Uniloc 2017 LLC

Patent Trials and Appeals Board

May 11, 2021

IPR2020-00447 (P.T.A.B. May. 11, 2021)

Trials@uspto.gov Paper 24
Tel: 571-272-7822 Date: May 11, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2020-00447
Patent 6,329,934 B1
____________

Before ROBERT J. WEINSCHENK, MONICA S. ULLAGADDI,
and SCOTT RAEVSKY, Administrative Patent Judges.

RAEVSKY, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
We instituted an inter partes review of claim 1 of U.S. Patent
No. 6,329,934 B1 (Ex. 1001, “the ’934 patent”) owned by Patent Owner
Uniloc 2017 LLC. Paper 11 (“Dec.”). After considering the evidence and
arguments of the parties,1 we determine that Petitioner Google, Inc. has
proven by a preponderance of the evidence that claim 1 is unpatentable. See
35 U.S.C. § 316(e). We issue this Final Written Decision according to
35 U.S.C. § 318(a).
The parties’ dispute centers on whether Petitioner’s asserted reference
discloses the “modifying” limitation recited in the challenged claim. For the
reasons that follow, we determine that Liu discloses the disputed
“modifying” limitation, as well as the remaining limitations of claim 1.
II. BACKGROUND
The ’934 patent relates to video editing in a cost-efficient manner.
Ex. 1001, 1:5–9, 1:59–60. It describes a system for partially decoding coded
data and modifying the partially decoded data, instead of modifying fully
coded data (which can be costly). Id. at Abstract, 1:26–32. Modification
can include, for example, cross fading between two sequences of pictures.
Id. at 5:16–19. Figure 1 of the ’934 patent below depicts an overview of the
system.

1 Petitioner filed a Petition (Paper 1, “Pet.”). Patent Owner filed a Response
(Paper 13, “PO Resp.”). Petitioner then filed a Reply (Paper 14, “Reply”).
Patent Owner also filed a Sur-reply (Paper 15, “Sur-reply”). We held a
hearing on April 13, 2021 and filed a transcript (Paper 23, “Tr.”).
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Figure 1 illustrates a system that modifies partially coded data. Id. at
2:62–64, 3:12–15. In the system, coder COD codes data D to obtain coded
data CD. Id. at 2:62–64. Partial decoder PDEC partially decodes data CD to
obtain partially decoded data PDD. Id. at 2:64–3:3. Next, data-modifier
MOD modifies data PDD to obtain modified partially decoded data MPDD.
Id. at 3:3–5. Complementary coder CCOD complementary codes data
MPDD to obtain coded modified data CMD using a series of coding steps.
Id. at 3:5–10. Each of the coding steps is a complement of a decoding step
done by partial decoder PDEC. Id. at 3:7–9.
The Petition challenges claim 1 (with disputed limitation italicized):
1. A method of modifying data (D), the data (D) having
been coded so as to obtain coded data (CD), the method
comprising the steps of:
partially decoding (PDEC) the coded data (CD) so as to
obtain blocks of prediction-error pixels;
modifying (MOD) the blocks of prediction-error pixels so
as to obtain modified partially decoded data (MPDD); and
complementary coding (CCOD) the modified partially
decoded data (MPDD), so as to obtain coded modified data
(CMD).
Pet. 1; Ex. 1001, 11:12–23.
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Petitioner asserts the following grounds of unpatentability (Pet. 2–3),
supported by the declaration of Dr. Jeffrey J. Rodriguez (Ex. 1002):
Claim Challenged 35 U.S.C. §2 References
1 102(e) Liu3
1 103(a) Liu, Chitprasert4

III. ANALYSIS
We focus on Petitioner’s anticipation ground because we find it
dispositive for reasons explained below. Thus, we do not reach Petitioner’s
obviousness ground.
A. Principles of Law
Petitioner bears the burden to demonstrate unpatentability. Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015).
A claim is anticipated under 35 U.S.C. § 102 “only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). In an anticipation
analysis, prior art references must be “considered together with the

