Velos Media, LLC

Patent Trials and Appeals Board

Jun 28, 2021

IPR2020-00352 (P.T.A.B. Jun. 28, 2021)

Trials@uspto.gov Paper 39
571-272-7822 Entered: June 28, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS LLC,
Petitioner,

v.

VELOS MEDIA, LLC,
Patent Owner.

IPR2020-00352
Patent 9,414,066 B2

Before CHARLES J. BOUDREAU, MONICA S. ULLAGADDI, and
AARON W. MOORE, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge ULLAGADDI.

Opinion Concurring filed by Administrative Patent Judge MOORE.

ULLAGADDI, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Granting Petitioner’s Motion for Protective Order
Granting Petitioner’s Motion to Seal
37 C.F.R. § 42.54(a)
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Patent 9,414,066 B2
2
I. INTRODUCTION
Unified Patents, LLC (“Petitioner”) requested an inter partes review
of claims 1, 2, 5, 11, and 20 (“the challenged claims”) of U.S. Patent No.
9,414,066 B2 (Ex. 1001, “the ’066 patent”). Paper 3 (“Petition” or “Pet.”).
Velos Media, LLC (“Patent Owner”) filed a Preliminary Response. Paper 8
(“Prelim. Resp.”).
We instituted an inter partes review of each of the challenged claims
on all grounds set forth in the Petition. Paper 9 (“Institution Decision” or
“Inst. Dec.”). Patent Owner filed a Patent Owner Response (Paper 15, “PO
Resp.”) and Petitioner filed a Petitioner Reply (Paper 20, “Pet. Reply”).
Patent Owner thereafter filed a Sur-reply (Paper 24, “PO Sur-reply”).
Petitioner filed a Motion for Protective Order (Paper 13) and a Motion
to Seal Patent Owner’s Response, Petitioner’s Reply, and related exhibits
(Paper 23). We decide these Motions in this Decision.
Patent Owner filed a contingent Motion to Amend, with a request for
preliminary guidance. Paper 16 (“MTA”). Petitioner filed an Opposition to
Patent Owner’s Motion to Amend. Paper 19 (“Pet. Opp. MTA”). We
provided our Preliminary Guidance as to Patent Owner’s Motion to Amend.
Paper 22. Patent Owner filed a Reply to Petitioner’s Opposition to Patent
Owner’s Motion to Amend. Paper 25 (“PO Reply MTA”). Petitioner
thereafter filed a Sur-reply. Paper 29 (“Pet. Sur-reply MTA”). As we
conclude that Petitioner has not shown unpatentability of any of the
challenged claims by a preponderance of the evidence, we do not reach and
need not decide Patent Owner’s Motion to Amend.
Oral arguments were heard on March 30, 2021 and a transcript has
been entered into the record. Paper 37 (“Tr.”).
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Patent 9,414,066 B2
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Petitioner has the burden of proving unpatentability of the challenged
claims by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018).
Having reviewed the parties’ arguments and supporting evidence, for the
reasons discussed below, we find that Petitioner has not demonstrated by a
preponderance of the evidence that any of the challenged claims are
unpatentable.
II. BACKGROUND
A. Related Proceedings
Neither Petitioner nor Patent Owner identifies related proceedings
involving the ’066 Patent. Pet. 1; Paper 6, 2.
B. The ’066 Patent (Ex. 1001)
The ’066 patent issued on August 9, 2016, and claims priority as early
as January 14, 2011. Ex. 1001, codes (45), (60). The ’066 patent concerns a
method of reducing blocking artifacts associated with consecutive pixels
spanning a boundary between neighboring blocks in an image. Id. at code
(57). Figure 1a of the ’066 patent is reproduced below.

Figure 1a of the ’066 patent illustrates pixel values in two
neighboring blocks with a natural edge occurring at a
vertical block boundary.
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Figure 1a illustrates pixel values 10a, 11a, 12a of a first block and
13a, 14a, 15a of a neighboring block in which the pixel values represent a
natural edge at a vertical block boundary. Id. at 10:4–7. A large difference
between the pixel values spanning the block boundary is considered to be
representative of a natural edge instead of a blocking artifact. Id. at 10:10–
12. Figure 1b of the ’066 patent is reproduced below.

Figure 1b of the ’066 patent illustrates pixel values in two
neighboring blocks with a blocking artifact occurring at a
vertical block boundary.
Figure 1b illustrates pixel values 10b, 11b, 12b of a first block and
13b, 14b, 15b of a neighboring block in which the difference between pixel
values of neighboring blocks is considerably smaller than the difference
depicted in Figure 1a. According to the ’066 patent, this smaller difference
is likely due to quantization and/or the prediction method employed in the
coding process. Id. at 10:13–18. The ’066 patent discloses that, when a
blocking artifact is identified, a filtering process is performed and an
approximation according to Figure 1b’s dotted line results. Id. at 10:23–28.
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Figure 4 of the ’066 patent is reproduced below.

Figure 4 of the ’066 patent depicts two
neighboring blocks of pixels.
Figure 4 illustrates a first block that includes pixels p0, p1, p2, and p3,
and a neighboring block that includes pixels q0, q1, q2, and q3. Id. at
11:56–61. The ’066 patent discloses that a first offset is calculated based on
p0 and p1 of the first block and q0 and q1 of the neighboring block. Id. at
11:62–65. The ’066 patent also discloses conditionally filtering by
modifying two pixels on either side of the block boundary depending on the
calculated first offset. Id. at 14:36–37. The ’066 patent discloses an
exemplary algorithm for implementing the process, which is reproduced
below.

The ’066 patent discloses an algorithm that calculates an
offset, compares the offset to a threshold, and
conditionally applies filtering based on the comparison.
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The ’066 patent discloses filtering when pixel values resemble a step and not
filtering when pixel values resemble a ramp. See Ex. 1001, 15:14–32. The
’066 patent states:
[A] ramp can be described as linearly increasing or decreasing
pixel values, e.g. 10, 20, 30, 40. When calculating the first offset
for these pixel values, i.e. p1=10, p0=20, q0=30, q1=40, the first
offset will be zero. Correspondingly, a step can be described as
a step increase or decrease in pixel values, e.g. 10, 10, 20, 20.
When calculating the first offset for these pixel values, i.e.
p1=10, p0=10, q0=20, q1 =20, the first offset will be 3.75 if first
offset=(9x(q0-p0)-3x(q1-p1))/16 or 4 if first offset=(9x(q0-p0)-
3x(q1-p1)+8)>>4. The modified pixel values will then be 10,
13.75, 16.25, 30 or 10, 14, 16, 20, respectively, and thereby a
smoothing of the step is achieved. The first offset is also zero
for a flat line, i.e. if the pixel values are equal, p0=p1=q0=q1.
Id. at 15:20–32. The ’066 patent discloses that the first offset is calculated
according to the following equation:
𝑓𝑖𝑟𝑠𝑡 𝑜𝑓𝑓𝑠𝑒𝑡 = (9 × (𝑞0 − 𝑝0) − 3 × (𝑞1 − 𝑝1))/16 (1)
Id. at 14:46.
C. Challenged Claims
Challenged claims 1 and 20 are independent and challenged claims 2,
5, and 11 depend directly from claim 1. Independent claim 1 is reproduced
below.
1. A method of reducing blocking artifacts associated with
consecutive pixels of a block boundary of a digital image, the
method comprising:
selecting at least two consecutive pixels from a first block and at
least two consecutive pixels from a neighboring block, the
blocks being located on opposite sides of a block boundary
and next to the block boundary, and the pixels forming a line
of pixels that is perpendicular to the block boundary;
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calculating a first offset as a function of pixel values for each of
the at least two consecutive pixels from the first block and the
at least two consecutive pixels of the neighboring block;
comparing the first offset to a first threshold value; and
modifying the respective pixel values of two consecutive pixels
from the first block and the respective pixel values of two
consecutive pixels from the second block, by applying
filtering on said pixels, in the event that abs[first offset]=first threshold.
Ex. 1001, 20:34–54.
D. Evidence
Reference or Declaration Date Exhibit No.
U.S. Patent No. 6,028,967 (“Kim”)

