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HAHN & ADEMA
501 West Broadway, Suite 1600
San Diego, California 92101-3595
Telephone: (619) 235-2100
Facsimile: (619) 235-2101
Attorney for Plaintiffs Lucent Technologies Inc.
and Multimedia Patent Trust
(Additional counsel listed on the last page)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
Case No. 07-CV-2000-H (CAB)
LUCENT TECHNOLOGIES INC. and
MULTIMEDIA PATENT TRUST,
Plaintiff,
v.
GATEWAY, INC., GATEWAY COUNTRY
STORES LLC, GATEWAY COMPANIES,
INC., GATEWAY MANUFACTURING LLC
and COWABUNGA ENTERPRISES, INC.,
Defendants,
and
MICROSOFT CORPORATION,
Intervener.
MICROSOFT CORPORATION,
Plaintiff,
v.
LUCENT TECHNOLOGIES INC.,
Defendant.
Case No. 07-CV-2000-H (CAB)
consisting of matters severed from
consolidated cases:
Case No. 02-CV-2060 B (CAB)
Case No. 03-CV-0699 B (CAB)
Case No. 03-CV-1108 B (CAB)
MULTIMEDIA PATENT TRUST’S
OPPOSITION TO DELL’S MOTION
FOR SUMMARY JUDGMENT
CONCERNING ALLEGED
INVALIDITY OF U.S. PATENT NO.
4,383,272
Date: January 7, 2008
Time: 10:30 A.M.
Courtroom: 13
Judge: Hon. Marilyn L. Huff
LUCENT TECHNOLOGIES INC. and
MULTIMEDIA PATENT TRUST,
Plaintiff,
v.
DELL INC.,
Defendant.
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 1 of 26
TABLE OF CONTENTS
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TABLE OF AUTHORITIES ....................................................................................................... ii
I. INTRODUCTION..............................................................................................................1
II. TECHNICAL BACKGROUND.......................................................................................3
A. Video Coding ...........................................................................................................3
B. The Netravali ‘272 Patent ........................................................................................4
C. The Gabor & Hill Reference....................................................................................6
III. LEGAL STANDARDS ......................................................................................................7
A. Summary Judgment .................................................................................................7
B. Obviousness .............................................................................................................8
IV. ARGUMENT......................................................................................................................9
A. Dell Cannot Meet Its Burden Of Establishing Obviousness By Clear And
Convincing Evidence Based On Undisputed Facts .................................................9
1. “determining by interpolation the intensities of pels” ...............................10
2. “related locations”......................................................................................17
V. CONCLUSION ................................................................................................................21
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272 i
Case No. 07-CV-2000-H (CAB)
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 2 of 26
TABLE OF AUTHORITIES
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CASES
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986)...................................................................................................................8
Bruckelmyer v. Ground Heaters, Inc.,
453 F.3d 1352 (Fed. Cir. 2006)................................................................................................19
Caterpillar Inc. v. Deere & Co.,
224 F.3d 1374 (Fed. Cir. 2000)..................................................................................................7
Celotex Corp. v. Catrett,
477 U.S. 317 (1986)...............................................................................................................7, 9
Crown Operations Int’l, Ltd. v. Solutia Inc..
289 F.3d 1367 (Fed. Cir. 2002)..................................................................................................8
Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387 (Fed. Cir. 1988)................................................................................................20
Ecolochem, Inc. v. S. Cal. Edison Co.,
227 F.3d 1361 (Fed. Cir. 2000)................................................................................................18
Eli Lilly and Co. v. Barr Labs., Inc.,
251 F.3d 955 (Fed. Cir. 2001)....................................................................................................8
Forest Labs., Inc. v. Ivax Pharms., Inc.,
501 F.3d 1263 (Fed. Cir. 2007)..................................................................................................8
Graham v. John Deere Co.,
383 U.S. 1 (1966).......................................................................................................................8
In re Kahn,
441 F.3d 977 (Fed. Cir. 2006)....................................................................................................9
KSR Int’l. Co. v. Teleflex Inc.,
--- U.S. ---, 127 S.Ct. 1727 (2007).............................................................................8, 9, 10, 14
National Steel Car, Ltd. v. Canadian Pac. Ry., Ltd.,
357 F.3d 1319 (Fed. Cir. 2004)................................................................................................18
Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348 (Fed. Cir. 2007)..................................................................................................8
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
ii Case No. 07-CV-2000-H (CAB)
PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
491 F.3d 1342 (Fed. Cir. 2007)................................................................................9, 10, 15, 20
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 3 of 26
Ruiz v. A.B. Chance Co.,
234 F.3d 654 (Fed. Cir. 2000)..................................................................................................20 1
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Schumer v. Lab. Computer Sys., Inc.,
308 F.3d 1304 (Fed. Cir. 2002)..................................................................................................8
Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd.,
492 F.3d 1350 (Fed. Cir. 2007)............................................................................................9, 10
United States v. Boyce,
148 F. Supp. 2d 1069 (S.D. Cal. 2001)......................................................................................7
STATUTES
35 U.S.C. § 102..............................................................................................................................18
35 U.S.C. § 103(a) ...........................................................................................................................8
Fed. R. Civ. P. 56(c) ........................................................................................................................7
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
iii Case No. 07-CV-2000-H (CAB)
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 4 of 26
I. INTRODUCTION 1
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Dell’s motion for summary judgment that Claim 13 of the Netravali ‘272 patent is invalid as
obvious in light of the Gabor & Hill reference fails because Dell has not fulfilled its summary
judgment obligation to present proof that, left unrebutted, would support a finding of obviousness by
clear and convincing evidence. Rather than demonstrating the required prima facie case of
obviousness, Dell incorporates by reference the conclusory (and therefore deficient) opinions of its
technical expert, Edward Delp, and then launches into a misguided discussion of MPT’s alleged
failure to raise a genuine issue of material fact. But Dell’s unsupported attorney arguments —
riddled with mischaracterizations of the prior art and the testimony of MPT’s technical expert, Bernd
Girod — cannot suffice to overcome the presumption of patent validity. Because Dell has not made
a prima facie challenge to validity, its motion for summary judgment fails even in the absence of
rebuttal proof.
