Velos Media, LLC

Patent Trials and Appeals Board

Sep 3, 2020

IPR2019-00707 (P.T.A.B. Sep. 3, 2020)

Trials@uspto.gov Paper No. 55
571-272-7822 Entered: September 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS INC.,
Petitioner,

v.

VELOS MEDIA, LLC,
Patent Owner.
____________

IPR2019-00707
Patent 9,979,981 B2
____________

Before DANIEL J. GALLIGAN, JASON W. MELVIN, and
AARON W. MOORE, Administrative Patent Judges.

MELVIN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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I. INTRODUCTION
Petitioner, Unified Patents, Inc., filed a Petition (Paper 3, “Pet.”)
requesting inter partes review of claims 1–8 (“the challenged claims”) of
U.S. Patent No. 9,979,981 B2 (Ex. 1001, “the ’981 patent”). Patent Owner,
Velos Media, LLC, filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
We instituted review of the challenged claims. Paper 8 (“Institution
Decision” or “Inst.”).
Patent Owner filed a Response. Paper 23 (“PO Resp.”). Petitioner
filed a Reply. Paper 28 (“Pet. Reply”). Patent Owner filed a Sur-Reply.
Paper 36 (“PO Sur-Reply”). Patent Owner filed a Contingent Motion to
Amend. Paper 22. Petitioner filed an Opposition to the Contingent Motion to
Amend. Paper 29. As Patent Owner requested, we provided Preliminary
Guidance to the Contingent Motion to Amend. Paper 33 (“Prelim. Guidance
MTA”). Patent Owner filed a Revised Contingent Motion to Amend.
Paper 37 (“MTA”). Petitioner filed an Opposition to the Revised Contingent
Motion to Amend. Paper 42 (“MTA Opp.”). Patent Owner filed a Reply to
that Opposition. Paper 45 (“MTA Reply”). Petitioner filed a Sur-Reply to
the Revised Contingent Motion to Amend. Paper 49 (“MTA Sur-Reply”).
We held a hearing on July 7, 2020, and a transcript appears in the record.
Paper 54 (“Tr.”).
This is a final written decision as to the patentability of the challenged
claims and the proposed substitute claims. For the reasons discussed below,
we determine Petitioner has shown by a preponderance of the evidence that
each of the challenged claims is unpatentable. We also determine that
Petitioner has shown each of Patent Owner’s proposed substitute claims is
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unpatentable and therefore deny Patent Owner’s Revised Contingent Motion
to Amend.
A. THE ’981 PATENT
The ’981 patent is titled “Image Processing Device and Method” and
relates to encoding efficiency for color-difference signals and reduction in
address calculations for memory access. Ex. 1001, codes (54), (57). Video
data comprises a series of images made from individual pixels. Rather than
representing pixel data using three chrominance (color/chroma) components
(e.g., red, green, and blue), digital video systems may represent pixel data
using a luminance (brightness/luma) component and two chrominance
components. See PO Resp. 11. That format permits one resolution to be used
for the luminance components while a different (lower) resolution is used for
chrominance components. Id. at 12. The so-called 4:2:0 subsampling scheme
means that a given space of pixels is represented with four luminance
samples and two chrominance samples. Id.; see also Ex. 1008, 17–18,
Fig. 2.11.
Besides reducing information through subsampling, another video-
compression technique is termed “motion compensated prediction,” which
divides the image pixels into blocks and predicts or matches that block to
another one in a prior image or another region of the current image.
PO Resp. 12. In the motion-estimation approach, a block is coded as the
difference in both content and position from a reference block, known as the
predictor. Id. at 13. The content difference between a current block and its
predictor is known as a residual block, and the position offset is known as a
block’s motion vector. Id.
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Because sampling luminance and chrominance information creates
image regions with different pixel densities, blocks of the image will be
different sizes. For example, with the 4:2:0 subsampling scheme, when
processing luminance information in 4×4 blocks, the associated
chrominance information will exist in 2×2 blocks. Ex. 1001, 5:19–22,
16:33–38. Such a difference may cause issues during processing,
complicating memory access. Id. at 5:23–33. Thus, the ’981 patent discloses
an approach of grouping the chrominance information into, for example, a
4×4 block comprised of four 2×2 blocks and corresponding that 4×4 block
with a group of 4×4 luminance blocks. Id. at 5:45–60; 17:26–36 (disclosing
that, for encoding producing “four 4×4 pixel blocks” of luminance
information and “four color difference signal 2×2 blocks,” “a single color
difference signal 4×4 block is re-corresponded with the four luminance
signal blocks”). Designated portion A of Figure 9 is reproduced below:

Portion A of Figure 9 “illustrates an example of color differences signals
with a case where a macroblock of luminance signals is configured of four
4×4 pixel blocks” and shows that “four luminance signal blocks are
corresponded with one color difference signal 4×4 block appended with C.”
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Id. at 17:17–20, 17:26–30. In the case where 2×2 color-difference blocks are
first formed, the ’981 patent discloses creating a new 4×4 color-difference
block, containing the information corresponding to four 4×4 luminance
blocks. Id. at 17:36–38.
Because the luminance blocks each have a corresponding motion
vector, as shown above in Portion A of Figure 9, the coding system makes a
choice regarding the motion vector to use with the color-difference block.1
See id. at 17:39–45, 19:14–19. The ’981 patent refers to this aspect as
performed by the “color difference motion vector generating unit.” Id.
at 17:39–45. In the general sense, the color-difference motion vector is
derived from the four luminance motion vectors. Id. at 17:41–47. The
Specification describes that a color-difference motion vector may be
calculated by averaging the four luminance motion vectors (id. at 17:48–64)
or by selecting the single luminance motion vector that “realizes the highest
coding efficiency with the smallest residual” (id. at 18:44–19:13).
B. CHALLENGED CLAIMS
Petitioner challenges claims 1–8 (all claims in the ’981 patent), of
which claims 1, 3, 5, and 7 are independent. Claim 1 is illustrative and is
reproduced below:
1. An image processing device comprising:
circuitry configured to
assign four luma blocks of a block size including a luma
component of an image to one first chroma block of
the block size including first chroma component of

1 The color-difference block comprises information from regions of the
image represented by all four luminance blocks, but processing the color-
difference information as a block requires a single motion vector.
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the image and one second chroma block of the block
size including second chroma component of the
image which is different from the first chroma
component in a format of 4:2:0 including a luma
signal and a chroma signal and that the block size is
4×4.
Id. at 53:26–36. The other independent claims recite similar limitations.
C. PRIOR ART AND ASSERTED GROUNDS
Petitioner asserts that the challenged claims are unpatentable on the
following grounds:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–4 102(b)2 Bjontegaard3
5–8 103(a) Bjontegaard, Song4
1–2, 5–8 103(a) H.2635, Bjontegaard II6, Song
3, 4 103(a) H.263, Bjontegaard II
Pet. 4–5. Petitioner also relies on the Declaration of Dr. Vijay Madisetti
(Ex. 1002). See generally Pet. 5–77.