Issued Feb. 22,
2000
1003
Kim et al., “A Deblocking Filter with
Two Separate Modes in Block-Based
Video Coding,” IEEE Transactions
On Circuits and Systems for Video
Technology (“KimIEEE”)
Published Feb.
1999
1004
U.S. Publication No. 2006/0008038
A1 (“Song”)
Published
Jan. 12, 2006
1005
Applicant-Admitted Prior Art
(AAPA)
1001
Declaration of Dr. Sylvia Hall-Ellis
(“Hall-Ellis Declaration”)
1017

E. Proposed Grounds of Unpatentability
Petitioner advances the following challenges supported by the
declaration of Dr. Lina J. Karam (Ex. 1002). Pet. 5.
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
1, 11 102(b), (e) Kim

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102, 103, effective
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Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
1, 11 103(a) Kim
20 103(a) Kim, Song
1, 2, 5, 11 103(a) KimIEEE
1, 2, 5, 11 103(a) AAPA, KimIEEE

III. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner asserts that “[a] person of ordinary skill in the art (‘POSA’)
at the time of filing the earliest provisional application for the ’066 Patent
(Jan. 14, 2011) would have had at least the equivalent of a Bachelor’s degree
in electrical engineering, computer engineering, or a related subject and two
or more years of experience in the field of video coding.” Pet. 19–20 (citing
Ex. 1002 ¶ 57). Petitioner further asserts that “[l]ess work experience may
be compensated by a higher level of education, such as a Master’s Degree.”
Id. at 20.
Patent Owner does not contest the level of ordinary skill in the art.
See generally PO Resp.
Our findings and conclusions do not turn on selecting a particular
definition for the level of ordinary skill in the art. We determine, on the
complete record, that the level of ordinary skill proposed by Petitioner is
consistent with the ’066 patent and the asserted prior art. As such, we adopt
Petitioner’s proposal.
B. Claim Construction
We apply the same claim construction standard used by Article III
federal courts and the ITC, both of which follow Phillips v. AWH Corp.,