Dell’s contention that the Gabor & Hill reference renders obvious all of the elements of
Claim 13 relies upon a false interpretation of the term “pel” that is built on misquotations of MPT’s
expert and that is not supported by the patents, the prior art, or any testimony save for the conclusory
remarks of Dell’s own expert. Contrary to Dell’s argument, Professor Girod has not opined that
Claim 13 is limited to a digital implementation. Rather, Professor Girod has explained that the
concept of a “pel” in the context of the Netravali ‘272 patent requires sampling of the video signal in
the temporal, vertical, and horizontal dimensions. Indeed, this Court has already ruled that a
genuine factual dispute exists for trial as to whether the Gabor & Hill reference discloses a system
that uses pels in the context of the Netravali ‘272 patent. As a result, that issue must be resolved in
MPT’s favor here.
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272 1
Case No. 07-CV-2000-H (CAB)
Moreover, even if Dell could meet its initial burden on summary judgment, Dell’s allegations
of obviousness are readily rebutted by evidence demonstrating the existence of genuine factual
disputes for trial. Professor Girod has assessed the scope and content of the prior art, the differences
between the prior art and the claimed invention, and the level of ordinary skill in the art, and has
opined that Claim 13 is nonobvious. He explains, for example, that the Gabor & Hill reference lacks
crucial requirements of Claim 13 — namely, pel-based processing and interpolation based on related
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 5 of 26
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locations — and that a person of ordinary skill in the art at the time of the Netravali ‘272 invention
would see no reason to adapt the obsolete Gabor & Hill prior art system to arrive at the invention of
Claim 13.
For example, Professor Girod rebuts Dell’s argument that it would have been obvious to a
person of skill in the art to modify the Gabor & Hill system to include the missing pel-based
processing because a person of ordinary skill in the art in the 1980s would have been implementing
a system in the digital domain. As Professor Girod explains, the obsolete mechanical-optical
apparatus of the Gabor & Hill system, which would have been state of the art in the 1960s, does not
lend itself to any meaningful digital implementation. Thus, and contrary to Dell’s argument, a
person of skill in the art, surrounded by the many effective video coding techniques available in the
relevant time-frame, would not have been prompted to implement the outmoded Gabor & Hill
system in a digital format.
Dell also argues that it would have been obvious to modify Gabor & Hill to include the
missing interpolation based on related locations because a single individual — Dr. Jaswant Jain —
allegedly arrived at the invention of Claim 13 independently. But Dell’s argument turns on a
misunderstanding (or misstatement) of the law. The law does not render an invention per se invalid
simply because another individual arrived at the invention around the same time. Furthermore, the
fact that one other individual — a person of greater than ordinary skill in the art — purportedly
conceived of the Netravali ‘272 patent invention around the same time as the named inventors
cannot substitute for the requisite proof that the invention would have been obvious to a hypothetical
person of ordinary skill.
Finally, Professor Girod’s opinion that Claim 13 of the Netravali ‘272 patent is nonobvious is
supported by other objective evidence, including the failure of others to arrive at the invention, the
commercial success of the invention, and the licensing of the invention by others. In sum, because
Dell has not presented a prima facie case of obviousness, and because more than sufficient proof
exists to support a finding of nonobviousness, Dell’s summary judgment motion should be denied.
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
2 Case No. 07-CV-2000-H (CAB)
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 6 of 26
II. TECHNICAL BACKGROUND 1
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A. Video Coding
Digital video signals, such as those stored on a DVD, contain information defining many
separate pictures, or frames, that produce the illusion of motion when viewed in rapid succession.
(Declaration of Bernd Girod in Support of Multimedia Patent Trust’s Oppositions to Dell’s Video
Coding Summary Judgment Motions (hereinafter “Girod Opp. Decl.”) at ¶ 6.) The digital
representation of a video signal is fundamentally different from an analog representation of a video
signal. In an analog signal representation, the brightness and color of an image is represented by
some aspect of an electrical waveform, typically the amplitude of a voltage, which varies
continuously. (Id. at ¶ 7.) The brightness and color distribution on the target of a video camera is
sampled along the time axis and in the vertical direction, but along a scan line it is continuous — not
sampled — in both the horizontal direction and amplitude. (Id.) A digital signal, on the other hand,
must be discrete in both the horizontal and vertical space dimensions and the time dimension, as well
as in amplitude, so that it can be represented by a stream of binary numbers. The resulting
individual samples along a scan line are referred to as picture elements, often abbreviated pels or
pixels. Digital video signals define pixels, while analog video signals do not. (Id.)
The amount of information needed to represent digitally each frame of a video signal in its
entirety is too great for economical storage and transmission. (Id. at ¶ 8.) For most transmission or
storage applications, it is therefore important to reduce the amount of information required to
represent video signals in digital form. (Id.) Techniques developed to achieve such reduction are
commonly called “video compression” or “video coding” techniques. (Id.)
Video compression techniques generally exploit what is known in the art as “statistical
redundancy.” (Id. at ¶ 11.) Statistical redundancy refers to the empirical fact that much of the
information both within and between frames of a video sequence is repetitive, or “redundant.” (Id.)
Video compression techniques take advantage of that redundancy to store or transmit the video
signal efficiently; that is, with as few bits as possible. (Id.)
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
3 Case No. 07-CV-2000-H (CAB)
For example, nearby frames in a video sequence are often very similar. In fact, when viewed
side-by-side, they may appear almost indistinguishable. This is because nearby frames typically
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 7 of 26
show the same objects at slightly shifted positions in the image. (Id. at ¶ 16.) Video compression
techniques that exploit this redundancy between frames are called “interframe compression”
techniques. (Id.) Substantial data compression can be achieved by exploiting the frame-to-frame
similarities in a video sequence using interframe coding techniques. (Id.)
Modern video compression systems use an interframe compression technique called “motion-
compensated prediction” to exploit the similarities between nearby video frames. (Id. at ¶ 17.) The
idea of motion-compensated prediction is to apply an estimate of the displacement that objects have
undergone from one frame to the next. (Id.) The displacement estimate itself is derived through a
separate process called “motion estimation.” (Id.) If the displacement estimate is accurate, then
pixel information in a current frame can be predicted accurately by applying the displacement
estimate to a previous frame. (Id.)