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), revised 35 U.S.C. §§ 102, 103 effective March 16,
2013. Because the challenged patent was filed before March 16, 2013, we
refer to the pre-AIA versions of §§ 102, 103.
3 US 5,907,374, published May 25, 1999 (Ex. 1005).
4 Chitprasert et al., Discrete Cosine Transform Filtering, Signal Processing
(1990) (Ex. 1007).
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knowledge of one of ordinary skill in the pertinent art.” In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). Thus, “extrinsic evidence may be . . .
used to explain, but not expand, the meaning of a reference.” In re Baxter
Travenol Labs, 952 F.2d 388, 390 (Fed. Cir. 1991).
B. Claim Construction
In inter partes review, we construe claims 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), including construing the claim in
accordance with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent. 37 C.F.R. § 42.100(b) (2019).
Petitioner proposes three constructions in the Petition. Pet. 21–32.
We preliminarily construed two terms at institution. Dec. 10–17. Post-
institution, no dispute remains for any terms or limitations that would rely on
our preliminary constructions. Compare PO Resp. 8, with Prelim. Resp. 22,
28. Thus, we need not construe any terms. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(“[W]e need only construe terms that are in controversy, and only to the
extent necessary to resolve the controversy.”) (internal quotation omitted).
C. Asserted Anticipation by Liu
Petitioner contends that Liu anticipates claim 1. Pet. 33–61. For the
reasons that follow, we determine that the evidence supports Petitioner’s
arguments, despite Patent Owner’s arguments to the contrary.
1. Overview of Liu (Ex. 1005)
Liu describes a system for processing video bitstreams to reduce the
processing resources required. Ex. 1005, 1:7–9; 2:62–64. Figure 2 of Liu
depicts an example of this system.
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Figure 2 illustrates a compressed bitstream processing apparatus 100 that
processes a video bitstream. Id. at 5:31–34. In the apparatus 100, layered
decoder 114 can partially decode compressed input bitstream 112 to
generate decoded bitstream 116. Id. at 5:53–65. Decoded bitstream
processor 118 processes decoded bitstream 116 to obtain a modified
bitstream 122. Id. at 6:17–20. This processing can include, for example,
color correction, scaling, sharpening, or noise reduction. Id. at 10:28–29.
Layered encoder 124 can generate compressed output bitstream 126 by
partially re-encoding modified bitstream 122. Id. at 6:23–26.
2. Independent Claim 1
We focus our analysis on the sole disputed limitation, “modifying
(MOD) the blocks of prediction-error pixels so as to obtain modified
partially decoded data (MPDD).” See PO. Resp. 7–11; see also LG Elecs.,
Inc. v. Conversant Wireless Licensing S.A.R.L., 759 F. App’x 917, 925
(Fed. Cir. 2019) (nonprecedential) (“The Board is ‘not required to address
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undisputed matters’ or arguments about limitations with which it was never
presented.”) (quoting In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir.
2016)).
As to the rest of the limitations of claim 1, Petitioner argues, and we
find, that Liu discloses them.5 See Pet. 33–46, 56–61 (citing Ex. 1002
¶¶ 84–104, 117–123; Ex. 1005, passim). Petitioner identifies where Liu
teaches these limitations, supporting this showing with credible testimony
from Dr. Rodriguez, which Patent Owner does not dispute. See id.; see
generally PO Resp.
For the reasons below, we find that Liu also discloses the disputed
“modifying” limitation.
a. The parties’ arguments
Petitioner contends that Liu discloses the “modifying” limitation. Pet.
46–56. Petitioner frames its argument based on Liu Figure 3:

5 Including the preamble. We need not determine whether it is limiting
because we agree with Petitioner that Liu discloses it.
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See id. Figure 3 of Liu above, annotated by Petitioner, depicts layered
decoder 114 (the left column of modules) and layered encoder 124 (the right
column of modules). Ex. 1005, 6:54–56. Between decoder 114 and encoder
124 is decoded bitstream processor 118 (blue) that processes the output from
any one of the decoding modules. Id. at 9:58–64; 7:4–9. Output bus 134
(yellow) connects the decoder modules—including inverse DCT module 209
(“IDCT”)—to decoded bitstream processor 118. See id. at 7:27–32. Output
selector 215 “selects the output of one of the decoding modules,” such as
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inverse DCT module 209, for output to decoded bitstream processor 118. Id.
at 9:55–64.
Petitioner argues as follows. Liu’s layered decoder 114 can stop
decoding at any of the decoding modules. Pet. 47 (citing Ex. 1005, 9:59–
64). For example, output selector 215 can select the output of inverse DCT
module 209. Id. at 47–48 (citing Ex. 1002 ¶ 108). Inverse DCT module 209
outputs a partially decoded bitstream 116 including “blocks of differences,”
which are the claimed blocks of prediction-error pixels. Id. at 48 (citing,
e.g., Ex. 1005, 8:43–50, Fig. 3, 6:17–19). Inverse DCT module 209 supplies
this partially decoded bitstream 116 to decoded bitstream processor 118,
which processes (i.e., modifies) bitstream 116. Id. at 47–48 (citing Ex.
1005, 6:17–19; Ex. 1002 ¶ 108). Thus, Dr. Rodriguez testifies that one of
ordinary skill would have understood that Liu meets the claim limitation:
a person of ordinary skill in the art would have readily
understood that the partially decoded bitstream outputted from
the inverse DCT module 209, when configured by the output
selector 215 operation, would have been modified by the
decoded bitstream processor 118 to produce . . . modified
partially decoded data (MPDD)[.]
Ex. 1002 ¶ 108, quoted in Pet. 48.
Patent Owner disagrees that Liu teaches modifying the output of
inverse DCT module 209, although Patent Owner does not challenge that
Liu teaches modifying generally. PO Resp. 8–11; id. at 9 (conceding that
Liu’s processing is “modification of the bitstream”).6 Instead, Patent Owner

6 Patent Owner also does not renew its pre-institution argument that Liu does
not teach blocks of prediction-error pixels. Compare PO Resp. 8 (“While
Patent Owner does not agree that Liu teaches the required blocks of
prediction-error pixels, nonetheless . . . .”), with Prelim. Resp. 22–23; Reply
6 (“Uniloc’s fails to lodge any real dispute that Liu discloses ‘blocks of
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asserts that Liu’s decoded bitstream processor 118 processes the output of
only spatial bitstream output module 213 or inverse quantizer 207. Id. at 9
(citing Ex. 1005, 10:38–40, 10:46–65). Patent Owner also faults the Petition
because it relies on what one of ordinary skill in the art “would have readily
understood” about Liu, allegedly without evidence. Id. at 8–9 (citing Pet.
48). And Patent Owner views Liu as not modifying the output of the inverse
DCT module 209 because Liu refers to “other instances” where “the
modified bitstream 122 is identical to the decoded bitstream 116.” Id. at 10
(citing Ex. 1005, 11:3–6). Finally, Patent Owner discounts Petitioner’s
declarant testimony because it is allegedly identical to the Petition and
conclusory. Id.
Petitioner responds that Patent Owner’s “argument rests on a
contorted reading of Liu, which contradicts Liu’s explicit disclosures and
illustrations (e.g., Figure 3).” Reply 8. According to Petitioner, Liu’s
decoded bitstream processor 118 modifies the output of inverse DCT
module 209 because processor 118 modifies the “output of [any] one of the
decoding modules.” Id. at 8–9 (citing, e.g., Ex. 1005, 2:61–3:17). Petitioner
also relies on Liu’s teaching of a selective interconnection path that
“selectively connects the output of one of the decoding modules to the input
of the decoded bitstream processor.” Id. at 10 (citing, e.g., Ex. 1005, 2:61–