March 16, 2013. Because the application from which the ’066 patent issued
was filed before this date, the pre-AIA version of § 102 and §103 applies.
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Patent 9,414,066 B2
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415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R.
§ 42.100(b) (2019). Accordingly, we construe each challenged claim of the
’066 patent to generally have “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.” Id.
“first offset”
Independent claim 1 recites, inter alia, “calculating a first offset as a
function of pixel values for each of the at least two consecutive pixels from
the first block and the at least two consecutive pixels of the neighboring
block” and “comparing the first offset to a first threshold value.”
Independent claim 20 recites similar features.
Patent Owner contends that “the proper construction of ‘offset’ is ‘a
value that is added to, or subtracted from, a pixel value when filtering’” as it
initially contended in its Preliminary Response. PO Resp. 16; see Prelim.
Resp. 14. In our Institution Decision, we rejected Patent Owner’s proposed
construction and preliminarily concluded that “Petitioner’s position is
consistent with the plain and ordinary meaning of offset––a value that
conveys the amount or distance by which something is out of line.” Inst.
Dec. 11. Petitioner does not explicitly propose a construction for “first
offset” (see generally Pet.) and did not dispute our preliminary conclusion as
to the claimed “first offset” (see Pet. Reply 1 (“The term ‘first offset’ should
be accorded its plain and ordinary meaning, which the Board correctly
identified . . . .”)).
Based on our review of the complete record developed at trial, we
need not construe “first offset” or any other claim term to resolve the dispute
between the parties, and therefore, do not expressly define any claim term.
See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
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1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for
terms that are in dispute, and only as necessary to resolve the controversy).
Nor do we maintain in this Decision our preliminary construction of “first
offset.”
C. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103(a) 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 to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) when in evidence, objective evidence
of nonobviousness, i.e., secondary considerations. See Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966).
“A claim is anticipated 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 [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). The burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
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Patent 9,414,066 B2
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Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp.
Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
burden of proof in an inter partes review). Furthermore, Petitioner cannot
satisfy its burden of proving obviousness by employing “mere conclusory
statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
Cir. 2016).
Thus, to prevail in an inter partes review, Petitioner must explain how
the prior art discloses the subject matter of the challenged claims or how the
proposed combinations of prior art would have rendered the challenged
claims unpatentable. We analyze the challenges presented in the Petition in
accordance with the above-stated principles.
D. Anticipation and Obviousness over Kim Alone
Petitioner contends that claims 1 and 11 are unpatentable as obvious
under 35 U.S.C. § 103 over Kim. Pet. 22–39. Petitioner also contends that
these claims are unpatentable as anticipated under 35 U.S.C. § 102 by Kim.
Id. For the reasons that follow, we are not persuaded that the evidence
supports Petitioner’s arguments. Thus, we are not persuaded Petitioner
establishes by a preponderance of the evidence unpatentability of claims 1
and 11 as anticipated by or obvious over Kim. As Petitioner makes no
meaningful distinction between its obviousness and anticipation challenges,
we address both challenges together.
1. Overview of Kim
Kim concerns a method of reducing blocking artifacts in a moving
picture. Ex. 1003, code (57). Figure 1 of Kim is reproduced below.
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Figure 1 of Kim illustrates horizontal and vertical
block boundaries. Id. at 2:66–67.
Figure 1 of Kim illustrates an image formed with S0, S1, and S2
located around a block boundary––Figure 1 depicts one vertical and one
horizontal boundary. Id. at 3:13–15. S0 is located across the block boundary
and is directly influenced by a blocking artifact. Id. at 3:31–33. Kim
discloses that the blocking artifact can be removed from S0 by replacing the
frequency component in S0 with the frequency components of S1 and S2. Id.
at 3:34–37. Kim discloses using a discrete cosine transform (DCT) as a
frequency analysis tool. Id. at 3:46–47.
Kim specifically discloses using a “4-point DCT kernel basis [that]
has symmetric and anti-symmetric properties around the center of 4 points.”
Id. at 3:50–52. “[A] factor directly affecting the block discontinuity is not
the symmetric component but the anti-symmetric component.” Id. at 3:57–
59. Accordingly, “[t]he magnitude of a3,0 in a frequency domain is thus
adjusted based on the anti-symmetric component . . . .” Id. at 3:59–61.
“[P]roper adjustment of a3,0 is directly related to the reduction of block
discontinuity in the spatial domain.” Id. at 3:62–63.
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2. Analysis of Independent Claim 1
“A method of reducing blocking artifacts associated
with consecutive pixels of a block boundary of a
digital image, the method comprising:”
Petitioner contends that, to the extent the preamble is limiting, Kim
discloses “an MPEG-4 video coding method that reduces a blocking artifact
in a real-time moving picture using a frequency property around boundaries
between blocks.” Pet. 28–29 (quoting Ex. 1003, 2:32–35) (citing Ex. 1003,
4:38–39, 5:40–41). Petitioner points to Kim’s Figure 1, reproduced above,
as “depict[ing] a line of pixels S0 in relation to horizon[t]al and vertical
block boundaries of a digital image.” Id. (citing Ex. 1003, 3:11–15)
(emphasis omitted). According to Petitioner, “[i]n Kim the line of pixels S0
‘is located across a block boundary’ and thus ‘is directly influenced by the
blocking artifact.’” Id. (citing Ex. 1003, 3:17–19) (emphasis omitted).
Petitioner asserts that Kim’s “line of pixels S0 contains two consecutive
pixels from a first block, v2 and v3, and two consecutive pixels from a
neighboring block, v4 and v5.” Id. (emphasis omitted).
“selecting at least two consecutive pixels from a
first block and at least two consecutive pixels from
a neighboring block, the blocks being located on
opposite sides of a block boundary and next to the
block boundary, and the pixels forming a line of
pixels that is perpendicular to the block boundary”
As discussed above with respect to the preamble, Kim’s Figure 1
shows a line of pixels S0 that spans a block boundary and includes
consecutive pixels v2 and v3 from a first block and consecutive pixels v4 and
v5 from a second, neighboring block. Id. at 29–30. As discussed in detail
below, Petitioner takes the position that pixel values are selected to calculate
the claimed “first offset.” See infra Eq. (3).
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“calculating a first offset as a function of pixel
values for each of the at least two consecutive pixels
from the first block and the at least two consecutive
pixels of the neighboring block”
“comparing the first offset to a first threshold
value”
“modifying the respective pixel values of two
consecutive pixels from the first block and the
respective pixel values of two consecutive pixels
from the second block, by applying filtering on said
pixels, in the event that abs[first offset]=first threshold”
According to Petitioner, “Kim’s DCT coefficient a3,0 and the ’066
Patent’s ‘first offset’ describe a ‘discontinuity’ or ‘difference’ in pixel values
across the block boundary.” Pet. 33. Petitioner asserts that Kim discloses
“calculating the DCT coefficient a3,0 (first offset) as a function of pixel
values v2, v3, v4, and v5 as follows:”
𝑎3,0 = ([𝑐1 − 𝑐2 𝑐2 − 𝑐1] ∗ [𝑣2 𝑣3 𝑣4 𝑣5]
𝑇)/𝑐3 (2)
Id. (citing Ex. 1003, 4:28–32). Petitioner further asserts that Kim’s DCT
coefficient 𝑎3,0 can be rewritten as follows:
𝑎3,0 = (𝑐2 × (𝑣4 − 𝑣3) − 𝑐1 × (𝑣5 − 𝑣2))/𝑐3 (3)
Id. Petitioner asserts that, like the ’066 patent, “Kim explains that c1 and c2
are preferably approximated by integers and c3 is preferably approximated to
a multiple of two.” Id. (citing Ex. 1003, 4:24–27). Petitioner compares the
format of Equation 3 with Equation 1 (supra § II.B) disclosed in the ’066
patent. Id. at 33–34; Ex. 1001, 14:26, 12:21. Petitioner contends that Kim’s
a3,0 is calculated as a function of pixel values, v2 and v3, of two consecutive
pixels, p0 and p1 from the first block, and pixel values, v4 and v5, of two
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consecutive pixels, q0 and q1, of the neighboring block. Pet. 34; see id.
(citing Ex. 1002 ¶¶ 91–98).
According to Petitioner, “Kim discloses modifying pixel values of two
consecutive pixels from the first block (v2 and v3) and pixel values of two
consecutive pixels of the second block (v4 and v5), as follows:”
𝑣3
′ = 𝑣3 − 𝑑[1] (4)
𝑣4
′ = 𝑣4 + 𝑑[1] (5)
𝑣2
′ = 𝑣2 − 𝑑2 (6)
𝑣5
′ = 𝑣5 + 𝑑2 (7)
where d1 and d2 are determined based on Equations 8 and 9, as set forth
below. Pet. 35–36 (citing Ex. 1003, 4:50–59) (emphasis omitted).
Petitioner contends “Kim discloses comparing the DCT coefficient a3,0
(first offset) to a quantization parameter QP (first threshold) using the
following equations:”
𝑑1 = (
3(𝑣3− 𝑣4)
8
) × (𝛿(|𝛼3,0| < 𝑄𝑃)) (8)
𝑑2 = (
3(𝑣3− 𝑣4)
16
) × (𝛿(|𝛼3,0| < 𝑄𝑃)) (9)
Id. at 34 (citing Ex. 1003, 4:60–65). Petitioner asserts that “[t]he function
𝛿(|𝛼3,0| < 𝑄𝑃) compares the absolute value of a3,0 (first offset) to QP, i.e.,