Following in the footsteps of the Netravali ‘272 patent inventors, many modern video
compression systems also use an interframe compression technique called “motion-compensated
interpolation” to exploit the similarities between nearby video frames. (Id. at ¶ 20.) As the name
suggests, motion compensated interpolation predicts pixel information in a current frame by
averaging pixel information obtained from preceding and subsequent frames. (Id.) The pixel
information used in the averaging process is obtained using motion compensated prediction as
described above. (Id.) In the case of motion compensated interpolation, however, two displacement
estimates are used — one based on a previous frame, and another based on a subsequent frame — to
generate forward and backward predictions. (Id.) The two predictions are then averaged. (Id.)
B. The Netravali ‘272 Patent
Generally speaking, the Netravali ‘272 patent describes digital video compression methods
and circuits that combine motion compensation with interframe interpolation.1 (Girod Opp. Decl. at
(Continued…)
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MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
4 Case No. 07-CV-2000-H (CAB)
1Dell claims that interframe interpolation or “recovering a non-transmitted picture from both
previous and succeeding versions” was the point of novelty of the Netravali ‘272 patent invention.
(Dell. Br. at 5.) The “Background of the Invention” section of the Netravali ‘272 patent, however,
expressly notes that interframe interpolation was known in the art. (Ex. 15, ‘272 Patent at 1:18-27.)
Indeed, Dell’s own technical expert witness, Dr. Delp, concedes that the specification of the
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 8 of 26
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¶¶ 22-23.) The methods and circuits disclosed in the Netravali ‘272 patent reconstruct the intensities
of pels in a picture using interframe interpolation. (Id. at. ¶ 23.) The locations of the pels used for
interpolation (“reference pels”) correspond to locations at which the same object is expected to be in
preceding and succeeding versions of the picture. (Id.)
The asserted claim of the Netravali ‘272 patent, Claim 13, describes a method of estimating
pel intensities through motion compensated interframe interpolation:
A method of estimating the intensities of elements (pels) in a picture in
accordance with information defining intensities of pels in preceding
and succeeding versions of the picture including the step of
determining by interpolation intensities of pels in said picture in
accordance with intensities of pels in related locations in said
preceding and succeeding versions,
characterized in that
said determining step includes selecting of said related locations as a
function of the displacement of objects in said picture.
(Ex. 15, ‘272 Patent.)2 The Court has already construed the language of Claim 13. (Ex. 16, ‘272
Superceding Markman Order.) For example, the Court construed the term “pels” to mean “picture
elements, also referred to as pixels.” (Id.) Furthermore, the Court construed “related locations” to
mean “locations at which the same object is expected to be.” (Id.)
Netravali ‘272 patent discloses that interframe interpolation was known in the art. (November 29,
2007, Delp Deposition at p. 147.) Because simple interframe interpolation — as opposed to the
motion-compensated interframe interpolation of the Netravali ‘272 patent — was presented to the
Patent Office as prior art, it cannot be the “patentable distinction” envisioned by the Patent Office.
Rather, the portion of the prosecution history cited by Dell merely shows that the inventors
distinguished two specific prior art references on the grounds that they disclosed motion
compensated prediction, but not interframe interpolation. (Dell Br. at 5.) The inventors did not
contend that the art as a whole failed to disclose interframe interpolation, nor did they suggest that
their invention was interframe interpolation in the absence of motion compensation.
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
5 Case No. 07-CV-2000-H (CAB)
2 All citations to exhibits refer to the Declaration of Jennifer J. Schmidt in Support of Multimedia
Patent Trust’s Oppositions to Dell’s Video Coding Summary Judgment Motions, filed concurrently
herewith.
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 9 of 26
C. The Gabor & Hill Reference
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The article “Television Band Compression By Contour Interpolation,” by Denis Gabor and
Peter C. J. Hill (“the Gabor & Hill reference”) was published in 1961. (Ex. 17, Gabor & Hill
Reference.) The Gabor & Hill reference does not describe digital video compression at all. Rather,
the Gabor & Hill reference describes an experimental system for reducing the width of the frequency
band required for transmission of analog television signals. (Girod Opp. Decl. at ¶ 37.) The authors
suggest omitting television fields or frames in regular intervals and then reinserting them at the
receiver by interpolation from transmitted fields or frames. They further describe a method of
“contour interpolation,” which controls the combination of two analog signals derived by horizontal
scanning of two separate lines of stored fields or frames:
In the method of contour interpolation the two [scanning] spots run
with equal speed v until one of them reaches an edge, i.e. a position
where the intensity changes at more than a certain predetermined rate.
Here it stops, while the other spot, which has not yet reached the
contour, moves on with a speed 2v, so that the interpolated spot,
midway between the two, moves on with constant velocity v. This
continues until the second spot has also reached the contour, after
which the retarded spot gradually catches up with the other until both
move again with the same speed v. . . . [T]he interpolated intensity I
is formed as the arithmetical mean of the two intensities, but weighted
with the velocities . . .
(Ex. 17, Gabor & Hill Reference at MSLT_0001230.) The “contour interpolation” technique
produces an analog signal corresponding to the intensity of the line being interpolated. (Girod Opp.
Decl. at ¶ 37.)
As such, the Gabor & Hill system interpolates lines — rather than pixels, pels, or picture
elements — because it is an analog system that does not sample video signals in the horizontal
dimension. (Id. at ¶ 38, 40.) Instead, the Gabor & Hill system samples the video signal in the
temporal dimension (dividing it into frames or fields) and the vertical dimension (dividing it into
horizontal lines). (Id.) Unlike the Netravali ‘272 patent, the Gabor & Hill system does not sample
the video signal in the horizontal dimension to form discrete pels. (Id.)
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
6 Case No. 07-CV-2000-H (CAB)
Line interpolation in the Gabor & Hill system proceeds as follows. Reference frames or
fields used as the inputs for interpolation are stored as visible images on separate cathode ray tubes.
(Id. at ¶¶ 37, 40; see also Ex. 17, Gabor & Hill Reference.) Photo-mechanical devices called
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“scanners” then use electron beams to separately but simultaneously scan a horizontal line in each
reference frame. (Id.) The scanners output a continuous waveform signal for each horizontal “scan
line,” which fluctuates depending on the intensity of the line being scanned. (Id.) The waveform
signals for corresponding horizontal lines in each reference frame are then combined using analog
circuitry to generate a single waveform output signal. (Id.) This output signal represents the
“interpolated” horizontal line. (Id.)