prediction-error pixels.’”); see generally Sur-reply (not disputing Reply’s
characterization); Tr. passim (Patent Owner not raising the issue at the
hearing). Patent Owner has thus waived this argument. See NuVasive, 842
F.3d at 1380‒81 (holding that the patent owner waived arguments on an
issue that were not raised in its response after institution); Paper 12, 8
(“Patent Owner is cautioned that any arguments not raised in the response
may be deemed waived.”).
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3:17) (emphasis omitted). And Petitioner argues that Liu does not employ
its identity unit as Patent Owner portrays. Id. at 9. Instead, Petitioner
asserts that Liu uses the identity unit in another embodiment, when no
modification to the video signal is desired. Id. (citing Ex. 1005, 2:61–3:17,
3:18–37). Lastly, Petitioner disagrees that Dr. Rodriguez’s testimony is
conclusory, arguing that it does not follow that if his testimony is “the same
or similar” as the Petition that it is “somehow unavailing.” Id. at 14.
In the Sur-reply, Patent Owner charges the Reply with relying on
“theoretical possibilities.” Sur-reply 1. Patent Owner reiterates that the
decoded bitstream processor 118 only processes output from Liu’s other
modules (207 and 213), not inverse DCT module 209. Id. at 2 (citing Ex.
1005, 10:38–40, 10:46–65). For the first time, Patent Owner also argues that
Liu cannot select the output of inverse DCT module 209 because it is
“deactivated.” Id. at 2–3 (citing Ex. 1005, 9:35–52). Even when inverse
DCT module 209 is “activated,” Patent Owner contends, its output is not
modified due to “the identity operation.” Id. at 3–4 (citing Ex. 1005, 11:3–
6).
b. Our analysis
After considering the parties’ arguments and evidence, we agree with
Petitioner’s contentions, which are supported by Dr. Rodriguez’s testimony.
We credit and give significant weight to the testimony of Dr. Rodriguez
because his testimony is consistent with the evidence of record.7