‘the quantization parameter of the macroblock where v4 belongs.’” Id.
(citing Ex. 1003, 4:21–23); compare id., with Ex. 1001, 14:29–35 (“the first
threshold is determined on the basis of quantization parameter values
assigned to the respective block”). Petitioner also contends that, “[w]hen the
absolute value of a3,0 (first offset) is less than QP, then 𝛿(|𝛼3,0| < 𝑄𝑃) =
1,” “[o]therwise, 𝛿(|𝛼3,0| < 𝑄𝑃) = 0.” Pet. 34–35; see id. at 35 (citing Ex.
1002 ¶¶ 99–102).
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Petitioner further contends that
When |𝑎3,0| < 𝑄𝑃 is true, then 𝛿(|𝛼3,0| < 𝑄𝑃) = 1, and
d1 and d2 are nonzero. Consequently, equations (4)-(7) apply
filtering to the pixels v2, v3, v4, and v5 such that “[t]he blocking
artifact…is reduced.” Id., 4:66-67. That is, the values of the
pixels of the first block are modified by an amount -d1 or -d2 (e.g.,
the pixel values are decreased if d1/d2 are positive) and the values
of the pixels of the neighboring block are modified by a
corresponding amount with the opposite sign, +d1 or +d2 (e.g.,
the pixel values are increased if d1/d2 are positive). This reduces
the difference between the pixel values on opposite sides of the
block boundary (i.e., their modified values are closer together
than the unmodified values) and thus filters the blocking artifact.
On the other hand, when |𝑎3,0| ≥ 𝑄𝑃 is true, then
𝛿(|𝑎3,0| < 𝑄𝑃) = 0, and d1 and d2 are zero. Equations (4)–(7)
result into v2'=v2, v3'=v3, v4'=v4, and v5'=v5 . . . . Consequently,
equations (4)-(7) of Kim, which suggest that no pixel values have
been modified, apply no filtering at all on any of pixels v2, v3, v4,
and v5 because the pixel values are not changed when |𝑎3,0| ≥
𝑄𝑃.
Pet. 36–37 (citing Ex. 1002 ¶ 69).
Patent Owner’s Contentions
According to Patent Owner, “[n]either Kim nor Petitioner explains
how the δ(|a3,0|=first threshold”
According to Petitioner, “KimIEEE discloses, in Figure 2, that, if |a3,1| <
QP is true (“YES” arrow), pixel value v4 from the first block and pixel value
v5 from the neighboring block are modified as follows:”
𝑣4
′ = 𝑣4 − 𝑑 (12)
𝑣5
′ = 𝑣3 + 𝑑 (13)
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Pet. 60 (emphasis omitted). Petitioner asserts that
[T]he value of pixel v4 of the first block is modified by an amount
-d (e.g., the pixel value is decreased if d is positive) and the value
of pixel v5 of the neighboring block is modified by a
corresponding amount with opposite sign, +d (e.g., the pixel
value is increased if d is positive). This reduces the difference
between the pixel values on opposite sides of the block boundary
(i.e., their modified values are closer together than the
unmodified values) and thus filters the blocking artifact.
Otherwise, if |𝑎3,1| < 𝑄𝑃 is false (“NO” arrow), the pixel
values are not modified (i.e., v'=v).
Id. at 60–61 (citing Ex. 1004, Fig. 2, 158 (“If the magnitude of a3,1 is greater
than a certain value (which is related to the quantization parameter),
however, the filter is not applied to preserve the image details”)) (emphasis
omitted).
Although Petitioner argues that KimIEEE’s default mode “modifies
the pixel value of one pixel from the first block (v4) and the pixel value of
one pixel from the neighboring block (v5) when |𝑎3,1| < 𝑄𝑃 is true,” it
acknowledges that KimIEEE’s default mode does not “modify the pixel
values of two consecutive pixels from the first block and the pixel values of
two consecutive pixels from the neighboring block, as claimed.” Id. at 61
(emphasis omitted). Petitioner contends “a POSA would have been
motivated to modify two or more consecutive pixels on each side of the
block boundary (i.e., ‘a few pixels’) in the ‘default mode’ and would have
had a reasonable expectation of success in doing so.” Id. at 61; see id. at 62
(quoting Ex. 1004, 157 (“smoothing of a few pixels around the block
boundary is enough to achieve a desired deblocking effect”) (emphasis
omitted)).
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Rationale for Modifying KimIEEE
According to Petitioner, “[a] POSA would have understood that, in
this context, a ‘few’ means more than a pair of pixels directly along the
block boundary,” and KimIEEE “by no means restricts filtering to a single
pixel on each side of the block boundary.” Id. at 62 (citing Ex. 1002 ¶ 83;
Ex. 1004, 157 (Figure 2)) (emphasis omitted). Petitioner supports its
modification of KimIEEE by pointing to Kim, which shares co-inventors in
common with the authors of KimIEEE, and which Petitioner argues
discloses “modifying two consecutive pixels on each side of the block
boundary” in “a similar deblocking filtering scheme (notwithstanding the
different equations).” Id. at 62–63. Petitioner further supports its position
by looking to the ’066 patent itself, asserting that “it was known to modify
two consecutive pixels on each side of the block boundary when applying
filtering in contexts similar to KimIEE[E]’s ‘default mode,’” and that
applying two formulas from the ’066 patent “to two consecutive pixels from
each block in KimIEEE’s ‘default mode’ would have yielded expected
results in accordance with the mathematical expressions provided.” Id. at
63–64 (citing Ex. 1001, 3:44–55).
Petitioner still further contends that KimIEEE “discloses formulas for
modifying at least two consecutive pixels on each side of the block boundary
(see EX1004, Figure 2, box labeled ‘smooth region mode’).” Id. at 64.
Petitioner argues that even though “KimIEEE cautions that applying too
strong of a filter can introduce ‘undesired blur,’” it “does not teach away
from modifying more than one pixel on each side of the block boundary in
the ‘default mode’” because “this undesired blur is mitigated by
‘sophisticated smoothing operation’ in the ‘default mode’ and not by
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restricting filtering to only one pixel on each side of the block boundary.”
Id. at 65 (citing Ex. 1004, 156–57); see id. at 63 (citing Ex. 1002 ¶¶ 84, 85).
Petitioner’s Declarant, Dr. Karam, testifies, with respect to the
“sophisticated smoothing operation,” that “KimIEEE teaches that a check is
performed in the ‘smooth region mode’ ‘[t]o prevent real edges in the
filtering region from smoothing,’ thereby mitigating excessive blurring
effects associated with filtering two or more pixels on each side of the block
boundary.” Ex. 1002 ¶ 84 (quoting Ex. 1004, 157) (citing Ex. 1004, 157)
(emphasis added). The cited portion of KimIEEE discloses that, “[t]o
prevent real edges in the filtering region from smoothing, however, filtering
is not performed when the difference between the maximum value and the
minimum value of v is larger than a certain value, 2QP.” Ex. 1004, 157–58.
Patent Owner’s Contentions
Patent Owner argues that the sentence in KimIEEE regarding “a few
pixels” upon which Petitioner relies for its modification was “taken out of
context by Petitioner,” and Patent Owner quotes a passage from KimIEEE
with that sentence underlined, which we reproduce below. PO Resp. 50.
First, the [human visual system] HVS is more sensitive to
blocking artifacts in flat regions than in complex regions.
Therefore, a strong smoothing filter is required on those regions.
In complex regions, however, smoothing of a few pixels around
the block boundary is enough to achieve a desired deblocking
effect. Second, smoothing operations tend to introduce more
undesirable blur in complex regions than in flat regions. Hence,
adaptive smoothing to preserve image details is desirable in
complex regions. Third, because of motion compensation,
blocking artifacts are propagated, and the propagated artifacts are
more visible in flat regions than in complex regions. Therefore,
smoothing in flat regions must cover the inside of a block as
well as block boundaries. From the observations above, it is
found that the use of two separate filters depending on local
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image characteristics is preferable for effective deblocking. The
filter for flat regions should provide a strong smoothing effect
inside a block as well as on block boundaries. . . . On the other
hand, the filter for complex regions is required to work only on
block boundaries.
Id. at 50–51 (quoting Ex. 1004, 157).
Patent Owner further argues that “KimIEEE’s detailed description of
its ‘smooth region mode’ states that ‘[i]n this mode, we apply a nine-tab
smoothing filter (see Fig. 2) inside the block as well as on the block
boundaries,’” whereas “[c]onversely, KimIEEE’s detailed description of its
‘default mode’ states that ‘[i]n this mode, we smooth the two block
boundary pixels v4 and v5 only.’” Id. at 52 (quoting Ex. 1004, 157, 158)
(emphasis omitted) (citing Ex. 2008 ¶ 148). According to Patent Owner,
“KimIEEE emphasizes that its two-mode system preserves ‘edge details’ and
‘removes noticeable blocking artifacts without degrading details,’” and
KimIEEE “explain[s] that these purported improvements in image quality
(i.e., preventing blur) stem from modifying only two pixels at the border
when operating in ‘default mode.’” Id. at 53 (citing Ex. 1004, 157, 159; Ex.
2008 ¶ 149). Patent Owner explains that “KimIEEE warns against over-
smoothing pixel values for complex regions because such smoothing may be
interpreted by the HVS [Human Visual System] as undesirable blur,” and
“[w]hen operating in default mode, KimIEEE clearly and unmistakably
teaches smoothing ‘the two block boundary pixels v4 and v5 only.’” PO
Resp. 54–55 (quoting Ex. 1004, 158 (emphasis added)) (citing Ex. 1004,
157; Ex. 2008 ¶ 152).
According to Patent Owner, “Petitioner’s proposal to modify
KimIEEE’s default mode applicable to complex regions by looking to Kim’s
DC offset mode applicable to smooth regions is nonsensical.” Id. at 55–56.
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Patent Owner argues that, “a POSA considering KimIEEE’s default mode
applicable to complex regions would be repelled from looking to Kim’s DC
offset mode because it applies to smooth regions” and “the entire point of
KimIEEE is to filter complex regions and smooth regions differently.” Id. at