The Gabor & Hill system of line interpolation differs markedly from the systems described in
the Netravali ‘272 patent. First, as described above, the Gabor & Hill system performs no
operations — such as interpolation or selection — using pels, because it does not sample intensity
information in the horizontal dimension to yield discrete intensity values for discrete pels. Second,
to the extent that the Gabor & Hill system performs any kind of interpolation, that interpolation is
not motion compensated. Rather, the Gabor & Hill system merely varies the weighting of waveform
inputs into its analog “interpolation” as a function of abrupt changes in the intensity signals along the
horizontal scan lines. (Girod Opp. Decl. at ¶ 43.) This technique, called “contour interpolation,”
fails to account for the displacement of objects between frames or fields. (Id.)
III. LEGAL STANDARDS
A. Summary Judgment
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
7 Case No. 07-CV-2000-H (CAB)
Summary judgment is appropriate only where “the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). Where,
as here, “the moving party bears the burden of proof at trial, it cannot obtain summary judgment
unless it presents evidence so compelling that no rational jury would fail to award judgment for the
moving party.” United States v. Boyce, 148 F. Supp. 2d 1069, 1080 (S.D. Cal. 2001). Furthermore,
“[w]hen ruling on a motion for summary judgment, all of the nonmovant’s evidence is to be
credited, and all justifiable inferences are to be drawn in the nonmovant’s favor.” Caterpillar Inc. v.
Deere & Co., 224 F.3d 1374, 1379 (Fed. Cir. 2000).
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A summary judgment determination must also be guided by the appropriate burden of proof.
If the Court determines that a reasonable jury applying the proper burden of proof — in this case
clear-and-convincing evidence — could find for the non-movant, then there exists a genuine issue of
material fact that precludes granting of summary judgment. See Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 254-555 (1986).
B. Obviousness
Because every patent is presumed valid, accused infringers face a “high burden of showing
invalidity on summary judgment.” Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed.
Cir. 2002). “[A] party seeking to invalidate a patent at summary judgment must submit clear and
convincing evidence of invalidity so that no reasonable jury could find otherwise.” Eli Lilly and Co.
v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) (emphasis added). If evidence is presented
establishing a prima facie case of invalidity, the opponent of invalidity must come forward with
evidence to counter the prima facie challenge to the presumption of validity, but “the ultimate
burden of proving invalidity remains with the challenger throughout the litigation.” Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1360 (Fed. Cir. 2007).
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
8 Case No. 07-CV-2000-H (CAB)
A claimed invention can be found obvious only “if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. §
103(a). Obviousness is ultimately a question of law based on underlying determinations of fact.
Forest Labs., Inc. v. Ivax Pharms., Inc., 501 F.3d 1263, 1269 (Fed. Cir. 2007). The underlying
factual issues to be considered in an obviousness analysis include “four general types, all of which
must be considered by the trier of fact: (1) the scope and content of the prior art; (2) the level of
ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4)
any objective indicia of nonobviousness.” Crown Operations Int’l, Ltd. v. Solutia Inc.. 289 F.3d
1367, 1376 (Fed. Cir. 2002). Earlier this year, the United States Supreme Court reaffirmed the
primacy of those factors in determining whether a patent is invalid for obviousness. See KSR Int’l.
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 12 of 26
Co. v. Teleflex Inc., --- U.S. ---, 127 S.Ct. 1727, 1734 (2007) (citing Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966)).
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“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR, 127 S. Ct. at 1741 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)). Thus, “the burden falls on the patent challenger to show by clear and convincing
evidence that a person of ordinary skill in the art would have had reason to attempt to make the
composition or device, or carry out the claimed process, and would have had a reasonable
expectation of success in doing so.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342,
1360 (Fed. Cir. 2007) (citing, inter alia, KSR, 127 S. Ct. at 1740).
In that regard, the Supreme Court has “acknowledged the importance of identifying ‘a reason
that would have prompted a person of ordinary skill in the relevant field to combine the elements in
the way the claimed new invention does’ in an obviousness determination.” Takeda Chem. Indus.,
Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356-57 (Fed. Cir. 2007) (quoting KSR, 127 S. Ct. at
1731). Accordingly, “[a] patent composed of several elements is not proved obvious merely by
demonstrating that each element was, independently, known in the prior art.” KSR, 127 S. Ct. at
1731. For example, “combining elements that work together ‘in an unexpected and fruitful manner’
would not have been obvious.” PharmaStem, 491 F.3d at 1360 (quoting KSR, 127 S. Ct. at 1740).
Moreover, “when the prior art teaches away from combining certain known elements, discovery of a
successful means of combining them is more likely to be nonobvious.” KSR, 127 S.Ct at 1740.
IV. ARGUMENT
A. Dell Cannot Meet Its Burden Of Establishing Obviousness
By Clear And Convincing Evidence Based On Undisputed Facts
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
9 Case No. 07-CV-2000-H (CAB)
Because Dell cannot prevail on its obviousness defense without resolving numerous genuine
factual disputes, Dell’s motion for summary judgment fails. Celotex Corp. v. Catrett, 477 U.S. 317,
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 13 of 26
322-23 (1986). In its motion papers, Dell completely ignores the burden it must overcome to
establish that Claim 13 of the Netravali ‘272 patent is invalid as obvious on summary judgment.
Rather than presenting “some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness,” KSR, 127 S. Ct. at 1741, Dell proceeds as though its mere
identification of an allegedly invalidating prior art reference places the onus on MPT to disprove
obviousness. On the contrary, Dell must present clear and convincing proof that a person of
ordinary skill in the relevant field would have been prompted to combine the elements of the
invention, arranged as in the claim, and would have had a reasonable expectation of success in doing
so. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007);
Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356-57 (Fed. Cir. 2007).
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This Dell cannot do. In support of its obviousness motion, Dell merely repackages the
misguided arguments that Dell made in moving for summary judgment of invalidity by anticipation
— a motion that this Court denied because of existing issues of triable fact. Dell seeks to bolster
those arguments by cross-referencing the report of its expert, Edward Delp. (See Dell Br. at 10.)