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102/103, effective
March 16, 2013. Because the application from which the ’981 patent
issued was filed before this date, the pre-AIA version of §§ 102/103
applies.
3 U.S. Pub. 2008/0056376 A1, published Mar. 6, 2008 (Ex. 1004).
4 U.S. Pub. 2006/0008038 A1, published Jan. 12, 2006 (Ex. 1005).
5 ITU-T Recommendation H.263, “Video Coding for Low Bit Rate
Communication.” ITU-T Study Group 15, March 1996 (Ex. 1006).
6 “Coding improvement by using 4×4 blocks for motion vectors and
transform,” SG16/Q15 VCEG 3, Meeting Document Q15-C23, Dec. 1997
(Ex. 1007).
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II. ANALYSIS
A. CLAIM CONSTRUCTION
For an inter partes review petition filed after November 13, 2018, we
construe claim terms “using the same claim construction standard that would
be used to construe the claim in a civil action under 35 U.S.C. 282(b).”
37 C.F.R. § 42.100(b) (2019); Changes to the Claim Construction Standard
for Interpreting Claims in Trial Proceedings Before the Patent Trial and
Appeal Board, 83 Fed. Reg. 51340, 51358 (Oct. 11, 2018) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018).
Petitioner asserts that we should construe the claim language “assign
four luma blocks . . . to one first chroma block . . . and one second chroma
block” (all challenged claims) and “assigning unit” (claim 7). Pet. 26–28.
Patent Owner disputes that we should construe “assigning unit” (see
PO Resp. 29–30) and disputes the correct construction for the “assign”
phrase (id. at 20–29).
1. “assign four luma blocks . . . to one first chroma block . . .
and one second chroma block”
In the Institution Decision, we agreed with Patent Owner that the
claims require “a step of creating the correspondence between luma and
chroma blocks or, in the case of the apparatus claims, a device configured to
perform such a step.” Inst. 7. That construction is supported by the
Specification’s statement that blocks are “corresponded” with each other.
See Ex. 1001, 17:26–38. Petitioner submits that our construction was
correct. Pet. Reply 3. Similarly, Patent Owner submits that “this
construction, at a fundamental level, aligns with Patent Owner’s views that
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require active assigning or corresponding of luma blocks to chroma blocks.”
PO Sur-Reply 3.
We explained further in the Institution Decision that “the claimed
assigning step encompasses creating a chroma block in the claimed 4×4
size.” Inst. 7. Patent Owner takes issue with the “creating” language because
“Patent Owner does not believe that the mere creation of a block for
subsequent processing discloses the ‘assign’ limitation, under a proper
understanding of that term.” PO Sur-Reply 3. Instead, according to Patent
Owner, an additional operation must be performed on a block to meet the
“assign” limitation. Id. at 3–4. Patent Owner contends such a requirement
would be consistent with the Specification’s statement that “a single color
difference signal 4×4 block is newly made to correspond to the four
luminance signal blocks.’” Ex. 1001, 17:36–38; see PO Sur-Reply 4.
According to Patent Owner, “the key is the action of corresponding . . . not
simply the creation.” PO Sur-Reply 4. Patent Owner, however, misreads the
Specification, which does not express “corresponding” as a separate action.
Rather, it states that the block “is newly made to correspond”—indicating
that the required correspondence occurs with the block’s creation. Ex. 1001,
17:36–38. Moreover, that description in the Specification considers the case
where luminance information is represented in 4×4 blocks while color-
difference information is represented in 2×2 blocks. Id. at 17:26–32. Thus,
the Specification describes that a 4×4 color-difference block is “re-
corresponded” or “newly made to correspond” to the luminance blocks. Id.
at 17:32–38. That does not mean that the Specification excludes creating
4×4 color-difference blocks in the first place.
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Thus, we maintain the view of claim scope expressed in the Institution
Decision—the “assign” claim language encompasses creating chroma blocks
in the claimed 4×4 size such that the chroma blocks correspond to the four
luma blocks, but does not require creating the chroma blocks and then
corresponding them in separate steps.
Patent Owner argues that our claim construction allows for “spatial
correspondence” to control, such that the active claimed “assign” is
improperly replaced with passive “correspondence.” PO Resp. 22–23. We
do not agree. As Petitioner explains, 4:2:0 coding “does not require any
specific number of luma blocks and chroma blocks to be corresponded” and
instead refers to the number of respective luma and chroma samples. Pet.
Reply 5–6 (citing Ex. 2022 ¶ 72 (Patent Owner’s declarant testifying that the
4:2:0 subsampling scheme means “there are 4 sample points of luma per
single sample point of Cb and Cr”); PO Resp. 12 (“[I]t is important to
recognize that the 4:2:0 ratio defines a relationship between samples, as
opposed to blocks.” (emphases omitted)); Ex. 1001, 17:33–36 (explaining
that the “encoding stipulations” provide “four color difference signal 2×2
blocks corresponding” with four luminance signal blocks)). Because a
particular subsampling strategy does not necessarily satisfy the claim
language, we do not agree with Patent Owner that it reads “assign” out of the
claims to construe them such that “assign” reads on creating the claimed 4×4
chroma blocks, without an additional step. See PO Resp. 22–23.
We determine that the Specification only generally describes
assignment as described above and does not impose the specific requirement
Patent Owner seeks with its claim-construction arguments. Thus, “assign
four luma blocks . . . to one first chroma block . . . and one second chroma
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block” means creating or corresponding two chroma blocks for subsequent
processing.
2. “assigning unit”
Petitioner proposes a construction for the term “assigning unit” in
claim 7. Pet. 27–28. However, we agree with Patent Owner that this
proceeding does not require construction of “assigning unit.” See PO Resp.
29–30. Petitioner does not challenge that view in the Reply and neither party
raises an argument that would require such a construction.
B. ANTICIPATION BY BJONTEGAARD
Bjontegaard relates to preprocessing video data before encoding and
transmission. Ex. 1004, code (57). As background, Bjontegaard discloses
that video-coding standards like H.263 and H.264 process images using
prediction, to represent differences representing movement in blocks of
image data between various parts of a sequence. Id. ¶¶ 6–9. Bjontegaard
discloses that image data may be processed in macroblocks comprising both
luma and chroma subblocks including “two chrominance components (Cr,
Cb) with half the resolution both horizontally and vertically compared with
luminance.” Id. ¶¶ 10–11.
Bjontegaard provides an example macroblock in Figure 1, reproduced
below:
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As Bjontegaard describes:
FIG. 1 illustrates a typical denotation and grouping of pixels in
a macroblock for luminance and chrominance, respectively.
The macroblock consists of 16×16 luminance pixels and two
chrominance components with 8×8 pixels each. Each of the
components is here further broken down into 4×4 blocks, which
are represented by the small squares. For coding purposes, both
luma and chroma 4×4 blocks are grouped together in 8×8 sub
blocks and designated Y0-Y3 and Cr, Cb.
Id. ¶ 13. Petitioner asserts that the Y0 luminance block (comprising four 4×4
blocks) corresponds to the upper left 4×4 block of Cr and the upper left 4×4
block of Cb. Pet. 30–31, 34–35. Petitioner provides an annotated version of
Bjontegaard’s Figure 1, reproduced below:
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Pet. 35. Petitioner asserts that, in the figure, “four luma blocks (Y, outlined
in red) correspond to one first chroma block (Cr, outlined in green) and one
second chroma block (Cb, outlined in green).” Id. at 34. Thus, according to
Petitioner, Bjontegaard discloses circuitry configured to assign four luma
blocks to one first chroma block and one second chrome block, all with 4×4
block sizes, as claimed. Pet. 33–35, 38–39.
Patent Owner argues first that Petitioner’s assertions fail because they
require that we adopt a construction without any “active assignment”
requirement. PO Resp. 38–43. According to Patent Owner, any relationship
between the highlighted areas in Petitioner’s annotated version of
Bjontegaard’s Figure 1 “is simply a function of the well-known 4:2:0
format.” Id. at 43. As explained above regarding the construction for
“assign,” we do not agree that coding with the 4:2:0 format necessarily
satisfies the claim language, because that format does not dictate how to
form blocks of pixel information. See supra at 9. Thus, the relationship
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Petitioner highlights in Bjontegaard’s blocks is not merely a result of the
4:2:0 format.
Bjontegaard states that Figure 1 “illustrates a typical denotation and
grouping of pixels in a macroblock” and that each of the luminance and
chrominance “components is here further broken down into 4×4 blocks,
which are represented by the small squares.” Ex. 1004 ¶ 13. As we pointed
out in the Institution Decision, Bjontegaard states that, “[f]or coding
purposes, both luma and chroma 4×4 blocks are grouped together in 8×8 sub
blocks.” Inst. 11 (quoting Ex. 1004 ¶ 13). Petitioner submits that
Bjonetgaard’s statement about 4×4 blocks satisfies the “assign” limitation
notwithstanding that “the transform blocks can be grouped into larger sub-
blocks at later encoding stages” because that later grouping “does not negate
the creation and processing of transform blocks performed by the encoder.”
Pet. Reply 12.
That said, we are not persuaded by Petitioner’s argument regarding
Bjontegaard’s statement that “[e]ach of the components is here further
broken down in to 4×4 blocks.” See Ex. 1004 ¶ 13. That language does not
indicate that Bjontegaard’s process actually creates the depicted 4×4 blocks.
Rather, it supports that the blocks are only illustrated in the figure. Thus,
when Bjontegaard states that “[f]or coding purposes, both luma and chroma
4×4 blocks are grouped together in 8×8 sub blocks,” it indicates that the
coding process uses 8×8 blocks, not 4×4 blocks as claimed.
Because Petitioner has not shown that Bjontegaard discloses the
limitations of claim 1, Petitioner has not shown by a preponderance of the
evidence that claim 1 was anticipated by Bjontegaard. Petitioner relies on
the same assertions regarding Bjontegaard for claim 3 (see Pet. 42) and we
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therefore reach the same conclusion for that claim. And because claims 2
and 4 depend from claims 1 and 3, respectively, Petitioner has also failed to
show that Bjontegaard anticipated those claims.
C. OBVIOUSNESS OVER BJONTEGAARD AND SONG
Petitioner relies on Song for “a computing environment (100) used to
implement embodiments of the disclosed video encoding or decoding
techniques.” Pet. 43. But in all other ways, Petitioner relies on Bjontegaard
for claims 5–8 just as it does for claim 1. Pet. 48–54. Accordingly, we reach
the same conclusion for claims 5–8 as for claim 1.
D. OBVIOUSNESS OVER H.263, BJONTEGAARD II, AND SONG
H.263 describes a video-coding standard. Ex. 1006, 1. In the coding it
describes, “[e]ach picture is divided into groups of blocks (GOBs),” each
comprising a number of lines of pixels from the picture. Id. at 4–5. Then,
[e]ach [Group Of Blocks] GOB is divided into macroblocks. A
macroblock relates to 16 pixels by 16 lines of Y and the
spatially corresponding 8 pixels by 8 lines of CB and CR.
Further, a macroblock consists of four luminance blocks and
the two spatially corresponding colour difference blocks as
shown in Figure 5. Each luminance or chrominance block
relates to 8 pixels by 8 lines of Y, CB or CR.
Ex. 1006, 6 (§ 4.2.1). H.263’s Figure 5 is reproduced below:
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Id. at 7. Figure 5 depicts the arrangement of blocks in a macroblock as
described above. See id. at 6 (§ 4.2.1). Because H.263 discusses luminance
and chrominance blocks that are 8×8, rather than the claimed 4×4, Petitioner
relies additionally on Bjontegaard II. Pet. 57–62.
Bjontegaard II describes its author’s work “to improve on motion
prediction by allowing 4x4 blocks to be used for motion vectors” and “for
the transform.” Ex. 1007, 1. It describes that the author modified H.263’s
approach, “replac[ing] the 8x8 blocks by 4x4 blocks to obtain better
prediction in «complicated» areas of the picture.” Id. Bjontegaard II notes
that, in its approach, “less bits are used for coding” as compared to H.263.
Id. After presenting simulation results for the described method,
Bjontegaard II concludes that “[t]he described 4×4 block based coding gives
significant improvements - both objective and subjective - compared to
H.263+.” Id. at 6. Petitioner asserts that the above statements in
Bjontegaard II provided express motivation for a skilled artisan to modify
H.263 by using a 4×4 block size. Pet. 60–62.
Patent Owner argues that, like it asserts for Bjontegaard discussed
above, H.263 does not disclose any active assignment as claimed.
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PO Resp. 48–56. We do not agree. According to H.263, the “macroblock
consists of four luminance blocks and the two spatially corresponding colour
difference blocks.” Ex. 1006, 6 (§ 4.2.1). Thus, it explains the relationship
between the blocks (spatial correspondence). We understand Patent Owner
to argue that mere spatial correspondence of pixel information is
insufficient, because even spatially correlating pixels “are not blocks.”
PO Resp. 51. That argument, however, does not undermine Petitioner’s
reliance on H.263 because H.263 uses active language to describe the
process of generating the described blocks. For example, it states that
“[p]ictures are coded as luminance and two colour difference components
(Y, CB and CR)” and “[e]ach GOB is divided into macroblocks” Ex. 1006, 4
(§ 4.1) (emphasis added), 6 (§ 4.2.1) (emphasis added). We agree with
Petitioner that block operations, like those disclosed by H.263, show
affirmative action regarding correspondence. See Pet. Reply 6 (“As Dr.
Richardson testified, blocks are units that are created and processed during
video coding. See EX2022, ¶72. Accordingly, when a reference discloses a
correspondence between blocks, a POSA would reasonably infer that a step
was taken to create the correspondence.”).7
To resolve any doubt that H.263 satisfies the requirement for active
assignment, Petitioner points out that “H.263 discloses that ‘[m]otion vector
MVDCHR for both chrominance blocks is derived by calculating the sum of
the four luminance vectors and dividing this sum by 8.’” Pet. Reply 9
(quoting Ex. 1006, 37). That disclosure supports that H.263’s chroma blocks
are actively processed with the corresponding luma blocks. Indeed, as