56. Patent Owner asserts that “[e]xtending KimIEEE’s default mode to filter
four pixels across each boundary, rather than two pixels, could result in a
doubling of computational complexity for every filter operation in the
default mode,” which is “contrary to KimIEEE’s stated goal.” PO Resp. 53
(citing Ex. 2008 ¶ 150).
Petitioner responds that “KimIEEE chose to limit filtering to one pixel
in view of these tradeoffs; however, this does not establish that a different
number of pixels would not have been obvious.” Pet. Reply 10 (citing Ex.
1023, 88:23–91; Ex. 1021 ¶ 26; In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994); Dunbar v. Myers, 94 U.S. 187, 195 (1876)). Petitioner further argues
that “[c]ases addressing this classic ‘two vs. one’ distinction have
overwhelmingly found that the mere difference in quantity does not yield a
patentable invention absent a new or unexpected result.” Id. at 11 (citing
Peters v. Hanson, 129 U.S. 541, 550 (1889); Tyco Healthcare Grp. LP v.
Ethicon Endo-Surgery, Inc., 774 F.3d 968, 979 (Fed. Cir. 2014); B/E
Aerospace, Inc. v. C&D Zodiac, Inc, 962 F.3d 1373, 1380 (Fed. Cir. 2020)).
Petitioner goes on to argue that Patent Owner “identifies no such new or
unexpected result” and that the “tradeoffs between filtering one, two, or
more pixels at a block boundary were well-understood.” Id. (citing Ex.
1006, 184; Ex. 1021 ¶ 28). According to Petitioner, “a POSITA would not
conclude that KimIEEE’s deblocking filter could not, or should not, be
modified in response to changes in these parameters.” Id. (citing Ex. 1021
¶ 29) (emphasis added). Petitioner further asserts that a “POSITA would
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extrapolate KimIEEE’s teaching that filtering one pixel on each side of the
block boundary avoided ‘undesirable blur’ in one experimental context to
determine the equivalent number of filtered pixels (which may be more than
one) sufficient to avoid ‘undesirable blur’ in a different video coding
contexts.” Pet. Reply 13 (citing KSR, 550 U.S. at 418; Ex. 1021 ¶ 30).
Discussion
Petitioner’s challenge, and in particular its reasons for modifying
KimIEEE, do not explain why a POSITA would have smoothed four instead
of two block boundary pixels v4 and v5––particularly in light of KimIEEE’s
disclosure that, in the default mode, “the filter for complex regions is
required to work only on block boundaries,” and “smooth the two block
boundary pixels v4 and v5 only” to prevent undesirable blur. Ex. 1004,
157–58 (emphasis added). Petitioner’s argument that adding an extra pixel
is just a “classic ‘two vs. one’ distinction” does not explain what tradeoffs
the POSITA might have considered, and specifically, what benefit would be
obtained in exchange for the undesirable blur that would result from
smoothing more than two block boundary pixels. See Pet. Reply 11.
Petitioner’s argument that Patent Owner “identifies no such new or
unexpected result” is unavailing as Petitioner bears the burden of persuasion.
Dynamic Drinkware, 800 F.3d 1375 at 1378. Merely because courts may
have found that “the mere difference in quantity does not yield a patentable
invention,” (see Pet. Reply 11) does not absolve Petitioner of the burden to
provide an actual reason, supported by sufficient rational underpinning, for
its proposed modification of KimIEEE.
Petitioner’s argument that a “POSITA would extrapolate . . . to
determine the equivalent number of filtered pixels (which may be more than
one) sufficient to avoid ‘undesirable blur’ in a different video coding
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contexts.” Pet. Reply 13 (citing KSR, 550 U.S. at 418; Ex. 1021 ¶ 30). But
Petitioner does not set forth any different video coding contexts which might
prove its contention true. Nor does Petitioner explain what benefit might be
obtained by filtering four pixels instead of two––in light of the increased
complexity (see PO Resp. 53)––for any particular, different video context.
In support of Petitioner’s contentions, Dr. Karam testifies that
[First,] a POSITA would recognize that, whether one chooses to
filter two pixels or four pixels at the block boundary in complex
regions, both choices improve computational efficiency relative
to the nine-tap filter (which modifies eight pixels) used in smooth
regions. This is particularly the case because smooth regions are
much more frequent than complex regions in natural images.
. . .
[Second,] PO acknowledges that KimIEEE not only considered
the possibility of filtering more than one pixel on each side of the
block boundary, but it disclosed the expected results and
tradeoffs of doing so. POR, 51 (citing KimIEEE’s teachings that
filtering more than one pixel on each side of the block boundary
yields a “strong smoothing effect” but may introduce
“undesirable blur”).
. . .
[Third,] . . . the tradeoffs between filtering one, two, or more
pixels at a block boundary were well-understood at the time of
the invention. See, e.g., EX1006, 184 (PO’s expert Dr.
Richardson describing filtering operations that can affect one,
two, or three pixels on either side of the boundary depending on
the desired filter strength).
. . .
[Fourth,] . . . a POSITA would appreciate that the impact of
modifying a given pixel on the human visual system depends on
the specific video coding context. For example, in video coding
systems with larger block sizes or higher display resolutions,
more pixels must be modified to achieve the same visual impact.
Ex. 1021 ¶¶ 24, 26, 28, 30 (citing Ex. 1006, 184).
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First, Dr. Karam’s testimony addresses a difference in computational
efficiency between filtering in smooth regions (i.e., in smooth region mode)
as compared with filtering in complex regions (i.e., in default region mode).
It does not, however, compare the difference in computational efficiency
between filtering two pixels at the block boundary and filtering four pixels at
the block boundary with respect to KimIEEE’s default region mode––
computational complexity is clearly increased by filtering extra pixels. Ex.
1023, 71:14–16 (Dr. Richardson explaining that, with “more taps in a digital
filter . . . computational complexity [] increase[s]”).
Second, as to Dr. Karam’s testimony about the tradeoff between a
“strong smoothing effect” and “undesirable blur,” the record does not
support the finding that a strong smoothing effect, in and of itself, is a
benefit if it produces an undesirable blur. Stated differently, if the strong
smoothing effect results in undesirable blur, then smoothing extra pixels to
increase the filter strength is not a benefit that is shown to outweigh its
computational complexity.
Third, the cited portion of Dr. Richardson’s textbook does not address
what benefits there are in light of the tradeoffs of undesirable blur and
increased computational complexity of filtering extra pixels. See Ex. 1006,
184–85 (“The ‘strength’ of the filter (the amount of filtering) depends on the
current quantiser, the coding modes of neighbouring blocks and the gradient
of image samples across the boundary.”).
Fourth, Dr. Karam’s testimony as to the “impact of modifying a given
pixel on the human visual system” being dependent “on the specific video
coding context” is not sufficiently supported by evidence. See Ex. 1021
¶ 30. Nor is Dr. Karam’s testimony that “in video coding systems with
larger block sizes or higher display resolutions, more pixels must be
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modified to achieve the same visual impact.” Id. Furthermore, these two
points presented by Dr. Karam’s Reply Declaration do not fall under the
umbrella of Petitioner’s initial position as set forth in the Petition.
Petitioner’s challenge does not address why the proposed modification
would be made in KimIEEE’s default mode, which is specifically designed
for complex boundary regions instead of the smooth region mode, in which
KimIEEE discloses smoothing multiple pixels on each side of the block
boundary, particularly in light of KimIEEE’s disclosure that the “strong
smoothing effect” is applied to flat, not complex, regions. See Ex. 1004,
157.
Having considered the complete record developed at trial, Petitioner
fails to persuade us that the ordinarily skilled artisan would have modified
KimIEEE’s default mode to filter more than two consecutive pixels as
required in claim 1.
3. Dependent Claims 2, 5, and 11
As claims 2, 5, and 11 depend from independent claim 1, we conclude
Petitioner does not establish, by a preponderance of the evidence, that these
claims are unpatentable as obvious, over KimIEEE for the reasons discussed
above in Section III.E.2.
F. Obviousness over AAPA and KimIEEE
Petitioner contends that claims 1, 2, 5, and 11 are unpatentable as
obvious over AAPA and KimIEEE under 35 U.S.C. § 103. Pet. 69–78.
Petitioner contends that claims 1, 2, 5, and 11 are unpatentable as obvious
over KimIEEE under 35 U.S.C. § 103. Pet. 45–68. For the reasons that
follow, we are not persuaded that the evidence supports Petitioner’s
arguments. Thus, Petitioner does not establish by a preponderance of the
evidence unpatentability of claims 1, 2, 5, and 11 as obvious over KimIEEE.
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1. Analysis of Independent Claim 1
Petitioner relies on AAPA to teach the preamble, “selecting,” and
“calculating” limitations, as well as part of the “modifying” limitation.
Petitioner relies on KimIEEE to teach the “comparing” limitation and part of
the “modifying” limitation. With respect to the modifying limitation,
Petitioner contends KimIEEE teaches making the determination as to
whether to “apply[] filtering on said pixels, in the event that abs[first
offset]=first threshold.”
“A method of reducing blocking artifacts
associated with consecutive pixels of a block
boundary of a digital image, the method
comprising:”
Petitioner contends AAPA discloses “filtering the border between two
blocks with a vertical block boundary” as depicted in Petitioner’s annotated
version of a block boundary and consecutive pixels, reproduced below. Pet.
70.