7 Petitioner also argues that Ng (Ex. 1012) confirms the knowledge of the
skilled artisan. Pet. 53–54. We find it unnecessary to rely on Ng, so we also
do not address Patent Owner’s arguments against Ng. See PO. Resp. 11; Tr.
13:21–14:4 (Petitioner confirming that we need not rely on Ng).
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We agree with Petitioner that Patent Owner’s “argument rests on a
contorted reading of Liu.” Reply 8. This is easiest to see in Patent Owner’s
assertion that Liu only modifies the output of spatial bitstream output
module 213 or inverse quantizer 207. PO Resp. 9. Liu actually teaches that
its “layered decoder can stop decoding . . . [at] any one of the decoding
modules.” Ex. 1005, 7:5–7 (emphasis added), cited in Ex. 1002 ¶¶ 75, 76,
87, 88, 97, 108. In that same vein, Liu’s system “can process a compressed
input bitstream in any state of compression.” Id. at 2:55–57 (emphasis
added), cited in Ex. 1002 ¶ 73. And Liu’s “selective interconnection path
selectively connects the output of one of the decoding modules”—i.e., any
decoding module—“to the input of the decoded bitstream processor.” Id. at
3:12–14 (emphasis added), cited in Ex. 1002 ¶¶ 78, 92. What is more, Liu’s
“blocks of differences” from inverse DCT module 209 “are fed to the output
bus 134 for connection to the output selector 215,” which “selects the output
of one of the decoding modules” and “feeds this bitstream” to decoded
bitstream processor 118. Id. at 8:40–49, 9:61–64, cited in Ex. 1002 ¶ 108.
These disclosures expressly teach that Liu selects the output of inverse DCT
module 209 for modification. At the very least, we agree with Dr.
Rodriguez that one of ordinary skill in the art would have understood that
Liu selects the output of inverse DCT module 209 for modification. See Ex.
1002 ¶ 108; Paulsen, 30 F.3d at 390 (Prior art references must be
“considered together with the knowledge of one of ordinary skill in the
pertinent art.”).
Elsewhere, Liu gives examples of selecting modules other than
inverse DCT module 209 for output modification. E.g., Ex. 1005, 9:34–52,
10:36–40. But Patent Owner improperly elevates Liu’s examples over Liu’s
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plain description of selecting the output of “any” module. See PO Resp. 8–
11; Ex. 1005 7:5–7, 2:53–59, 2:61–3:17. Not only that, but Patent Owner
does not acknowledge that it relies on an example to limit Liu’s teachings.
Patent Owner simply quotes: “decoded bitstream processor can [modify]
‘either the conventional video bitstream generated by the spatial bitstream
output module 213 or the DCT coefficients generated by the inverse
quantizer 207.’” PO Resp. 9 (quoting Ex. 1005, 10:36–40). But Patent
Owner’s selective quotation omits important surrounding language, which
provides necessary context:
The processing operation performed by the decoded bit-
stream processor 118 depends on the compression state of the
decoded bitstream 116. For example, the decoded bitstream
processor can perform a picture sharpening operation on either
the conventional video bitstream generated by the spatial
bitstream output module 213 or the DCT coefficients generated
by the inverse quantizer 207.
Ex. 1005, 10:34–40 (emphasis added; Patent Owner’s quotation in italics).
Thus, Liu merely refers to selecting the modules 213 and 207 in an
“example.” See id. Yet this example does not negate Liu’s broader teaching
of selecting “any one of the decoding modules” for modification—including
inverse DCT module 209. See Ex. 1005, 7:4–9; see also id. at 2:53–59, 3:6–
3:17, 9:54–64.
In the Sur-reply, Patent Owner refers to another example where Liu’s
output selector 215 selects one module and deactivates inverse DCT module
209:
For example, if the user commands the system to perform
spatial filtering . . ., the output selector 215 [will] connect the
partially-decoded bitstream from the inverse quantizer [207] to
the decoded bitstream processor 118 as the decoded bitstream
116. The decoding control data will also deactivate the
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decoding modules downstream . . ., i.e., the inverse DCT
module 209 . . . .
Sur-reply 2 (quoting Ex. 1005, 9:35–52 (emphasis omitted and added)).
Patent Owner emphasizes here that “inverse DCT module 209 is
deactivated,” implying that its output can never be selected. See id. at 3.
There are two problems with this argument. First, Patent Owner improperly
made this new argument for the first time in the Sur-reply. See Tr. 19:2–15
(Patent Owner conceding that it raised this argument for the first time in its
Sur-reply). “A sur-reply may only respond to arguments raised in the
corresponding reply . . . .” 37 C.F.R. § 42.23(b). Patent Owner has not
adequately explained why it did not raise this argument in its Response; nor
does the Reply address Liu’s “deactivated” disclosure. See generally Reply.
Thus, we need not consider it.
Second, even considering this argument, we find it unavailing. While