7 Although Petitioner cites paragraph 72, the relevant testimony from
Dr. Richardson appears in paragraph 74.
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Petitioner points out (Pet. Reply 9), it supports even the unclaimed feature
that Patent Owner touches on—“the use of a function of the set of luma
block motion vectors for the assigned and linked chroma block sets.” See
PO Resp. 18.
We conclude that, although the 4:2:0 sampling format for H.263’s
pixel information is necessary but not sufficient for Petitioner’s showing,
H.263’s specific division of that pixel information into blocks (as modified
by Bjontegaard II) satisfies the “assign” claim limitation.
Patent Owner does not challenge Petitioner’s remaining assertions for
claims 1, 2, or 5–8. See PO Resp. 48–56. Accordingly, any such arguments
have been waived. See Paper 9, 7 (“Patent Owner is cautioned that any
arguments for patentability not raised in the response may be deemed
waived”). We have considered the entirety of the record in light of
Petitioner’s assertions in this ground of unpatentability (Pet. 54–77), and we
are persuaded by Petitioner’s contentions. In particular, independent
claims 5 and 7 recite substantially similar subject matter to claim 1, and, to
the extent claims 5 and 7 differ from claim 1, Petitioner persuasively
explains how the asserted prior art teaches these slight differences in recited
subject matter, such as the “computer-readable medium” of claim 5 and the
“assigning unit” of claim 7. See Pet. 74–76. Dependent claims 2, 6, and 8
recite that “the format is a color format written as Y/Cb/Cr, the luma
component is Y, the first chroma component is Cb, and the second chroma
component is Cr.” This is the format disclosed in H.263, as discussed above.
See Ex. 1006, 4 (“Pictures are coded as luminance and two colour difference
components (Y, CB and CR).”), Fig. 5; Pet. 72–73.
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Having reviewed the full record, we conclude that Petitioner has
shown the unpatentability of claims 1, 2, and 5–8 by a preponderance of the
record.
E. OBVIOUSNESS OVER H.263 AND BJONTEGAARD II
For claims 3 and 4, Petitioner relies on H.263 and Bjontegaard II,
without additional teachings from Song. Pet. 77. That difference results from
the lack of “circuitry configured to” language in claims 3 and 4. Claim 4
depends from claim 3 and recites the same additional subject matter as
claims 2, 6, and 8. Patent Owner makes no arguments unique to this ground
and thus has waived any such challenge. See Paper 9, 7.
For the reasons discussed above regarding obviousness over H.263,
Bjontegaard II, and Song, and as supported in the Petition (Pet. 77), we
conclude that Petitioner has shown by a preponderance of the evidence that
claims 3 and 4 are unpatentable over H.263 and Bjontegaard II.
F. REAL PARTIES IN INTEREST
Patent Owner argues that we should dismiss the Petition because it
does not name all real parties in interest. PO Resp. 59–64. Patent Owner
identifies ten companies (including three that joined after we instituted
review) that have paid membership fees to Petitioner and asserts that those
companies should have been named as real parties in interest. Id.
Petitioner challenges Patent Owner’s assertions, arguing that Unified
Patents Inc. is the sole real party in interest. Pet. Reply 17–26. Petitioner
cites evidence that it alone controls this proceeding (Ex. 2152, 5, 10–11;
Ex. 2138, 31:25–33:2; Ex. 1016, 3, 4; Ex. 2161, 93:5–17) and does not
communicate with its members about potential validity challenges before
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filing IPRs (Ex. 2138, 222:16–223:4). Petitioner searched for and could not
identify any communications with its members regarding the ’981 patent or
this proceeding other than public announcements. Pet. Reply 21; Ex. 2010;
Ex. 2161, 68:22–69:9. Petitioner confirms that “[n]o Unified member funded
this petition.” Pet. Reply 21 (citing Ex. 1016, 6). Petitioner further points out
that no alleged unnamed real party in interest would be subject to a time bar
under § 315(b). Id.
We have considered the parties’ submissions and determine that
Petitioner has adequately identified the real party in interest. Patent Owner
has introduced no evidence specific to this proceeding that causes us to
question Petitioner’s identification and has not identified an aspect of
Petitioner’s business structure that we view as showing the alleged unnamed
real parties in interest are clear beneficiaries with respect to this proceeding
that have a preexisting, established relationship with Petitioner. See Ventex
Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152, 6–11
(Jan. 24, 2019) (precedential).
G. THE BOARD’S CONSTITUTIONALITY
Patent Owner asserts that the “Board lacks the authority to issue a
Final Written Decision in this proceeding because the Administrative Patent
Judges (‘APJs’) are principal officers of the United States that must be
appointed by the President and confirmed by the Senate.” PO Resp. 57–58.
According to Patent Owner, the Federal Circuit’s decision in Arthrex, Inc. v.
Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), “did not actually fix
the problem.” PO Resp. 58.
We decline to consider Patent Owner’s constitutional challenge as the
issue has been addressed by the Federal Circuit in Arthrex. See Arthrex, 941
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F.3d at 1337 (“This as-applied severance . . . cures the constitutional
violation . . . .”).
III. REVISED CONTINGENT MOTION TO AMEND
Patent Owner requests that, if we find any of the challenged claims
unpatentable, we grant entry of proposed substitute claims 9–16,
corresponding to original claims 1–8, respectively. MTA 2.
A. APPLICABLE LAW
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d). The Board must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
(en banc); see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129,
Paper 15 at 3‒4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the
issuance of Aqua Products, the Federal Circuit issued a decision in Bosch
Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
(“Bosch”), as well as a follow-up order amending that decision on rehearing.
See Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir.
Mar. 15, 2018) (Order on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
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Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the proposed substitute claims, the Board focuses
on “arguments and theories raised by the petitioner in its petition or
opposition to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45,
51 (Fed. Cir. 2020). Ultimately, the Board determines whether the proposed
substitute claims are unpatentable by a preponderance of the evidence based
on the entirety of the record, including any opposition made by the
Petitioner. See Lectrosonics, Paper 15 at 4.
Notwithstanding the foregoing, Patent Owner’s proposed substitute
claims 9–16 must meet the statutory requirements of 35 U.S.C. § 316(d) and
the procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at
4–8. Accordingly, Patent Owner must demonstrate: (1) the amendment
proposes a reasonable number of substitute claims; (2) the amendment
responds to a ground of unpatentability involved in the trial, (3) the proposed
claims are supported in the original disclosure (and any earlier filed
disclosure for which the benefit of filing date is sought); and (4) the
amendment does not seek to enlarge the scope of the claims of the patent or
introduce new subject matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121.
B. PROPOSED SUBSTITUTE CLAIMS
Proposed claim 9 would replace claim 1 and recites:
[pre]9. An image processing device comprising:
[a] circuitry configured to
[b] assign four luma blocks of a block size including a
luma component of an image to one first chroma
block of the block size including first chroma
component of the image and one second chroma
block of the block size including second chroma
component of the image which is different from the
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first chroma component in a format of 4:2:0
including a luma signal and a chroma signal and that
the block size is 4x4[[.]];
[c] calculate four chroma motion vectors, mvc0, mvc1,
mvc2, and mvc3, based on mv0, mv1, mv2, and mv3,
wherein each of mv0, mv1, mv2, and mv3 is a motion
vector of a respective luma block of the four luma
blocks;
[d] for the first chroma block,
[f] select a first motion vector as mvcb from mvc0,
mvc1, mvc2, and mvc3, wherein mvcb is a motion
vector for the first chroma block,
[g] generate a first flag indicating the selected first
motion vector for the first chroma block,
[h] transmit the first flag for a horizontal direction of
the selected first motion vector, and
[i] transmit the first flag for a vertical direction of the
selected first motion vector separately from the
transmission of the first flag for the horizontal
direction of the selected first motion vector; and
[j] for the second chroma block,
[l] select a second motion vector as mvcr from mvc0,
mvc1, mvc2, and mvc3, wherein mvcr is a motion
vector for the second chroma block,
[m] generate a second flag indicating the selected
second motion vector for the second chroma
block,
[n] transmit the second flag for a horizontal direction
of the selected second motion vector, and
[o] transmit the second flag for a vertical direction of
the selected second motion vector separately from
the transmission of the second flag for the
horizontal direction of the selected second motion
vector.
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MTA 26–27 (claims appendix).8
C. STATUTORY AND REGULATORY REQUIREMENTS
1. Reasonable Number of Claims
35 U.S.C. § 316(d)(1)(B); 37 C.F.R. § 42.121(a)(3)
“There is a rebuttable presumption that a reasonable number of
substitute claims per challenged claim is one (1) substitute claim.”
Lectrosonics, Paper 15 at 4–5 (citing 37 C.F.R. § 42.121(a)(3)). Patent
Owner proposes one substitute claim for each challenged claim (see MTA 5)
and thus proposes a reasonable number of substitute claims.
2. Respond to a Ground of Unpatentability
37 C.F.R. § 42.121(a)(2)(i)
Patent Owner contends that the proposed substitute claims are
responsive to the grounds in this trial “because the additional narrowing
limitations in the proposed claims create a patent claim scope that is neither
anticipated nor rendered obvious by any of the four grounds on which trial
has been instituted.” MTA 8. We agree that the proposed substitute claims
adequately assert additional limitations relevant to the issues in the instituted
grounds. Thus, the proposed claims satisfy the requirement.
3. Scope of Amended Claims
35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii)
“A substitute claim will meet the requirements of § 42.121(a)(2)(i)
and (ii) if it narrows the scope of at least one claim of the patent, for
example, the challenged claim it replaces, in a way that is responsive to a