Petitioner’s annotated version of a diagram showing
pixels spanning a block boundary from the ’066 patent.
Id. (citing Ex. 1001, 3:10–12).
Petitioner contends “[t]he consecutive pixel values correspond to
consecutive pixels around the vertical boundary.” Id. at 71 (quoting Ex.
1001, 3:9–16).
“selecting at least two consecutive pixels from a
first block and at least two consecutive pixels from
a neighboring block, the blocks being located on
opposite sides of a block boundary and next to the
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block boundary, and the pixels forming a line of
pixels that is perpendicular to the block boundary”
Petitioner contends that “AAPA discloses performing either a weak
filtering or a strong filtering during which at least pixel values p1i, p0i, q0i,
and q1i are filtered.” Id. at 72 (citing Ex. 1001, 3:43–4:1). According to
Petitioner, “[p]ixel values p1i and p0i correspond to two consecutive pixels
from a first block, and pixel values q0i, and q1i correspond to two
consecutive pixels from a neighboring block,” and “[t]he four pixels form a
line that is perpendicular to the vertical block boundary.” Id.
“calculating a first offset as a function of pixel
values for each of the at least two consecutive pixels
from the first block and the at least two consecutive
pixels of the neighboring block”
Petitioner contends that “AAPA discloses that the weak filtering
computes an offset as follows:”
𝑜𝑓𝑓𝑠𝑒𝑡 = 𝐶𝑙𝑖𝑝(−𝑡𝑐 , 𝑡𝑐 , (13 × (𝑞0𝑖 − 𝑝0𝑖) + 4 × (𝑞1𝑖 − 𝑝1𝑖) − 5 ×
(𝑞2𝑖 − 𝑝2𝑖) + 16) ≫ 5) (14)
Id.
“comparing the first offset to a first threshold value”
Petitioner acknowledges that AAPA does not teach this limitation, but
relies on KimIEEE for this teaching. Id. at 73. Specifically, Petitioner relies
on its showing for the challenge applying KimIEEE alone to teach the
“comparing” limitation.
Petitioner contends that “KimIEEE’s quantization parameter QP
corresponds to the ’066 Patent’s first threshold” and that KimIEEE
“discloses comparing the DCT coefficient a3,1 (first offset) to a quantization
parameter QP (first threshold).” Id. at 59 (citing Ex. 1004, Fig. 2; Ex. 1002
¶¶ 116–118). Petitioner quotes a portion of KimIEEE that discloses “[i]f the
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magnitude of a3,1 is greater than a certain value (which is related to the
quantization parameter), however, the filter is not applied to preserve the
image details.” Id. (quoting Ex. 1004, 158); compare id., with Ex. 1001,
14:29–35 (“the first threshold is determined on the basis of quantization
parameter values assigned to the respective block”).
According to Petitioner, AAPA and KimIEEE concern the same field
of endeavor as the claims of the ’066 patent because “both are directed to
filtering blocking artifacts.” Pet. 73. Petitioner also contends that the
ordinarily skilled artisan “could have” combined AAPA and KimIEEE
“using known and routine software programming and editing to adjust
AAPA’s deblocking filter,” and that the combination would have been
“readily predictable” because it constitutes a “simple substitution of one
known element (not comparing the offset to a threshold in AAPA) for
another (comparing the offset to a threshold as taught by KimIEEE) to obtain
predictable results (preservation of image details).” Id. at 74–75. Petitioner
contends, in particular, that “a POSA would have been motivated to modify
AAPA to incorporate KimIEEE’s comparison of the offset to a threshold to
preserve image details” and “avoid filtering natural features of the image.”
Id. at 73–75 (citing Ex. 1002 ¶¶ 87, 88). Dr. Karam’s testimony
substantially mirrors the arguments in the Petition.
“modifying the respective pixel values of two
consecutive pixels from the first block and the
respective pixel values of two consecutive pixels
from the second block, by applying filtering on said
pixels, in the event that abs[first offset ]=first threshold”
According to Petitioner, “AAPA discloses modifying the two pixels
closest to and on each side of a block boundary as follows:”
𝑝0𝑖 = 𝐶𝑙𝑖𝑝0−255(𝑝0𝑖 + 𝑜𝑓𝑓𝑠𝑒𝑡) (15)
𝑞0𝑖 = 𝐶𝑙𝑖𝑝0−255(𝑞0𝑖 − 𝑜𝑓𝑓𝑠𝑒𝑡) (16)
𝑝1𝑖 = 𝐶𝑙𝑖𝑝0−255(𝑝1𝑖 + 𝑜𝑓𝑓𝑠𝑒𝑡/2) (17)
𝑞1𝑖 = 𝐶𝑙𝑖𝑝0−255(𝑞1𝑖 − 𝑜𝑓𝑓𝑠𝑒𝑡/2) (18)
Pet. 75–76 (citing Ex. 1001, 3:44–55, 3:59).
Having considered the complete record developed at trial, and for the
same reasons discussed above in Section III.E.2, Petitioner fails to persuade
us that the ordinarily skilled artisan would have modified KimIEEE’s default
mode to filter more than two consecutive pixels as required in claim 1.
More particularly, and as explained in our Institution Decision, we are not
persuaded that “the benefit of preserving image detail, as taught by
KimIEEE, would be obtained if multiple pixels were smoothed in a complex
region, in contravention of the teachings of KimIEEE.” Inst. Dec. 38.
2. Analysis of Dependent Claims 2, 5, and 11
As claims 2, 5, and 11 depend from independent claim 1, we conclude
Petitioner does not establish that these claims are unpatentable as obvious,
by a preponderance of the evidence, over AAPA and KimIEEE for the
reasons discussed above in Section III.F.1.
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G. Motion For Protective Order And Motion To Seal
On September 8, 2020, Petitioner filed a Motion for Protective Order,
requesting entry of the Board’s default Protective Order2 (Ex. 1019). Paper
13. Petitioner asserts that Patent Owner and Petitioner “have agreed that the
default Protective Order will govern the agreed-to voluntary discovery that
Petitioner will produce.” Id. at 1. Petitioner requests entry of the default
Protective Order to seek protection for any material disclosed in connection
with this proceeding that may reveal Petitioner’s confidential financial and
business information. See id. at 2. After consideration of the Motion for
Protective Order, we grant Petitioner’s request.
On January 11, 2021, Petitioner filed a Motion to Seal, seeking to seal
the Patent Owner Response (Paper 15), the Petitioner Reply (Paper 20), and
Exhibits 2152, 2158, 2102, 2103, 2109, 2111, 2113, 2114, 2122, 2127, 2132,
2167–2173, 2151, 2163, 2164, 2161, and 2138. Paper 23 (“Mot. Seal”).
Along with its motion, Petitioner filed redacted versions of the Patent Owner
Response (Ex. 1036, “Redacted Response”), the Petitioner Reply (Ex. 1037,
“Redacted Reply”), and redacted versions of the exhibits identified above, as
summarized in the table below. Petitioner indicates that Patent Owner does
not oppose. Mot. Seal 6.

