Unified Patents, LLC v. Ideahub Inc.

UNIFIED PATENTS, LLC, Petitioner, v. IDEAHUB INC., Patent Owner.

IPR2020-00702

Patent 9, 641, 849 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

September 15, 2021

Before BRYAN F. MOORE, KEVIN W. CHERRY, and MONICA S. ULLAGADDI Administrative Patent Judges.

JUDGMENT

CHERRY, ADMINISTRATIVE PATENT JUDGE.

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

I. INTRODUCTION

A. Background

Unified Patents, LLC ("Petitioner") filed a petition (Paper 2, "Pet.") to institute an inter partes review of claims 1 and 4 of U.S. Patent No. 9, 641, 849 B2 (Ex. 1001, "the '849 patent"). See 35 U.S.C. § 311. Ideahub Inc. ("Patent Owner") timely filed a Preliminary Response. Paper 6 ("Prelim. Resp."). Pursuant to our authorization, Petitioner filed a Preliminary Reply ("Prelim. Reply," Paper 7), and Patent Owner filed a Preliminary Sur-Reply ("Prelim. Sur-Reply," Paper 8).

On September 17, 2020, based on the record before us at the time, we instituted an inter partes review of all challenged claims on the sole ground alleged. Paper 9 ("Institution Decision" or "Dec."). The sole ground we instituted trial on is reproduced below:

Claim(s) challenged

35U.S.C. §

Reference(s)

1, 4

103(a)^[1]

Kalevo^[2] and Song^[3]

Petitioner supports its Petition with a Declaration by Dr. Immanuel Freedman, dated March 12, 2020. Ex. 1003.

Patent Owner filed a Response in opposition to the Petition (Paper 17, "PO Resp."). Patent Owner supported its Patent Owner Response with the Declaration of Cliff Reader, Ph.D. (Ex. 2001). Patent Owner also filed a contingent Motion to Amend. Paper 18. Petitioner filed a Reply in support of the Petition (Paper 25, "Pet. Reply"). Petitioner supports the Reply with the Second Declaration of Dr. Immanuel Freedman (Ex. 1021). Petitioner filed an Opposition to the Motion to Amend. Paper 24. Patent Owner filed a Sur-reply responding to the Reply (Paper 30, "PO Sur-Reply").

On April 8, 2021, we filed Preliminary Guidance on Patent Owner's Motion to Amend. Paper 29 ("Preliminary Guidance" or "Prelim. Guide."). Patent Owner then filed a Revised Contingent Motion to Amend (Paper 31, "Rev. Mot. Amend") proposing to substitute claim 19 ("proposed substitute claim") for claim 1. Patent Owner supports its Revised Contingent Motion to Amend with a Second Declaration of Dr. Clifford Reader (Ex. 2017). Petitioner filed an Opposition to Patent Owner's Revised Contingent Motion to Amend (Paper 37, "Opp."). Petitioner supports its Opposition with the Third Declaration of Dr. Immanuel Freedman in Support of Petitioner's Opposition, dated June 3, 2021 (Ex. 1035). Patent Owner filed a Reply in Support of its Contingent Motion to Amend (Paper 39, "PO Reply"). Patent Owner supports its Reply in support of its Revised Contingent Motion to Amend with a Third Declaration of Dr. Clifford Reader (Ex. 2021). Petitioner also filed a Sur-Reply in Opposition to Patent Owner's Revised Contingent Motion to Amend (Paper 43, "Pet. Sur-Reply").

Both parties requested an oral hearing. See Paper 42. A public and transcript and a confidential transcript of the oral hearing are entered in the record. Paper 50 ("Public Tr."); 51 ("Confidential Tr.").

We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R § 42.1(d) (2019). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.

For the reasons expressed below, we conclude that Petitioner has demonstrated by a preponderance of evidence that claims 1 and 4 are unpatentable. We deny Patent Owner's Revised Motion to Amend.

B. Related Proceedings

The parties do not disclose any related litigation, but assert that the following U.S. patents and pending patent applications claim priority benefit of the '849 patent: U.S. Patent Application 16/407, 086; U.S. Patent Application 16/407, 095; U.S. Patent No. 10, 623, 749; U.S. Patent No. 10, 623, 750; U.S. Patent No. 10, 623, 751. Pet. 1; Paper 4, 1.