But Dr. Delp’s report at best presents conclusory assertions concerning the teachings of the Gabor &
Hill reference that are flatly contradicted by MPT’s video compression expert, not to mention the
Gabor & Hill reference itself. (Compare Ex. 11, Sept. 14, 2007, Delp Report at 11-14 (¶¶ 29-41)
with Girod Opp. Decl. at ¶¶ 36-48.) Indeed, Dell largely bases its obviousness argument on
mischaracterizations of Professor Girod’s expert opinions regarding two limitations of Claim 13,
specifically “determining by interpolation intensities of pels” and “related locations.”
1. “determining by interpolation the intensities of pels”
a. The Gabor & Hill Reference Does Not Disclose “Determining
By Interpolation Intensities Of Pels In Said Picture In
Accordance With Intensities Of Pels In Related Locations.”
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
10 Case No. 07-CV-2000-H (CAB)
Dell cannot demonstrate that the Gabor & Hill reference renders obvious Claim 13 of the
Netravali ‘272 patent because the Gabor & Hill reference fails to disclose “determining by
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 14 of 26
interpolation intensities of pels in said picture in accordance with intensities of pels in related
locations,” and a person of ordinary skill in the art would not have seen reason to adapt the Gabor &
Hill reference to include that missing step. Both the express language of Claim 13 and the
specification of the Netravali ‘272 patent dictate that the process step of “determining by
interpolation” be performed on a video signal that has been sampled not only temporally to yield
frames or fields, but also vertically and horizontally to yield a finite array of discrete “pels” with
defined “intensities.” (Girod Opp. Decl. at ¶¶ 39-41.)
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In the Gabor & Hill system, however, video signals are not sampled in the horizontal
dimension before processing. (Id. at ¶ 38.) Furthermore, a person of skill in the art would have no
reason to adapt the analog Gabor & Hill system to implement motion compensated interpolation on
temporally, vertically, and horizontally sampled analog signals. (Ex. 13, Nov. 20, 2007, Girod Dep.
Tr. at 96-97.) Because a person of skill in the art would not be prompted to combine the step of
“determining . . . the intensities of pels” based on “intensities of pels in related locations” with the
Gabor & Hill system, Dell’s motion for summary judgment of obviousness should be denied.
Indeed, this Court has already determined that a triable issue of fact exists as to whether the
Gabor & Hill reference discloses “pels”:
MPT’s expert opines that a person of ordinary skill in the art would
find that Gabor & Hill did not disclose a system that uses pels in [the
context of the Netravali ‘272 patent], but instead discloses a system
that uses only scan line signals (sampled in only one dimension).
While Dell disagrees with this position, MPT has raised issues of fact
that preclude summary judgment.
(Ex. 18, July 27, 2007 Order Denying-In-Part Dell’s Motion for Summary Judgment on U.S. Patent
No. 4,383,272 at 6 (emphasis added).) Accordingly, that issue of fact must be resolved in MPT’s
favor on this motion: that is, the Gabor & Hill reference must be presumed to lack any disclosure of
“determining . . . the intensities of pels.” Dell cannot avoid that presumption simply by rehashing
the identical argument already considered — and rejected — by this Court.
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
11 Case No. 07-CV-2000-H (CAB)
Nor would revisiting the evidence yield a different result. Dell’s argument that Claim 13 is
not limited to digital implementations continues to rest on Dell’s faulty understanding — or
deliberate mischaracterization — of Professor Girod’s expert opinion. Contrary to Dell’s motion
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 15 of 26
papers, Professor Girod has not opined that Claim 13 is limited to a digital implementation. Rather,
Professor Girod has explained that in order for the concept of a “pel” to be understood in the context
of the Netravali ‘272 Patent, the video signal must be sampled temporally, vertically, and
horizontally. (Girod Opp Decl. at ¶¶ 39, 41.)
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The plain language of Claim 13 itself establishes that “pels” have defined intensities and
locations. (Ex. 15, ‘272 Patent at 11:17-27 (referring to “intensities of pels” and “pels in related
locations”).) The specification, in turn, consistently uses the term “pel” or “picture element” to
describe discrete components of the video signal that are sampled in the temporal, vertical, and
horizontal dimensions. For example, the specification discusses the calculation of “element
differences” by subtracting the intensity values of pels in adjacent horizontal locations:
In the horizontal picture direction, the rate of change can be
determined from ‘element differences’ ED(x,t), i.e., the intensity
differences between successive picture elements on a single scan line
evaluated at the location x in the field occurring at time t.
(Id. at 4:48-52.) The specification likewise confirms that each pel also has a defined intensity value.
(See, e.g., id. at 3:55-59 (“To illustrate, if the position of a presently processed pel 250 in field 203 is
denoted by vector x, then the location of the ‘corresponding’ displaced pel 260 in field 201 is given
by x-K1D and the intensity at that location is written I(x-K1D,t-K1τ).”) (emphasis added).) Indeed,
the specification leaves no doubt that “pels” have defined locations and intensities, because it
describes the use of random access memories to store pel intensity values, as well as their
subsequent recovery using the addresses for specific pels. (See id. at 6:5-13.)
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
12 Case No. 07-CV-2000-H (CAB)
Without both properties — a defined location and intensity value — it would not be possible
to determine the intensity of a pel by interpolating the intensities of pels in related locations, as
recited in Claim 13. (Girod Opp. Decl. at ¶¶ 38-40.) Accordingly, a person of ordinary skill in the
art reading Claim 13 in light of the specification would understand that the phrase “determining by
interpolation intensities of pels in said picture in accordance with intensities of pels in related
locations” requires processing of intensity information for pels sampled in the temporal, vertical, and
horizontal dimensions. (Id. at ¶ 39.)
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 16 of 26
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Extrinsic evidence likewise confirms that the Netravali ‘272 patent’s use of the term “pels”
comports with the customary understanding of that term in the video compression field. For
example, contemporaneous statements by a named inventor of the Netravali ‘272 patent confirm his
understanding that processing of “pels” requires sampling a video signal in the horizontal dimension.
(Ex. 19, Patent No. 4,281,344 at 3:29-34 (“The input signal can be a video signal obtained by
scanning each frame of a picture to be processed along a plurality of scan lines, and sampling the
scanner output at a desired rate so that each sample represents the intensity of a corresponding
element (pel) in the picture.”) (emphasis added); Ex. 20, Patent No. 4,237,484 at 2:51-55 (“The
video signal on line 101 is sampled at [an] appropriate (Nyquist) rate by closing switch 102 under
control of a sampling clock 103. Each sample thus represents the intensity value at a particular
picture element (pel) location in the picture being encoded.”) (emphases added).)