Paper or Exhibits to be Sealed Corresponding
Redacted Exhibits
Membership Agreement and Subscription Form
Exhibit 2152: Member Agreement and
Subscription Form
None

2 Patent Trial and Appeal Board Consolidated Trial Practice Guide 117-22
(App. B) (Nov. 2019), available at https://www.uspto.gov/sites/default/files/
documents/tpgnov.pdf (“CTPG”).
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Paper or Exhibits to be Sealed Corresponding
Redacted Exhibits
Communications
Exhibit 2158: Mass Email Titled “Unified
Files IPR Against US 9,338,449 Owned by
Velos Media LLC”
Ex. 1041
Exhibit 2102: 9/4/17 Email from Kevin Jakel
with Attachments
Ex. 1042
Exhibit 2103: 9/14/17 Email from Shawn
Ambwani with Attachments
Ex. 1043
Exhibit 2109: 11/24/17 Email from Shawn
Ambwani with Attachments
Ex. 1044
Exhibit 2111: 12/3/17 Email from Kevin Jakel
with Attachments
Ex. 1045
Exhibit 2113: 1/18/18 Email from Shawn
Ambwani with Attachments
Ex. 1046
Exhibit 2114: 1/19/18 Email from Shawn
Ambwani with Attachments
Ex. 1047
Exhibit 2122: 2/3/18 Email from Shawn
Ambwani with Attachments
Ex. 1048
Exhibit 2127: 2/9/18 Email from Shawn
Ambwani with Attachments
Ex. 1049
Exhibit 2132: 1/2/18 Email from Shawn
Ambwani with Attachments
Ex. 1050
Exhibits 2167–2173: Membership Reports Exs. 1053–1059
Interrogatory Responses and Testimony of Kevin Jakel
Exhibit 2151: Petitioner’s Supplemental
Second Voluntary Interrogatory Responses
Ex. 1038
Exhibit 2161: Transcript of First Deposition of
Kevin Jakel
Ex. 1039
Exhibit 2138: Transcript of Second Deposition
of Kevin Jakel
Ex. 1040
Exhibit 2163: Petitioner’s Updated Voluntary
Interrogatory Responses
Ex. 1051
Exhibit 2164: 9/15/20 Email from Brian
Lambson to Chris Granaghan
Ex. 1052
Patent Owner Response and Petitioner Reply
Paper 15: Patent Owner Response Ex. 1036
Paper 20: Petitioner Reply Ex. 1037
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1. Principles Of Law
A motion to seal may only be granted on a showing of good cause.
37 C.F.R. § 42.54(a). In general, the Board’s “rules aim to strike a balance
between the public’s interest in maintaining a complete and understandable
file history and the parties’ interest in protecting truly sensitive information.”
CTPG at 19. The rules identify confidential information as “trade secret or
other confidential research, development, or commercial information.” Id.
(citing 37 C.F.R. § 42.54). Applying the rules, the Board has required that
a movant to seal must demonstrate adequately that (1) the
information sought to be sealed is truly confidential, (2) a
concrete harm would result upon public disclosure, (3) there
exists a genuine need to rely in the trial on the specific
information sought to be sealed, and (4), on balance, an interest
in maintaining confidentiality outweighs the strong public
interest in having an open record.
Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at
4 (PTAB Jan. 19, 2018) (informative); see also Corning Optical Commc’ns
RF, LLC, v. PPC Broadband, Inc., IPR2014-00440, Paper 46 at 2 (PTAB
April 6, 2015) (“Material is not confidential business information simply
because it relates to an activity of a business.”).
2. Petitioner’s Arguments
Petitioner argues that the exhibits set forth above were “produced
subject to the agreed-to Protective Order.” Mot. Seal 2. According to
Petitioner, each exhibit “include[s] statements that contain confidential,
sensitive commercial information, including closely held information related
to Unified’s core business.” Id. Petitioner notes that the “Patent Owner
Response (Paper 15) and the Petitioner Reply (Paper 20) each reference and
cite to confidential information included in the [exhibits] listed above.” Id.
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at 2–3. Aside from the Membership Agreement and Subscription Form (Ex.
2152) that Petitioner seeks to seal in its entirety, Petitioner provides redacted
versions for each exhibit sought to be sealed. Id. at 4, ii–iii. Petitioner
contends that “the balance overwhelmingly favors protecting Unified’s
highly confidential information,” because “[t]he information Unified seeks
to protect has nothing to do with patentability, but rather involves Unified’s
status as the real party in interest.” Mot. Seal 6. Petitioner argues that,
accordingly, the public interest in having access to the exhibits is minimal,
“while the public interest is well-served in keeping such business
information readily available and exchangeable between parties based on
voluntary discovery, without the fear of incidental public exposure of
confidential business information.” Id. at 7. Petitioner further argues that
“[i]dentical or similar confidential information held by Unified has been
sealed by the Board in prior cases.” Id. (citing Unified Patents, Inc. v.
Uniloc 2017 LLC, IPR2017-02148, Papers 84, 90 (PTAB May 23, 2019 &
June 5, 2019) (granting Unified’s Motions to Seal)). Petitioner also seeks to
seal the Patent Owner Response and Petitioner Reply because portions
therein reference confidential information.
3. Analysis
For the reasons that follow, we grant Petitioner’s requests.
Membership Agreement and Subscription Form (Ex. 2152)
Exhibit 2152 is an executed, contractual agreement between two
parties outlining the terms of service and fees.
Email Communications (Exs. 2158, 2102, 2103, 2109, 2111,
2113, 2114, 2127, 2132, 2167–2173)
Exhibit 2158 is a mass email regarding Unified’s filing of an inter
partes review (IPR) with respect to U.S. 9,338,449 assigned to Patent
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Owner. Exhibit 1041 is a redacted version of the mass email which redacts
the email addresses of the parties to which it was sent.
Exhibits 2102, 2103, 2109, 2111, 2113, 2114, 2127, and 2132 are
emails from Unified leadership attaching slide decks concerning Unified’s
Patent Pool Validation Program. Redacted versions are presented in
Exhibits 1042 through 1050 in which the email recipient’s information is
redacted. Other redactions generally relate to the specifics of Unified’s
patent strategy with respect to particular “zones” and pools, as well as patent
analytics.
Exhibits 1067 through 1073 are membership reports presented to
members of a particular zone specifying zone activities, patent analytics,
post-grant challenge analytics, and spending estimates. Exhibits 1053
through 1059 generally redact member names, timelines, spending estimates,
settlement information, and other particulars of zone activity.
Interrogatory Responses (Exs. 2151, 2163), Testimony Of Kevin Jakel
(Exs. 2138, 2161), And Email Between Counsel (Ex. 2164)
Ex. 1038 redacts, in general, the members of a particular zone, as set
forth in the voluntary interrogatory responses of Ex. 2151. Ex. 1039 redacts
information generally related to operating details, operating expenses,
ownership, payments, memberships, etc. from Mr. Jakel’s testimony in
Exhibit 2161. Ex. 1040 redacts information generally related to
membership, information generally related to procedure for creating slide
decks on patent pools, and the substance of the slide decks from Mr. Jakel’s
testimony in Ex. 2138.
Exhibit 1051 redacts zone membership from the voluntary
interrogatory responses in Ex. 2163. And Exhibit 1052 redacts membership
information from an email between counsels for the parties in Ex. 2164.
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Patent Owner’s Response (Paper 15) and Petitioner’s Reply (Paper 20)
The Redacted PO Response (Ex. 1036) redacts portions of the Patent
Owner Response relating to a real party in interest issue. The Redacted
Petitioner Reply (Ex. 1037) redacts portions of the Petitioner Reply
responding to Patent Owner’s arguments about a real party in interest issue.
Discussion
Upon review of the papers and exhibits sought to be sealed and the
corresponding redacted exhibits, we are persuaded, by Petitioner, that each
exhibit “include[s] statements that contain confidential, sensitive
commercial information, including closely held information related to
Unified’s core business.” Mot. Seal 2. We are further persuaded that “[t]he
information Unified seeks to protect has nothing to do with patentability, but
rather involves Unified’s status as the real party in interest” based on our
review of the corresponding redacted exhibits. Id. at 6.
We find persuasive Petitioner’s concerns that disclosing the redacted
information could harm Petitioner by enabling others to replicate its
business, and that unsealing such information would have an adverse effect
on future voluntary discovery. We are persuaded that Petitioner has shown
good cause for maintaining this information under seal. Consequently, we
grant Petitioner’s motion to seal this information.
H. Constitutionality Arguments
Patent Owner argues that the “Board lacks the authority to issue a
Final Written Decision because the Administrative Patent Judges (‘APJs’)
have not been constitutionally appointed.” PO Resp. 65 (citing Arthrex, Inc.
v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert. granted sub
nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13, 2020)); see
also id. at n.4 (acknowledging that “the Board does not have the power to
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decide this issue,” but “mak[ing] the argument here to preserve the issue for
the Federal Circuit”). According to Patent Owner, in Arthrex, “the Federal
Circuit held that APJs are principal officers of the United States,” and that
“[b]ecause APJs are not appointed by the President and confirmed by the
Senate, the Federal Circuit held that ‘Title 5’s removal protections cannot be
constitutionally applied to APJs,’ and therefore severed those restrictions
from the statute.” Id. at 65 (citing Arthrex, 941 F.3d at 1337).
We decline to address Patent Owner’s arguments because the Federal
Circuit has already addressed this issue in Arthrex. See Arthrex, 941 F.3d at
1337.
I. Real Party In Interest
Patent Owner contends that the Petition fails to name all real parties in
interest (“RPIs”) as required by 35 U.S.C. § 312(a)(2). PO Resp. 66–70.
Section 312(a)(2) requires that the “petition identif[y] all real parties in
interest.” This provision serves important notice functions to patent owners,
to identify whether the petitioner is barred from bringing an IPR due to an
RPI that is time-barred or otherwise estopped, and to the Board, to identify
conflicts of interests that are not readily apparent from the identity of the
petitioner. See NOF Corp. v. Nektar Therapeutics, IPR2019-01397, Paper
24 at 6 (PTAB Feb. 10, 2020) (citing Office Patent Trial Practice Guide, 77
Fed. Reg. 48,756, 48,759 (Aug. 14, 2012); CTPG 12 (Nov. 2019).
Accordingly, petitioners must comply with these requirements in good faith.
See 37 C.F.R. §42.11(a) (duty of good faith and candor in proceedings).
Whether a non-party is a RPI is a “highly fact-dependent question” and must
be considered on a case-by-case basis. Ventex Co. v. Columbia Sportswear
N. Am., Inc., IPR2017-00651, Paper 148 at 6 (PTAB Jan. 24, 2019) (Paper
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148) (precedential) (citing Office Trial Practice Guide, 77 Fed. Reg. 48,756,
48,759 (Aug. 14, 2012)).
Petitioner identifies Unified Patents, Inc. (“Unified”) as the sole RPI
in this proceeding. Pet. 1. Patent Owner, relying primarily on the Federal
Circuit’s decision in Applications in Internet Time, LLC v. RPX Corp., 897
F.3d 1336, 1351 (Fed. Cir. 2018), contends that Petitioner also should have
also named eleven other companies (“Unnamed RPIs”) as RPIs. PO Resp.
66–67. Patent Owner contends that because the Unnamed RPIs were paying
members of Unified during the present proceeding, and remain members, the
Unnamed RPIs have a preexisting, established relationship with Unified. Id.
at 67–68. Patent Owner acknowledges, however, that “[i]t is unclear when
[one of the Unnamed RPIs] joined Unified’s Video Codec Zone.” Id. at 67
n.5. Patent Owner more particularly contends that “[t]he Unnamed RPIs are
also clear beneficiaries of this IPR because they paid Unified to file this
IPR.” Id. at 68.
On this record, we determine that we need not address whether the
Unnamed RPIs were improperly excluded because, “even if [they] were, it
would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja
Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 32 (Oct. 6,
2020) (precedential) (“SharkNinja”). Like in SharkNinja, the Unnamed
RPIs here are currently members of Unified. Unlike in SharkNinja,
however, neither Petitioner nor any of the Unnamed RPIs were sued. Pet.
Reply 16 (asserting that “[n]o Unified member is an RPI, especially
because . . . to the best of Unified’s knowledge, none has been sued or
threatened with suit by Velos,” and that thus, “there are no . . . time-bar
issues”). Petitioner also asserts that none of the Unnamed RPIs have
challenged the ’066 patent. Id. (asserting that “[n]o Unified member is an
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RPI, especially because . . . no Unified member has filed its own patent
challenge to the ’066 patent” and that thus, “there are no estoppel . . .
issues”). Accordingly, we determine that neither issues of time bar nor
issues of estoppel are implicated.
Under the Board’s precedential decision in Lumentum Holdings, Inc.
v. Capella Photonics, Inc., the Board’s jurisdiction to consider a petition
does not require a “correct” identification of all RPIs in a petition. IPR2015-
00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential); see also Blue
Coat Sys., Inc. v. Finjan, Inc., IPR2016- 01444, Paper 11 at 10 (PTAB July
18, 2017) (“Evidence [of failure to identify all RPIs] is, at best, suggestive of
an issue that is not jurisdictional.”). The Federal Circuit has held that
§ 312(a)(2) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck
Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a
petition fails to identify all real parties in interest under § 312(a)(2), the
Director can, and does, allow the petitioner to add a real party in interest.”)
(quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed.
Cir. 2018) (en banc)).
In the present proceeding, there is no allegation that Petitioner’s
exclusion of the Unnamed RPIs should result in termination of the
proceeding or denial of institution of review for any reason other than for the
alleged failure of a procedural requirement that can be corrected pursuant to
Board precedent. Additionally, there is no allegation or evidence that any of
the Unnamed RPIs is barred or estopped from this proceeding, or that
Petitioner purposefully omitted any of the Unnamed RPIs to gain some
advantage.
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IV. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has not
established by a preponderance of the evidence that claims 1, 2, 5, 11, and
20 of the ’066 patent are unpatentable.
In summary:
Claim(s)
35
U.S.C. §
References/Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 11
102(b),
(e)
Kim 1, 11
1, 11 103(a) Kim 1, 11
20 103(a) Kim, Song 20
1, 2, 5, 11 103(a) KimIEEE 1, 2, 5, 11
1, 2, 5, 11 103(a) AAPA, KimIEEE 1, 2, 5, 11
Overall
Outcome
1, 2, 5, 11, 20