Patent Owner quotes Liu’s “example” language this time, Patent Owner
again ignores that it is just an example. See Sur-reply 2. That is,
deactivating inverse DCT module 209 is part and parcel with Liu’s example
of selecting the output of another module (207). Ex. 1005, 9:34–48 (“For
example, . . . the output selector 215 [will] connect the partially-decoded
bitstream from the inverse quantizer [207] to the decoded bitstream
processor 118 . . . [and] will also deactivate . . . inverse DCT module 209.”
(emphasis added)). When inverse quantizer 207 is selected, it makes sense
to deactivate downstream modules like inverse DCT module 209. See id. at
9:48–50 (“These decoding modules can be deactivated since they are not
required to decode the compressed input bitstream . . . .”). But this example
does not preclude selecting inverse DCT module 209 under other
circumstances. E.g., id. at 7:4–9; 2:53–59, 3:6–3:17, 9:54–64.
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We also disagree with Patent Owner’s “other instances” argument
because it sets up a false dichotomy. See PO Resp. 10 (citing Ex. 1005,
11:3–6). Patent Owner asserts that in instances other than when inverse
quantizer 207 or spatial bitstream output module 213 are selected, the
modified bitstream is “identical” to the decoded bitstream 116. See id. If
the output is identical, according to Patent Owner, Liu does not disclose
modifying the output of inverse DCT module 209. Id. Not so. Liu does not
say, “output an identical bitstream in instances other than when inverse
quantizer 207 or spatial bitstream output module 213 are selected.” Liu
merely discloses outputting an identical bitstream when Liu’s entire
apparatus is configured not to modify the video signal:
[When] the compressed bitstream processing apparatus
100 is configured to modify the bitstream characteristics of the
compressed input bitstream 112 without modifying the video
signal . . ., the processing selector 120 configures the decoded
bitstream processor 118 as an identity unit, and the modified
bitstream 122 is identical to the decoded bitstream 116.
Ex. 1005, 10:66–11:6 (emphasis added). Nothing in this passage refers to
inverse DCT module 209, inverse quantizer 207, or spatial bitstream output
module 213. In fact, it mentions no modules at all. It merely describes what
happens when something configures the entire apparatus 100 not to modify
the video signal. Thus, we agree with Petitioner: Liu does not employ its
identity unit as Patent Owner portrays, but rather uses it when no
modification to the video signal is desired. Reply 9 (citing Ex. 1005, 2:61–
3:17, 3:18–37).
Lastly, we disagree that Dr. Rodriguez’s testimony is conclusory and
unsupported. See PO Resp. 10. We agree, rather, with Petitioner that Patent
Owner “has not identified where or how Dr. Rodriguez’s testimony is
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inconsistent with the record.” Reply 16. And Patent Owner did not cross-
examine Dr. Rodriguez or submit rebuttal testimony of its own. In short, we
are persuaded that Dr. Rodriguez’s testimony is supported by Liu’s
disclosure of modifying the output of inverse DCT module 209. Compare,
e.g., Ex. 1002 ¶¶ 108, 110–111, with Ex. 1005, 7:4–9, 2:55–57, 8:40–49,
9:61–74. We have reviewed Patent Owner’s contrary arguments and given
them due consideration, but they do not sufficiently rebut Petitioner’s
persuasive showing and evidence.
c. Summary
For the foregoing reasons, Petitioner has established by a
preponderance of the evidence that Liu anticipates claim 1.
Because we determine that claim 1 is unpatentable as anticipated by
Liu, we do not reach the Petition’s second ground of unpatentability over
Liu and Chitprasert. See Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F.
App’x 984, 990 (Fed. Cir. Apr. 30, 2020) (non-precedential) (recognizing
that the “Board need not address issues that are not necessary to the
resolution of the proceeding” and, thus, agreeing that the Board has
“discretion to decline to decide additional instituted grounds once the
petitioner has prevailed on all its challenged claims”).

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IV. CONCLUSION
In summary:

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claim 1 of the ’934 patent is unpatentable; 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.

8 As noted above, we do not reach this ground.
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1 102 Liu 1
1 103(a) Liu, Chitprasert8
Overall
Outcome
1
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PETITIONER:
Naveen Modi
Joseph E. Palys
Quadeer Ahmed
Jason Heidemann
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
quadeerahmed@paulhastings.com
jasonheidemann@paulhastings.com

PATENT OWNER:
Ryan Loveless
Brett Mangrum
James Etheridge
Brian Koide
Jeffrey Huang
ETHERIDGE LAW GROUP
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
brian@etheridgelaw.com
jeff@etheridgelaw.com