As a result, Professor Girod’s statement that the term “pel” has been used in the context of
analog signals does not mean that a “picture element” is just an area of a picture. (See Dell Br. at
11.) Dell ignores Professor Girod’s deposition testimony explaining that the use of the term “pel” in
the context of analog television technology is distinct from the use of “pel” in digital video:
In digital video, there is — there’s been a different meaning of PEL,
and that meaning is usually referred to when somebody uses pixel, and
that’s in fact the meaning that we have to look for in the context of the
Netravali patent.
(Ex. 13, Nov. 20, 2007, Girod Dep. Tr. at 94.) Therefore, “pels” in the context of the Netravali
Patent are discrete components of the video signal that are sampled in the temporal, vertical, and
horizontal dimensions. (Girod Opp. Decl. at ¶ 39. )
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
13 Case No. 07-CV-2000-H (CAB)
Dell’s failure to understand Professor Girod’s opinion renders irrelevant Dell’s insistence
that Claim 13 is not limited to digital implementations. Even if Claim 13 could be understood to
encompass analog systems, the Gabor & Hill reference still would not disclose all of the elements of
the claim because it does not disclose the horizontal sampling of a video signal to form pels. (See
Girod Opp. Decl. at ¶ 40.) Rather, the Gabor & Hill reference merely samples the video signal in the
temporal dimension to define fields, and then in the vertical dimension to define lines. To the extent
that the Gabor & Hill reference describes interframe interpolation at all, that interpolation proceeds
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 17 of 26
by combining analog waveform representations of entire lines. (See id.) The Gabor & Hill reference
therefore interpolates lines, not pels. In short, because the Gabor & Hill system does not partition
the video signal horizontally into discrete pels, the Gabor & Hill reference does not “determin[e] by
interpolation the intensities of pels” based on “intensities of pels in related locations.” (See id.)
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b. Dell Presents No Proof That It Would Have Been
Obvious To Modify The Teachings of Gabor & Hill To
Arrive at the Invention of Claim 13 By “Determining
By Interpolation The Intensities Of Pels.”
Dell argues that it would have been an obvious advance over the prior art to implement the
Gabor & Hill system in the digital domain. But Dell fails to explain or prove how a person of
ordinary skill in the art would have been led to modify the Gabor & Hill system in that way. Indeed,
Dell’s only support for its argument that “powerful reasons” existed for using a digital
implementation of Gabor & Hill is that Dr. Netravali mentions the Gabor & Hill reference in his
Picture Coding publication.3 Dell then attempts — unsuccessfully — to align the facts considered
by the Supreme Court in KSR with the invention and prior art in question here. But Dell’s reasoning
is fatally flawed in that, contrary to Dell’s assertions, the inclusion of the Gabor & Hill system in the
Picture Coding reference does not suggest that the Gabor & Hill teachings are pertinent to a digital
implementation. (Dell Br. at 12.)
Rather — as Dell admits — the Picture Coding reference merely discloses that complex
manipulations of video signals are more easily processed in the digital domain. Such generic praise
for digital video coding techniques is not equivalent to a reason to digitize obsolete coding methods.
(Girod. Opp. Decl. at ¶ 42.) Quite unlike the factual situation presented in KSR — where the
3 Dell does not ague that Picture Coding is invalidating prior art, but rather only that it evidences a
motivation to implement Gabor & Hill in the digital domain. (Dell Br. at 12). As set forth herein,
however, a person of ordinary skill in the art would not have had any motivation to implement the
Gabor & Hill system in the digital domain. (See also Girod Opp. Decl. at ¶42.)
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
14 Case No. 07-CV-2000-H (CAB)
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 18 of 26
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Supreme Court held that a person of skill in the art would recognize the benefits of applying a new
technique to improve similar devices, see KSR, 127 S.Ct. at 1743 — no evidence exists to support
Dell’s view that a person of skill in the art would recognize that digitizing the Gabor & Hill contour
interpolation system would improve the video coding method in the same way that newer coding
methods were improved by digital implementations. (Girod. Opp. Decl. at ¶ 42.) Thus, even if
unrebutted, Dell’s unsubstantiated attorney argument hardly constitutes clear and convincing
evidence sufficient to support a finding of obviousness.
c. Ample Evidence Establishes a Genuine Dispute Concerning
Whether A Person of Ordinary Skill in the Art Would
Have Been Led to Adapt The System Disclosed
In The Gabor & Hill Reference To Arrive At The
Process of Claim 13 Of The Netravali ‘272 Patent.
Apart from Dell’s failure of proof, ample evidence exists on which a reasonable jury could
find that a person of ordinary skill in the art at the time of the Netravali ‘272 invention would not
have had a reason to attempt to adapt the Gabor & Hill reference to carry out the process of Claim 13
— either with temporally, horizontally, and vertically sampled analog or digital signals. Nor would
such a person have had a reasonable expectation of success in doing so. PharmaStem Therapeutics,
Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007). Accordingly, summary judgment should
be denied.
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
15 Case No. 07-CV-2000-H (CAB)
Professor Girod has opined that a person of ordinary skill in the art would have had no
motivation to adapt the analog Gabor & Hill system to implement motion compensated interpolation
on temporally, vertically, and horizontally sampled analog signals. (Ex. 13, Nov. 20, 2007, Girod
Dep. Tr. at 96-97.) Nor would a person of skill in the art, as Dell argues, be motivated to apply the
Gabor & Hill system in the digital domain. Professor Girod testified that at the time of the Netravali
‘272 invention, the Gabor & Hill system was obsolete, reflecting the state of the art in the 1960s. (Id.
at 98.) As shown in Fig. 1 below, the system described in the Gabor & Hill reference is a
complicated mechanical-optical device using a picture transformer that scans picture lines using film
drums that are rotated through the use of a spindle and pegs. (Ex. 17, Gabor & Hill Reference at
MSLT_0001230 - MSLT_0001233.) A person of skill in the art would not have been prompted to
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 19 of 26
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redesign this dated system in the digital domain. (Girod Opp. Decl. at ¶ 42.) In fact, Professor
Girod has opined that it would not even be possible to simulate the Gabor & Hill system in the
digital domain in any meaningful way. (Ex. 13, Nov. 20, 2007, Girod Dep. Tr. at 98.)