8 As noted by Patent Owner, the bracketed claim-element designations
intentionally omit [e] and [k]. MTA 26–27.
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ground of unpatentability involved in the trial.” Lectrosonics, Paper 15 at 6-
7. Patent Owner explains that its “proposed substitute claims retain all
features of the original claims while adding further limitations to recite,
among other things, calculating, identifying, and generating motion vector
information.” MTA 7. We agree with Patent Owner that the proposed
substitute claims are of narrower scope than the respective challenged
claims.
4. New Matter or Written Description
35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(b)(1)
An amendment cannot introduce new matter. 35 U.S.C. § 316(d)(3).
Thus, the motion to amend must set forth the support in the original
disclosure of the patent for each claim that is added or amended. 37 C.F.R.
§ 41.121(b)(1); Lectrosonics, Paper 15 at 7. Whether a disclosure complies
with the written-description requirement depends on whether the disclosure
reasonably conveys to a person of ordinary skill in the art that the inventor
had possession of the claimed subject matter at the time of filing, rather than
the presence or absence of literal support in the specification for the claim
language. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). Petitioner argues that Patent Owner fails to show
written description for the proposed substitute claims in several regards.
a. 9[c] – calculating four motion vectors
Limitation 9[c] requires circuitry configured to “calculate four chroma
motion vectors, mvc0, mvc1, mvc2, and mvc3, based on mv0, mv1, mv2, and mv3,
wherein each of mv0, mv1, mv2, and mv3 is a motion vector of a respective
luma block of the four luma blocks.” MTA 26 (claims appendix). Patent
Owner identifies paragraphs in the original application that it relies on for
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written-description support of limitation 9[c]. MTA 14 (citing Ex. 2015
¶¶ 129–131, 140–141; Ex. 2027 ¶¶ 89, 91, 93, 95); see also id. at 16–17
(citing Ex. 2027 ¶¶ 98–101). In Petitioner’s view, limitation 9[c] lacks
adequate written description for several reasons.
First, Petitioner asserts paragraphs 129–131 do not support the
limitation because they disclose calculating only one chroma motion vector
using all four luma motion vectors, whereas the limitation requires
calculating four chroma motion vectors. MTA Opp. 3–6.
With the claimed coding scheme, using 4:2:0 sampling and 4×4
blocks for both the luma information and chroma information, a given pixel
region is represented with four luma blocks and one chroma block for each
of the coded chroma channels (Cb and Cr). See Ex. 2015 ¶¶ 126, 128, Fig. 9.
The Specification9 describes several approaches to calculating a motion
vector for the chroma blocks. As a general form, it provides Equation 8,
which states that the chroma motion vector information, mvc, is a function of
the four luma motion vectors: “mvc = f(mv0, mv1, mv2, mv3).” Id. ¶¶ 129–
130. The Specification gives examples of that general form, in the first
example explaining that the four luma motion vectors may be averaged, as
shown in Equation 9, reproduced below:

9 For the issue of written-description support, the parties refer to Ex. 2015,
the Specification filed with the application that resulted in the ’981 patent.
See Ex. 1001, code (21); MTA 9 n.6. Thus, our use of “Specification” in
this discussion refers to Ex. 2015.
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Id. ¶ 131. Equation 9 shows a sum of the four luma motion vectors, along
with a scalar addition (offset) and a division (resolution scaling factor). Id.
¶¶ 131–132. The Specification explains that Equation 9 is calculated “for
each of the horizontal component and vertical component, as shown in . . .
[Equation] (9).” Id. ¶ 131.
Petitioner points out that Equations 8 and 9 disclose calculating only a
single chroma motion vector, not the four recited in limitation 9[c]. MTA
Opp. 4–6. Thus, reasons Petitioner, paragraphs 129–131 cannot provide
written-description support for the limitation. Id.
In its original Contingent Motion to Amend, Patent Owner proposed
substitute claims that included a particular equation for calculating the
claimed chroma motion vectors. Paper 22, 28 (reciting an equation in
limitation 9[c]). Our Preliminary Guidance informed Patent Owner that
those proposed claims introduced a potential indefiniteness because they
treated “motion vector” as both a scalar and vector quantity. Paper 33, 7–8.
In the Revised Contingent Motion to Amend, as noted, Patent Owner
proposes substitute claims without a particular equation to calculate the
chroma motion vectors. MTA 26–27 (claims appendix). Thus, Patent Owner
intentionally broadened the proposed claims in the Revised Motion as
compared to the original motion. Although we agree with Petitioner that
paragraph 131 describes using the four luma motion vectors to calculate a
single chroma motion vector, limitation 9[c] does not preclude this because,
for example, doing so repeatedly would produce four identical chroma
motion vectors, and, therefore, “calculate four chroma motion vectors.”
Accordingly, limitation 9[c] is supported by the disclosure in paragraph 131.
We note that Patent Owner appears to have embraced such claim scope by
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changing the proposed substitute claims to remove limitation to a particular
calculation and asserting that the broader claim language is supported by
paragraphs 129–131. See MTA 16–17 (citing ¶¶ 129–131 and asserting that
portion of the Specification “teaches the calculation of four chroma motion
vectors based on four luma motion vectors”).
The parties dispute a further aspect of Patent Owner’s asserted
support, in which Patent Owner cites but does not discuss paragraphs 140–
141. Compare MTA 14 (limitation 9[c]), with id. at 16–17.
The Specification states that, “besides processing by averaging,
processing shown in the next [Equation] (12), for example, may be
performed for f() in the above-described [Equation] (8).” Ex. 2015 ¶ 140.
The Specification gives an example of this non-averaging approach as
Equation (12), reproduced below:

Id. ¶ 141. Equation (12) indicates that four color-difference motion vectors
are calculated by applying the equation to each of the four luminance motion
vectors (“the motion vector information mv0, mv1, mv2, mv3, corresponding
to the four luminance signal blocks”). Id.
Petitioner argues that paragraphs 140–141 fail to support
limitation 9[c] because “they describe a method to calculate a scalar
quantity, not a vector,” whereas the limitation requires calculation of a
vector quantity. MTA Opp. 6–7; MTA Sur-Reply 6–8. Petitioner notes that
Equation (12) calculates a scalar quantity because it includes the addition of
a scalar quantity. MTA Opp. 7 (citing Ex. 1045 ¶ 15; MTA 21). Patent
Owner responds that, just like Equation (9) discussed above, Equation (12)
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refers to the horizontal and vertical components of a vector, calculated
separately. MTA Reply 5–9.
We agree with Patent Owner. As discussed, the Specification
discloses the approach captured in Equation (12) as an alternative to the
approach captured in Equation (9). Ex. 2015 ¶ 140 (“Also, besides
processing by averaging, processing shown in the next [Equation] (12), for
example, may be performed for f() in the above-described [Equation] (8).”).
We agree with Patent Owner also that a skilled artisan would read
paragraphs 140–141 and understand that “the motion vector information mvc
is calculated at the color difference motion vector generating unit 92 for
each of the horizontal component and vertical component” as the
Specification discloses in conjunction with Equation (9). Ex. 2015 ¶ 131; see
also id. ¶ 104 (“Note that, in reality, processing is independently performed
as to each of the components in the horizontal direction and vertical
direction of the motion vector information.”). Accordingly, Equation (12)
reflects scalar components of a motion vector, consistent with other
disclosures in the Specification.
Petitioner argues additionally that Equation (12) does not support
limitation 9[c] because the limitation requires calculating four motion
vectors such that each is calculated based on four motion vectors. MTA
Opp. 3 (“This limitation requires calculating four chroma motion vectors,
where each chroma motion vector is calculated based on four motion
vectors of respective luma blocks.”), 7 (“[E]ach scalar output mvci of
equation 12 is not based on the four luma motion vectors mv0, mv1, mv2, and
mv3, as limitation 9[c] further requires.”); MTA Sur-Reply 9–10. Patent
Owner disputes that construction, arguing that the limitation requires that
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four motion vectors—mv0, mv1, mv2, and mv3—be used to calculate the
claimed “four chroma motion vectors,” not that the four inputs be used to
calculate each of the four motion vectors. MTA Reply 11. We agree with
Patent Owner that Petitioner’s construction would unduly restrict the claims.
The claim language is not as specific as Petitioner asserts. Rather, it
recites: “calculate four chroma motion vectors, mvc0, mvc1, mvc2, and mvc3,
based on mv0, mv1, mv2, and mv3.” Notably, it does not require calculating
each of the four chroma motion vectors based on all four luma motion
vectors. Rather, it treats the “based on” requirement as applying to the “four
chroma motion vectors” as a unit. Thus, we do not read proposed substitute
claim 9 as requiring four luma motion vectors be used to calculate each of
four chroma motion vectors.10 And that understanding is consistent with the
Specification, as discussed above.
Finally, Petitioner argues that Patent Owner provides only a string
citation to show written-description support, without including adequate
explanation for how Patent Owner believes the cited paragraphs provide
support. MTA Sur-Reply 2–4; see also MTA Opp. 6 (“The RMTA does not
explain how paragraphs 140-141 provide written support to limitation 9[c]
(RMTA, 16-17). Dr. Richardson’s declaration only has a passing reference
to paragraphs 140-141 . . . .”). In this proceeding, where Patent Owner cited
two contiguous portions totaling five paragraphs, and where those

