or change its principle of operation
for the reasons discussed above. See, e.g., PO Resp. 38 (“would change the
principle of operation”), 39 (“render it unsatisfactory for its intended
purpose”), 41 (“different principles of operation”), 42 (“different principles
of operation”), 43 (“change the principle of operation”).
Whether the Converted Signal Is the Received Signal (claim 21)
Patent Owner also argues that the combination of Palin and Seaman
does not teach “converting a signal format appropriate for the mobile
terminal to a display format for the alternative display terminal that is
different from the signal format,” as recited in claim 21, because the signal
being “convert[ed]” is not the same signal that is “receiv[ed]” by the input
interface. PO Resp. 31–34. According to Patent Owner, Palin receives “two
video signals contained within one ‘data frame structure 50,’” and “only the
split-out ‘TV receiver part 56’ would, even theoretically, be provided to a
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decoder 150 as taught by Seaman.” Id. at 32–33. Thus, concludes Patent
Owner, “any combination of Palin [and Seaman] would process the ‘TV
receiver part 56,’” which is not “a signal format appropriate for the mobile
terminal,” as required by claim 21. Id. at 33 (emphasis omitted).
Petitioner counters that Palin teaches “only a single signal is received,
and that single signal includes two parts, a ‘mobile terminal part 54’ and a
‘TV receiver part 56’,” and that, because it contains mobile terminal part 54,
it is “appropriate for displaying a video content on a mobile terminal,” as
recited in claim 21. Pet. Reply 13. Petitioner continues that combining
Palin with Seaman results in conversion of that received (i.e., mixed) signal
to a different display format for the alternative display, thereby teaching
“converting a signal format appropriate for the mobile terminal to a display
format for the alternative display terminal that is different form the signal
format.” Id. at 13–14. We determine that Petitioner’s arguments are
persuasive.
We are not persuaded that mobile terminal part 54 and TV receiver
part 56 are separate video signals received by Palin. Palin states explicitly
that “[t]he image data received by the mobile terminal comprises data to be
ultimately reassembled into an image to be displayed on a display either on
the mobile device, on . . . another display device, or on both of these
devices.”). Ex. 1002, 2:54–57 (emphasis added). The Detailed Description
of Palin does not suggest otherwise. It teaches data frame structure 50 that
includes mobile terminal part 54. Patent Owner concedes that mobile
terminal part 54 is “appropriate for displaying a video content on a mobile
terminal,” as recited in claim 21. PO Resp. 32–33. Because data frame
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structure 50 includes mobile terminal part 54, it, too, is “appropriate for
displaying a video content on a mobile terminal.” And because the data that
is later converted was received in data frame structure 50, the signal being
converted is the same signal that was received.
Even assuming that mobile terminal part 54 and TV receiver part 56
are separate video signals, we are not persuaded by Patent Owner’s assertion
that the combination of Palin and Seaman necessarily results in Seaman’s
video decoder 150 processing TV receiver part 56 of the received video
signal. Patent Owner relies on the testimony of its expert, Dr. Arthur T.
Brody (PO Resp. 33 (citing Ex. 2007 ¶¶ 26–32, 48, 49, 74, 75), but that
testimony states only that converting TV receiver part 56 does not satisfy the
claims because TV receiver part 56 is not “a signal format appropriate for
the mobile terminal,” as required by the claims. Ex. 2007 ¶ 75. Patent
Owner provides no persuasive evidence or argument to explain why mobile
terminal part 54 would not be provided to the video decoder taught by
Seaman. Accordingly, we are persuaded that conversion of mobile terminal
part 54 also teaches the disputed limitation.
Dependent claims 22, 27, and 28
2

Patent Owner argues that the Petition and Dr. Almeroth’s Declaration
are in conflict with regard to claims 22 and 28 because the Petition relies
only upon Palin to teach these limitations, whereas the Almeroth Declaration
also cites to Seaman. PO Resp. 44–45. The citations to Seaman in the
Almeroth Declaration are preceded by this statement: “To the extent this
preamble is limiting, and Palin is deemed not to disclose this limitation, it