C. The'849 Patent

The '849 Patent, entitled "Video Encoding Apparatus, Video Decoding Apparatus, And Video Decoding Method For Performing Intra- Prediction Based On Directionality Of Neighboring Block," relates to "improving compression efficiency in directional intra-prediction." Ex. 1001, [54], [57], 1:23-24. According to the '849 patent:

[a] fundamental principle of compressing data is based on a process of eliminating the redundancy from data. The data can be compressed by eliminating spatial redundancy referring to repetition of the same color or object in an image, temporal redundancy referring to little or nothing of variation between neighboring frames in a moving picture frame or successive repetition of same sound in the audio, or psycho-visual redundancy referring to dullness of human vision and sensation to high frequencies.

Id. at 1:37-45.

The '849 patent explains that "H.264" is a known compression standard that uses "directional intra-prediction" [which the '849 patent shortens simply to "intra-prediction"] to eliminate spatial redundancy within a frame. Ex. 1001, 1:50-53. "[I]ntra-prediction refers to a method of cop[y]ing one sub-block in a designated direction using neighboring pixels in upward and leftward directions, predicting values of current sub-blocks, and encoding only the differences between the copied values and the predicted value of the sub-blocks." Id. at 1:54-58. When compressing video including pixels of a monochromatic sky, for example, the "pixels that are close to one another within a video frame are likely to have similar characteristics," and thus the values of adjacent pixels can be predicted. Pet. 5. Intra-prediction thereby "reduce[s] the amount of data necessary for transmission and reconstruction" of an image. Id. at 5-6.

The '849 patent discloses that in the "intra-prediction technique complying with the existing H.264 standard, a prediction block is generated from a current block on the basis of another block having a previous encoding sequence." Ex. 1001, 1:66-2:3. "Nine prediction modes can be selected for each 4x4 block," namely, "eight modes having directionality" and one "DC mode." Id. at 3:8-10. A "video encoder based on H.264 selects one from among the prediction modes with respect to each block." Id. at 2:7-11.

According to the '849 patent, the intra mode information needed in H.264 standard compression "may act as [] overhead increasing the size of a coded bitstream." Id. at 3:19-27. Accordingly, the '849 patent proposes "a video encoding [and] decoding method and apparatus" in which the "video encoding apparatus . . . does not need to record intra-mode information" and the "video decoding apparatus . . . does not need to receive intra mode information." Id. at 3:35-62. The '849 patent discloses that the embodiments disclosed therein will "enhanc[e] efficiency of intra-prediction in video coding." Id. at 3:25-28. In one embodiment, for example, when a compressed image is decoded, the decoder "reconstruct[s] a residual signal of a current block from an input bitstream; select[s] one from among a plurality of intra modes; and perform[s] an intra-prediction according to a directionality of the selected intra mode to reconstruct the current block." Id. at 3:64-4:1.

Claim 1 is the sole independent claim among the challenged claims. Claim 4 depends from claim 1. Independent claim 1, which is illustrative, recites (with bracketing added): 1. A video decoding method performed by a video decoding apparatus, the method comprising: [1.1] determining an intra mode for a neighboring block of a current block; [1.2] determining an intra mode for the current block based on whether the intra mode for the neighboring block is a directional mode or a non-directional mode;

[1.3] performing intra-prediction according to the intra mode for the current block to generate a prediction block for the current block;

[1.4] obtaining quantization coefficients from an input bitstream;

[1.5] dequantizing the quantization coefficients to generate transform coefficients;

[1.6] transforming the transform coefficients to a residual block for the current block; and [1.7] adding the prediction block and the residual block to reconstruct the current block, [1.8] wherein the intra mode for the current block is determined by using a first set of one or more mathematical expressions, if the intra mode for the neighboring block is the non-directional mode,

[1.9] wherein the intra mode for the current block is determined by using a second set of one or more mathematical expressions, if the intra mode for the neighboring block is the directional mode, and

[1.10] wherein the second set of one or more mathematical expressions is different from the first set of one or more mathematical expressions.

Id at 1141-12:3.

II. ANALYSIS

A. Real Parties 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. 33-52. Section 312(a)(2) requires that the "petition identify] 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...