10 Significantly, however, we also do not agree with Patent Owner’s
assertion that we should read the claim as including the word
“respectively,” such that each chroma motion vector is calculated from
exactly one luma motion vector. See Tr. 73:1–74:1. Patent Owner’s
argument in that regard attempts to limit the claim to Equation 12 without
a basis in the claim language.
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paragraphs directly address the limitation at issue, we are satisfied that
Patent Owner met its initial burden. To be clear, we do not establish or
follow a set threshold to determine whether Patent Owner satisfied its
burden in the Revised Contingent Motion to Amend. Rather, we consider
whether Patent Owner reasonably asserted support such that Petitioner could
respond. Petitioner raised its arguments regarding limitation 9[c] in
opposition, and we conclude that Patent Owner was entitled to respond to
those arguments. In its Reply to Petitioner’s Opposition, Patent Owner does
not rely on additional paragraphs from the Specification beyond the five
cited in the Revised Contingent Motion to Amend. Thus, we also do not
agree with Petitioner that Patent Owner has raised impermissible new
arguments in its Reply. See MTA Sur-Reply 5.
Having reviewed the record in full, we are persuaded that Patent
Owner adequately demonstrates written-description support for
limitation 9[c] and, thus, that the limitation does not introduce new matter.
b. 9[f], 9[l] – selecting a motion vector
Limitation 9[f] requires circuitry configured to “select a first motion
vector as mvcb from mvc0, mvc1, mvc2, and mvc3, wherein mvcb is a motion
vector for the first chroma block”; limitation 9[l] applies that same
requirement to the second chroma block, such that mvcr is selected from the
same set of four calculated chroma motion vectors. Patent Owner identifies
paragraphs in the original application that it relies on for written-description
support of limitations 9[f] and 9[l]. MTA 14 (citing Ex. 2015 ¶¶ 136, 140–
142), 18.
In Petitioner’s view, limitations 9[f] and 9[l] lack adequate support
because of the mismatch between calculating a scalar quantity and selecting
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a vector quantity. MTA Opp. 8–9. This argument follows Petitioner’s
argument regarding limitation 9[c], discussed above. That is, once we accept
that a skilled artisan would read paragraphs 140–141 and understand to
apply Equation 12 in a piecewise fashion—to the horizontal and vertical
components of a vector separately—then, in practice, Equation 12 produces
a vector quantity. Thus, there is no mismatch between the calculated chroma
motion vectors and the requirement to select a motion vector.
Perhaps more significantly, the claim language plainly requires
calculating and selecting vector quantities (“calculate four chroma motion
vectors, mvc0, mvc1, mvc2, and mvc3 . . . select a first motion vector as mvcb
from mvc0, mvc1, mvc2, and mvc3”). And paragraph 142 plainly describes
selecting a vector quantity. Ex. 2015 ¶ 142 (“[T]he color difference motion
vector generating unit 92 selects from the motion vectors for the
corresponding luminance signal blocks that which yields the highest
encoding efficiency as to color difference signals . . . .”). Thus, the
Specification supports the language of limitations 9[f] and 9[l].
Having reviewed the record in full, we are persuaded that Patent
Owner adequately demonstrates written-description support for
limitations 9[f] and 9[l] and, thus, that the limitations do not introduce new
matter.
c. 9[g], 9[m] – generating flags for the MV vertical and horizontal
directions
Limitation 9[g] requires circuitry configured to “generate a first flag
indicating the selected first motion vector for the first chroma block”;
limitation 9[m] applies that same requirement to the second chroma block.
Patent Owner identifies paragraphs in the original application that it relies on
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for written-description support of limitations 9[g] and 9[m]. MTA 14–15
(citing Ex. 2015 ¶¶ 140–142); see also id. at 19 (citing Ex. 2027 ¶¶ 105–
106).
Petitioner argues that limitations 9[g] and 9[m] lack adequate support
because the flags discussed in the Specification “indicate scalar quantities,
not vectors.” MTA Opp. 10. As with the foregoing dispute about
limitations 9[f] and 9[l], this dispute turns on our resolution of Petitioner’s
argument regarding limitation 9[c], discussed above. We conclude that the
Specification supports applying the approach described in paragraphs 140–
142 such that vectors are calculated in a piecewise fashion to obtain a
vector’s horizontal and vertical components. See Ex. 2015 ¶ 142 (“[T]he
color difference motion vector generating unit 92 generates a flag relating to
which i was used from i_= 0 through 3, and supplies this to the lossless
encoding unit 66, so as to be added to the header of the compressed image to
be transmitted to the decoding side.”); see also id. ¶ 143 (“The flag may be
transmitted separately for the horizontal direction and vertical direction, or a
single flag may be transmitted for both the horizontal direction and vertical
direction.”).
Having reviewed the record in full, we are persuaded that Patent
Owner adequately demonstrates written-description support for
limitations 9[g] and 9[m], and thus that the limitations do not introduce new
matter.
D. UNPATENTABILITY OF THE PROPOSED SUBSTITUTE CLAIMS
Petitioner argues that the proposed substitute claims are unpatentable
both because they include limitations that render the claim scope indefinite
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(MTA Opp. 11–15) and also because they are rendered obvious by the prior
art (id. at 15–25).
1. Indefiniteness
Petitioner asserts that performing the limitation “calculating four
chroma motion vectors” in accordance with approach described in
paragraphs 129–131 (Equations (8) or (9)) produces a single chroma motion
vector using the four luma motion vectors as inputs. MTA Opp. 14. As
discussed above, Patent Owner relies on those paragraphs to assert that the
Specification supports the claims. MTA 16–17; see supra at 24–27. As also
discussed above, we agree with Petitioner that calculating the claimed
chroma motion vectors as described in paragraphs 131–132 would produce
four identical motion vectors. See supra at 26.
Petitioner argues that a skilled artisan would not be able to select a
chroma motion vector from four identical options because “[s]uch a task is
clearly ambiguous and would be unclear how to perform.” MTA Opp. 14
(citing Ex. 1045 ¶¶ 34, 35); see Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120, 2124 (2014) (“[A] patent is invalid for indefiniteness if its
claims, read in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty, those skilled in
the art about the scope of the invention.”); In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014) (holding a claim is indefinite when it contains words
or phrases whose meaning is “unclear in describing and defining the claimed
invention”). As Petitioner notes, Patent Owner does not respond to this
argument. MTA Sur-Reply 10. We agree with Petitioner that the claim is
indefinite. By encompassing a calculation that produces four identical
results, the claim language presents a case where a skilled artisan would
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have no criterion on which to select one of the four calculated motion
vectors. Moreover, Patent Owner has identified no record evidence to
support that a skilled artisan would understand how to apply the claim
language to a set of four identical results. In this regard, we credit the
testimony of Petitioner’s declarant. Ex. 1045 ¶¶ 34–35.
Having reviewed the full record, we conclude that Petitioner has
shown proposed substitute claim 9 is indefinite and, therefore, unpatentable.
Because all proposed substitute claims suffer from the same problem, we
reach the same conclusion for all the proposed substitute claims.
Accordingly, we deny Patent Owner’s Revised Contingent Motion to
Amend.11
2. Obviousness over H.263, Bjontegaard II, Song, and Holcomb
Petitioner argues additionally that the proposed substitute claims
would have been obvious over a combination of H.263, Bjontegaard II,
Song, and Holcomb.12 MTA Opp. 15–25. Although we need not address this
obviousness contention, having determined the claims unpatentable as
indefinite, we conclude that Petitioner’s assertions fall short in one regard.13
Petitioner relies on Holcomb’s Figure 40, which is reproduced below:

11 Having determined the claims unpatentable on the basis discussed, we do
not address Petitioner’s other argument for indefiniteness. See
MTA Opp. 12–13.
12 U.S. Pat. No. 7,317,839, issued Jan. 8, 2008 (Ex. 1040).
13 The indefinite claim limitation discussed above does not impact our
obviousness analysis, which is limited to Petitioner’s failure to show how
the prior art teaches different claimed subject matter.
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Ex. 1040, Fig. 40; see MTA Opp. 18. Figure 40 depicts pseudocode for
selecting luminance motion vectors that contribute to chroma motion vectors
for motion-compensated macroblocks. Ex. 1040, 19:39–41. Figure 40
presents a function, SelectChromaMVFrom4MV, which returns a motion
vector based on characteristics of the luma motion vectors. Id. at Fig. 40,
49:61–50:23. As part of determining what motion vector to return, the
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function in Figure 40 uses a variable “Chosen MVs,” which is determined by
“Count[ing] the number of MV’s of the chosen polarity.” Id. at Fig. 40.
Limitations 9[g], 9[h], and 9[i] together require that the claimed
device “generate a first flag indicating the selected first motion vector for the
first chroma block” and then transmit that flag for the horizontal and vertical
directions separately. Petitioner contends that H.263 and Holcomb together
disclose the limitations. MTA Opp. 22–23. In particular, Petitioner asserts
that Holcomb’s variable “Chosen MVs” “indicates which of the four first
chroma motion vectors is returned by function
‘SelectChromaMVFrom4MV’” (id. at 22) and that “the corresponding
values of the first flag, ‘Chosen MVs,’ must also be transmitted for each
direction, so that the decoder is informed about the chosen polarity of the
luma motion vectors” (id. at 24).
Patent Owner challenges Petitioner’s contentions, arguing that
Petitioner fails to show a flag that identifies a motion vector’s index.
MTA Reply 12. We agree with Patent Owner that Petitioner fails to identify
an adequate disclosure in Holcomb. We need not agree that the claimed flag
must identify a motion vector’s index because Petitioner’s contentions fail to
adequately support why an internal variable (Chosen MVs) would be
transmitted, and we do not see how Figure 40’s pseudocode provides
support for such a conclusion.
Having reviewed the record, we conclude that Petitioner has not
shown that proposed substitute claim 9 would have been obvious over
H.263, Bjontegaard II, Song, and Holcomb. Because Petitioner relies on the
same aspect of Holcomb for the parallel limitations in the other proposed
substitute claims (MTA Opp. 27), for the same reason we conclude that
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Petitioner has not shown any of the proposed substitute claims would have
been obvious.
IV. CONCLUSION14
Claims

35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–4 102(b) Bjontegaard 1–4
5–8 103 Bjontegaard and Song 5–8
1, 2, 5–8 103
H.263,
Bjontegaard II,
Song
1, 2, 5–8
3, 4 103 H.263, Bjontegaard II 3, 4
Overall
Outcome 1–8

Revised Motion to Amend Outcome Claims
Original Claims Cancelled by Amendment
Substitute Claims Proposed in the Amendment 9–16
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 9–16
Substitute Claims: Not Reached

14 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue
application or a request for reexamination of the challenged patent, we
remind Patent Owner of its continuing obligation to notify the Board of
any such related matters in updated mandatory notices. See 37 C.F.R.
§ 42.8(a)(3), (b)(2).
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V. ORDER
Upon consideration of the record, it is:
ORDERED that claims 1–8 of U.S. Patent No. 9,979,981 B2 are
unpatentable;
FURTHER ORDERED that Patent Owner’s Revised Contingent
Motion to Amend is denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
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:

David L. Cavanaugh
Trishan Esram
Brian J. Lambson
Jonathan P. Knight
WILMER CUTLER PICKERING HALE AND DORR LLP
david.cavanaugh@wilmerhale.com
trishan.esram@wilmerhale.com
brian.lamson@wilmerhale.com
jonathan.knight@wilmerhale.com

Jung Hahm
Jonathan Bowser
Jonathan Stroud
UNIFIED PATENTS INC.
jung@unifiedpatents.com
jbowser@unifiedpatents.com
jonathan@unifiedpatents.com

Theodoros Konstrantakopoulos
tkonstantakopoulos@desmaraisllp.com

FOR PATENT OWNER:

Brent N. Bumgardner
Thomas C. Cecil
Barry J. Bumgardner
Matthew C. Juren
NELSON BUMGARDNER ALBRITTON P.C.
bbumgardner@nbclaw.net
tom@nelbum.com
barry@nelbum.com
matthew@nelbum.com