Figure 1
In short, ample evidence exists to support a finding that no person of ordinary skill in the art
would have seen reason to adapt the Gabor & Hill system — either with horizontally sampled analog
signals or digital signals — to “determin[e] by interpolation the intensities of pels” based on
“intensities of pels in related locations.” (See Girod Opp. Decl. at ¶ 42.) Dell’s motion for summary
judgment should therefore be denied.
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
16 Case No. 07-CV-2000-H (CAB)
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 20 of 26
2. “related locations”
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a. The Gabor & Hill Reference Does Not Disclose
“Determining By Interpolation Intensities Of Pels In Said
Picture In Accordance With Intensities Of Pels In Related
Locations.”
Even if a person of ordinary skill in the art were motivated to combine interpolation of pel
intensities with the Gabor & Hill system, which such a person would not be, the Gabor & Hill
reference still would not render obvious Claim 13 of the Netravali ‘272 patent because it does not
disclose interpolating intensities of pels “in related locations.”4 (Girod Opp. Decl. at ¶¶ 40, 43.)
Rather, the Gabor & Hill reference discloses signal interpolation only along the same scan line in
two versions of the picture, and only reacts to predefined intensity changes — or “contours”— in the
horizontal direction. (Girod Opp. Decl. at ¶ 43.) As Professor Girod explains, the locations where
the same object is expected to be in two versions of a picture cannot be represented by considering
only the threshold intensity gradient in the horizontal direction. (Id.) The Gabor & Hill reference
therefore fails to disclose interpolating the intensities of pels “in related locations.” (Id.)
In fact, this Court already considered — and rejected — Dell’s argument that Gabor & Hill
discloses the intensities of pels “in related locations” because of triable issues of fact. Specifically,
this Court noted that:
MPT also argues that the Gabor & Hill Paper does not disclose
“selecting related locations” as required by claim 13, because
selecting where an object is expected to be cannot be accomplished
solely by sampling as set forth in the Gabor & Hill Paper, which
cannot detect purely vertical movement of objects at all. . . .
Moreover, MPT’s expert opines that a person of ordinary skill in the
art would find that Gabor & Hill did not disclose a system that uses
pels in this same context, but instead discloses a system that uses only
scan line signals (sampled in only one dimension). While Dell
disagrees with this position, MPT has raised issues of fact that
preclude summary judgment.
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
17 Case No. 07-CV-2000-H (CAB)
4 This Court has interpreted the phrase “related locations” to mean “locations at which the same
object is expected to be.” (Ex. 16, ‘272 Patent Superceding Markman Order at 3.)
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 21 of 26
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(Ex. 18, July 27, 2007 Order Denying-In-Part Dell’s Motion for Summary Judgment on U.S. Patent
No. 4,383,272 at 6 (emphasis added).) Accordingly, that issue of fact must be resolved in MPT’s
favor on this motion: that is, the Gabor & Hill reference must be presumed to lack any disclosure of
interpolation based on pels “in related locations.”
b. Dell Presents No Proof That It Would Have Been
Obvious To Modify The Teachings of Gabor & Hill To
Arrive at the Invention of Claim 13 By Interpolating
The Intensities Of Pels In “Related Locations.”
Dell argues that it would have been an obvious advance over the prior art to implement the
Gabor & Hill system to include a determination of where an object is expected to be in past and
future frames. (Dell Br. at 13.) But Dell fails to explain or prove how a person of ordinary skill in
the art would have been motivated to modify the Gabor & Hill system in that way. Indeed, Dell’s
argument reduces to a single contention — that the invention of Claim 13 must be obvious because
Dr. Jaswant Jain allegedly arrived at it independently. (Dell Br. at 15.) At bottom, Dell asks this
Court to adopt an unprecedented per se rule rendering obvious any patent claim for which there is
evidence of a non-prior art near simultaneous invention. But no authority exists for such a sweeping
proposition.5 In fact, the Federal Circuit has confirmed that the fact of a near simultaneous invention
is merely one factor to be considered in weighing secondary considerations of nonobviousness; and
as such, near simultaneous invention “may or may not be an indication of obviousness when
considered in light of all the circumstances.” Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361,
1379 (Fed. Cir. 2000).
Furthermore, Dell’s argument not only lacks foundation in the law, it also renders irrelevant
the categories of prior art set forth in 35 U.S.C. § 102 because if Dell’s argument were correct, any
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
18 Case No. 07-CV-2000-H (CAB)
5 Dell relies on National Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319 (Fed. Cir. 2004)
to support its view that the Jain Thesis establishes a motivation to combine regardless of whether it
qualifies as prior art. But Dell’s interpretation of National Steel Car is unsupported; the Federal
Circuit merely held that a reference that does not qualify as prior art may still be considered in
determining the knowledge of a person having skill in the art. Id. at 1338.
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 22 of 26
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reference that discloses all of the limitations of a claim would not need to meet the § 102 prior art
requirements in order to render the claim invalid as a matter of law. For example, if Dell’s view
were adopted, then the large body of precedent in the § 102(b) anticipation context addressing the
printed publication status of allegedly anticipatory references — see, e.g., Bruckelmyer v. Ground
Heaters, Inc., 453 F.3d 1352 (Fed. Cir. 2006) — would be moot because any such references would
invalidate under § 103 regardless of the actual date the references were made accessible to the
public. In addition, Dell’s reading of the law renders pointless interference practice under § 102(g),
as the disputed inventions in any interference proceeding would be per se obvious in light of each
other. This Court should not adopt such an implausible interpretation of the obviousness standard.