2
Patent Owner does not argue dependent claims 25 and 29 separately.
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would have been rendered obvious in light of Seaman.” Ex. 1004, 246. The
preambles of claims 22, 27, and 28, of course, refer to “[t]he apparatus of
claim 21.” Because they merely refer to the reliance on Seaman in rendering
obvious the underlying independent claim, we are not persuaded that these
citations are inconsistent with Petitioner’s decision to rely solely on Palin in
the Petition itself.
With respect to claim 27, we are not persuaded by Patent Owner’s
argument that the Petition does not adequately allege obviousness because it
merely refers to “the above discussion of Palin and associated claim chart
with regard to anticipation of this claim element” without explaining
adequately how Palin would be applied or modified. PO Resp. 45–46.
Petitioner’s reliance on Palin is irrelevant because we are persuaded that
Seaman teaches this limitation.
With respect to claim 28, we are not persuaded by Patent Owner’s
argument that the proposed combination of Palin and Seaman would change
the principle of operation of Palin and render it unsuitable for its intended
purpose for the reasons discussed above. PO Resp. 47. We also are not
persuaded by Patent Owner’s argument that the proposed combination of
Palin and Seaman would not teach “wherein the processing unit resides in
the mobile terminal.” Id. at 44. Palin’s low-power processor resides within
the mobile terminal and is capable of decoding video; otherwise, it would
not be able to display the image data received by the mobile terminal on a
display on the mobile device, as Palin teaches. Ex. 1002, 2:54–57. Based
on the arguments and evidence presented by the parties, we are not
persuaded that the modification of that processor to incorporate additional
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video conversion functionality disclosed by Seaman would result in a
processor incapable of residing within the mobile terminal.
Conclusion
For the foregoing reasons, we conclude that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 21, 22, 25,
and 27–29 are unpatentable as obvious over the combination of Palin and
Seaman.
C. Patent Owner’s Motion to Exclude Evidence
Patent Owner filed a Motion to Exclude Evidence (Paper 31), to
which Petitioner responded (Paper 33). Patent Owner filed a Reply to
Petitioner’s Opposition to Motion to Exclude Evidence. Paper 36. Patent
Owner’s Motion to Exclude seeks to exclude (1) paragraphs 5–9, 11, 13–17,
and 20–22 of the Reply Declaration of Dr. Almeroth (Ex. 1009). Paper 31,
1–14. As movant, Patent Owner has the burden of proof to establish that it
is entitled to the requested relief. See 37 C.F.R. § 42.20(c). For the reasons
stated below, Patent Owner’s Motion to Exclude is denied.
Patent Owner argues that certain paragraphs of Dr. Almeroth’s
Declaration should be excluded under Rule 702 because they are
unsupported by underlying facts or data. Paper 31, 1–14. Patent Owner’s
arguments go to weight, not to admissibility. 37 C.F.R. § 42.65 (“Expert
testimony that does not disclose the underlying facts or data on which the
opinion is based is entitled to little or no weight.”).
Patent Owner also argues that certain paragraphs of Dr. Almeroth’s
Reply Declaration are beyond the scope of a proper reply because they are
new arguments that are not responsive to Patent Owner’s positions. Paper
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31, 9–11. A motion to exclude is not a proper vehicle for use by a party to
raise the issue of a reply exceeding the proper scope in violation of 37
C.F.R. § 42.23(b).
III. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that claims
21, 22, 25, and 27–29 of the ’268 patent are unpatentable under 35 U.S.C.
§ 103(a).
IV. ORDER
Accordingly, it is
ORDERED that claims 21, 22, 25, and 27–29 of the ’268 patent are
held unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

Joseph S. Presta
Updeep S. Gill
Nixon & Vanderhye, P.C.
jsp@nixonvan.com
usg@nixonvan.com

For PATENT OWNER

D. Richard Anderson
George S. Dolina
Birch, Stewart, Kolasch & Birch, LLP
dra@bskb.com
gsd@bskb.com