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 5, 11, and 20 of the ’066 patent have not
been shown to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion for Protective Order
(Paper 13) is granted, and that the default Protective Order (Ex. 1019; CTPG
App. B) is placed into effect;
FURTHER ORDERED that Petitioner’s Motion to Seal the Patent
Owner Response (Paper 15), the Petitioner Reply (Paper 20), and Exhibits
2102, 2103, 2109, 2111, 2113, 2114, 2122, 2127, 2132, 2138, 2151, 2152,
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2158, 2161, 2163, 2164, 2167, 2168, 2169, 2170, 2171, 2172, and 2173 is
granted;
FURTHER ORDERED that this matter shall be governed by the
default Protective Order set forth in Appendix B of the CTPG, and
Petitioner’s confidential information shall be considered designated
“PROTECTIVE ORDER MATERIAL” under that Order;
FURTHER ORDERED that Exhibits 2102, 2103, 2109, 2111, 2113,
2114, 2122, 2127, 2132, 2138, 2151, 2152, 2158, 2161, 2163, 2164, 2167,
2168, 2169, 2170, 2171, 2172, and 2173, as well as Papers 15 and 20, are to
be kept under seal; 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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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS LLC,
Petitioner,

v.

VELOS MEDIA, LLC,
Patent Owner.

IPR2020-00352
Patent 9,414,066 B2

Before CHARLES J. BOUDREAU, MONICA S. ULLAGADDI, and
AARON W. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge, concurring.

I concur in the determination that Petitioner has not shown claims 1,
2, 5, 11, and 20 of the ’066 patent unpatentable. I write separately to express
a difference in opinion regarding some of the technical analysis.
In Section III.D.2, describing the analysis of Kim alone, the panel
decision disagrees that the “ordinarily skilled artisan would have considered
a likely image feature to be a blocking artifact at all.” I don’t believe that
responds to the point Petitioner is trying to make. Instead, I understand
Petitioner’s argument to be that, because a small discontinuity reflects an
artifact and a large discontinuity reflects a feature, Kim’s δ(x) would operate
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51
to turn the filtering off for a large discontinuity and on for a small
discontinuity. See Pet. Reply 7. I find this argument unpersuasive because,
even if it is true that a small discontinuity reflects an artifact and a large one
a feature, I find that insufficient to show that Kim necessarily works as
Petitioner argues, particularly in light of the other evidence of how δ(x)
operates.
In Section II.E.2, describing the analysis of KimIEEE alone, the panel
decision faults Petitioner for not “explain[ing] what benefit might be
obtained by filtering four pixels instead of two––in light of the increased
complexity (see PO Resp. 53)––for any particular, different video context.”
In my view, it is not a matter of explaining the benefit of using four pixels
instead of two, because this is simply a matter of balancing smoothness
against loss of detail. Nor do I agree that “complexity” is a problem, given
that four pixels are used in the smooth mode. Instead, I would find
insufficient support for the modification because Petitioner does not
adequately explain why one would use four pixels in a mode that uses two
pixels for the specific purpose of retaining detail in complex regions.
KimIEEE explains that the four pixel “strong smoothing effect” is applied to
flat, not complex, regions. See Ex. 1004, 157. For similar reasons, I would
find the cited portion of Dr. Richardson’s textbook regarding different filter
strengths insufficient to explain why one would modify a filter, like
KimIEEE’s default mode, that is specifically designed to use just two pixels
to best deal with complex regions.

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FOR PETITIONER:
David Cavanaugh
Brian J. Lambson
Jonathan P. Knight
WILMER CUTLER PICKERING HALE AND DORR LLP
david.cavanaugh@wilmerhale.com
brian.lambson@wilmerhale.com
jonathan.knight@wilmerhale.com

Ashraf Fawzy
Roshan Mansinghani
UNIFIED PATENTS, LLC
afawzy@unifiedpatents.com
roshan@unifiedpatents.com

FOR PATENT OWNER:

Brent Bumgardner
Barry Bumgardner
Brian Herrmann
Christopher G. Granaghan
NELSON BUMGARDNER ALBRITTON P.C.
brent@nbafirm.com
barry@nbafirm.com
brian@nbafirm.com
chris@nbafirm.com