Nor, as Dell suggests, can the fact that one other individual purportedly conceived of the
Netravali ‘272 patent invention around the same time be considered a substitute for the requisite
proof that the invention would have been obvious for a hypothetical person of ordinary skill. First,
the supposed simultaneous inventor here — Dr. Jaswant Jain — was not a person of ordinary skill
in the art (i.e., a person with a Bachelor of Science degree in electrical engineering and 2 years of
practical experience). (Girod Opp. Decl. ¶ 21.) Rather, he held a master’s degree, had worked in the
field for over 7 years, and had essentially completed his Ph.D. studies (with a perfect 4.0 grade point
average). (Ex. 22, Jan. 6, 2006 Jain Dep. Tr. at 13-19; 23-24.) Therefore, Dr. Jain’s publications
cannot be viewed as evidence of what a person of ordinary skill hypothetically would have been
motivated to do. Moreover, Dell fails to identify what — if anything — actually prompted Dr. Jain’s
alleged combination of motion compensation with interframe interpolation, let alone establish that
others in the art would have been led to the same result.
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
19 Case No. 07-CV-2000-H (CAB)
Accordingly, even if unrebutted, Dell’s obviousness positions lack clear and convincing
evidence sufficient to support a finding of invalidity. Dell’s motions for summary judgment should
therefore be denied.
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 23 of 26
c. Ample Evidence Establishes a Genuine Dispute Concerning
Whether A Person of Ordinary Skill in the Art Would
Have Been Motivated to Adapt The System Disclosed
In The Gabor & Hill Reference To Arrive At The
Process of Claim 13 Of The Netravali ‘272 Patent.
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Ample evidence exists on which a reasonable jury could find that no person of ordinary skill
in the art at the time of the Netravali ‘272 invention would have had a reason to attempt to adapt the
Gabor & Hill reference to determine by interpolation where an object is expected to be. Nor would
such a person have had a reasonable expectation of success in so doing. Accordingly, summary
judgment should be denied even if this Court concludes — erroneously — that Dell’s summary
judgment papers present prima facie proof of obviousness. See PharmaStem Therapeutics, Inc.,
F.3d at 1360.
Assuming that some use of motion estimation was known in the prior art to determine where
an object is “expected to be” — which Dell has not established — Professor Girod explains why no
reason existed for a person of ordinary skill in the art to combine that particular technique with
interframe interpolation. (Girod Opp. Decl. at ¶¶ 44-47.) Many effective video compression
technologies were available in the field during the relevant time-frame, and the performance of a
given combination of technologies could not be readily predicted. (Id. at ¶ 45.) As a result, the
potential combinations of known, beneficial compression technologies far exceeded what could
reasonably be considered a finite set of potential solutions. (Id.) Nor were the benefits achieved by
the particular video compression method described in the Netravali ‘272 patent predictable, since
extended experimentation was required to assess the performance of a system combining any
specific set of coding technologies. (Id. at ¶ 46.) As such, Dell’s obviousness argument is an
exercise in pure hindsight, piecing together the elements of Claim 13 from diverse sources using the
patent itself as a guide. (Id.)
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
20 Case No. 07-CV-2000-H (CAB)
Furthermore, Dell completely ignores ample objective evidence that the invention of Claim
13 is nonobvious, including evidence of the commercial success of the invention and licensing of the
invention by others. (Girod Opp. Decl. at ¶¶ 49-51.) Evidence of such “secondary considerations”
must be considered when evaluating obviousness. Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed.
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 24 of 26
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Cir. 2000) (“Our precedents clearly hold that secondary considerations, when present, must be
considered in determining obviousness.”); Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851
F.2d 1387, 1391 (Fed. Cir. 1988) (“Indeed, evidence of secondary considerations may often be the
most probative and cogent evidence in the record.”).
Here, several secondary considerations demonstrate that the invention of Claim 13 is
nonobvious, thereby raising genuine issues of material fact that preclude summary judgment. First,
products that use the claimed invention have been highly successful in the marketplace. (Girod Opp.
Decl. at ¶ 49.) The claimed invention is used in numerous video coding standards, including MPEG-
1, MPEG-2, VC-1, and others. (Id.) The invention of Claim 13 has contributed to the success of
these products by reducing the bandwidth needed to transmit, or by reducing the quantity of storage
needed to store, high-quality video bitstreams. (Id.) In fact, Professor Girod has explained that other
video coding technologies that do not use the claimed inventions have not been as commercially
successful. (Id.)
Second, licenses showing industry respect for the claimed invention also support the
conclusion that Claims 13 is nonobvious and therefore raise a genuine factual dispute. (Id. at 50.)
Lucent’s licensing agreements that specifically identify the Netravali ‘272 patent, and Lucent’s
licensing negotiation documents which refer to the Netravali ‘272 patent, indicate that the Netravali
‘272 patent has been a focal point of negotiations for broader licenses with third parties. (Id.)
Third, statements of acclaim by others for the claimed inventions support the finding that the
invention of Claims 13 was nonobvious. (Id. at 51.) For example, Arun Netravali and John Robbins
received the 1996 Thomas Alva Edison Patent Award for outstanding research and development for
the invention disclosed in the Netravali ‘272 patent. (Ex. 21, 1996 Thomas Alva Edison Patent
Award [ROBB 000001].) Because a host of disputed issues of fact therefore remain for trial, Dell’s
motion for summary judgment that Claim 13 of the Netravali ‘272 patent is invalid for obviousness
should be denied.
V. CONCLUSION
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
21 Case No. 07-CV-2000-H (CAB)
For all the foregoing reasons, Multimedia Patent Trust respectfully requests that the Court
deny Dell’s motions for summary judgment concerning the Netravali ‘272 patent.
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 25 of 26
MULTIMEDIA PATENT TRUST'S OPPOSITION TO DELL’S SUMMARY
JUDGMENT MOTION RE U.S. PATENT NO. 4,383,272
22 Case No. 07-CV-2000-H (CAB)
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Dated: December 14, 2007
By: s/David A. Hahn
David A. Hahn (SBN 125784)
HAHN & ADEMA
501 West Broadway, Suite 1730
San Diego, California 92101-3595
Telephone: (619) 235-2100
Facsimile: (619) 235-2101
John M. Desmarais (admitted pro hac vice)
Robert A. Appleby (admitted pro hac vice)
Michael P. Stadnick (admitted pro hac vice)
Jordan N. Malz (admitted pro hac vice)
KIRKLAND & ELLIS LLP
153 East 53rd Street
New York, New York 10022
Telephone: (212) 446-4800
Facsimile: (212) 446-4900
Attorneys for Lucent Technologies Inc.
and Multimedia Patent Trust
Case 3:07-cv-02000-H-CAB Document 140 Filed 12/14/2007 Page 26 of 26
