Ex Parte 6775417 et alDownload PDFPatent Trial and Appeal BoardNov 28, 201495000585 (P.T.A.B. Nov. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/000,585 11/05/2010 6775417 381715US 7356 22850 7590 11/28/2014 OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER TRAN, HENRY N ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/28/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE INC. Requester v. S3 GRAPHICS CO. LTD. Patent Owner and Appellant ____________________ Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 Technology Center 3900 ____________ Before JAMES T. MOORE, BRADLEY W. BAUMEISTER, and ANDREW J.DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge DECISION ON APPEAL Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 2 STATEMENT OF THE CASE This proceeding arose from a request by Apple Inc. for an inter partes reexamination of United States Patent No. 6,775,417 B2, entitled “FIXED- RATE BLOCK-BASED IMAGE COMPRESSION WITH INFERRED PIXEL VALUES” (issued to Zhou Hong et al. on Aug. 10, 2004 from Application 10/052,613, filed Jan. 17, 2002 (“the ’417 Patent”). We have jurisdiction under 35 U.S.C. §§ 134 and 315. The ’417 Patent describes the invention as follows: An image processing system including an image encoder and image decoding system is provided. The image encoder system includes an image decomposer, a block encoder, and an encoded image composer. The image decomposer decomposes the image into blocks. The block encoder which includes a selection module, a codeword generation module and a construction module, processes the blocks. Specifically, the selection module computes a set of parameters from image data values of a set of image elements in the image block. The codeword generation module generates codewords which the construction module uses to derive a set of quantized image data values. The construction module then maps each of the image element's original image data values to an index to one of the derived image data values. The image decoding system reverses this process to reorder decompressed image blocks in an output data file. Abstract. Patent Owner, S3 Graphics Co. Ltd. (“Owner”) appeals under 35 U.S.C. §§ 134(b) and 315(a) from the Examiner’s decision to reject claims 1, 7-8, 12-13, 15, and 23 over the prior art. See PO App. Br. 1 1 Throughout this opinion, we refer to (1) the Request for Inter Partes Reexamination filed November 5, 2010 (“Request”); (2) the Action Closing Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 3 The ’417 Patent was also involved in a litigation before the U.S. International Trade Commission, styled as In the Matter of Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Investigation No. 337-TA-724. The decision by the ALJ in this matter found claims 7, 12, 15, and 23 of the ’417 Patent invalid as obvious under 35 U.S.C. §103 over U.S. Patent No. 5,046,119 to Hoffert, alone and in combination with other prior art. Patent infringement litigation involving Owner, Requester, and the ’417 Patent in the Northern District of California has been closed. PO App. Br. 1. Oral argument was held before a panel of the Board on November 12, 2014. A transcript of the argument (“the ’7751 Tr.”) will be included in the record. We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). We affirm. Prosecution mailed Mar. 14, 2012 (“ACP”); (3) Right of Appeal Notice mailed August 24, 2012 (“RAN”); (4) Patent Owner’s Appeal Brief filed December 6, 2012 (“PO App. Br.”); (5) the Declaration of Dr. Maja E. Bystrom under 37 C.F.R. §1.132 (“the Bystrom Decl.”); and, (6) the Examiner’s Answer mailed April, 11, 2014 (incorporating portions of the RAN by reference) (“RAN”). Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 4 THE INDEPENDENT CLAIMS The four independent claims – claims 1, 8, 15 and 23 – are illustrative of the claimed invention: 1. An image encoder engine for encoding an image, comprising: an image decomposer for decomposing the image into a header and at least one image block, each image block having a set of image elements and each image element having an original image data value; at least one block encoder for receiving each image block and for compressing each image block into an encoded image block by associating each original image data value of the image element with an index to a derived image data value in a set of quantized image date values; and an encoded image composer coupled to the block encoder for ordering the encoded image blocks into a data file. 8. An image decoder engine for decoding an encoded image data file, comprising: an encoded image decomposer for decomposing the encoded image data file into a modified header and at least one compressed image block, each image block having at least one associated codeword and a plurality of image elements associated with an index value; at least one block decoder coupled to the encoded image decomposer for decompressing the at least one compressed image block into at least one decompressed image block by generating a set of quantized image data values and mapping the index value to a quantized image data value from the set of quantized image data values; and an image composer for ordering the at least one decompressed image blocks in an output data file. Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 5 15. A method for fixed-rate block-based image compression of an original image, comprising the steps of: decomposing the original image into a header and a plurality of image blocks each having a set of image elements with an original image data value; computing at least one codeword from the original image data value for the set of image elements; generating a set of quantized image data values including the at least one codeword and at least one image value derived from the at least one codeword; and mapping the original image data value to one of the quantized image data values to produce an index value for each image element. 23. A method for fixed-rate block-based image decompression of an encoded image, comprising the steps of: decomposing the encoded image of into a modified header and a plurality of encoded image blocks having at least one codeword and a plurality of image elements associated with an index value; generating a set of quanitized image data values including the at least one codeword and at least one image value derived from the at least one codeword; and mapping the index value for each image element to one of the quantized image data values. Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 6 STATEMENT OF THE REJECTIONS Claims 1, 7- 8, 12-13, 15, and 23 are subject to reexamination and stand rejected. Req. App. Br. 12. Owner appeals the following Bases of Invalidity (“BI”) of claims 1, 7-8, 12-13, 15, and 23, which the Examiner of the reexamination proceeding (“the Examiner”) adopted (see PO App. Br. 12-48): BI-1. Claims 1, 7-8, 12-13, 15, and 23 are rejected under 35 U.S.C. §103(a) as being unpatentable over Hoffert (U.S. Patent No. 5,046,119; issued Sep. 3, 1991) in view of the Knowledge of One of Ordinary Skill in the Art (“KOOSA”) as evidenced by Graphics Interchange Format, Version 89a (“GIF89a”) and CL550 JPEG Image Compressor Processor, Preliminary Data Book (“JPEG”). BI-2. Claims 1, 7-8, 12-13, 15, and 23 are rejected under 35 U.S.C. §103(a) as being unpatentable over Hoffert in view Normile (U.S. Patent No. 5,822,465; Aug. 13, 1998). CLAIMS 7, 12, AND 13 Owner argues that the Examiner erred in the interpretation of the phrase “block type” in independent claims 7, 12, and 13 within each Basis of Invalidity. Specifically, Owner argues that the broadest reasonable interpretation of “block type” necessarily requires that the block type indicate whether or not the block contains a transparent pixel. PO App. Br. 13. In support of this position Owner argues that “block type” is not a term of art having “an accepted plain and ordinary meaning” urging that a reference Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 7 to different kinds of “blocks” does not mean that those types of blocks can be construed as the claimed “block types.” Id. at 14. Owner points out that the ’417 Patent describes only two kinds of “block types,” a four color block type or a three color plus transparency block type: In select block type 632, the quantizer 402 uses the block type module 406 (FIG. 4) to select a first block type for the image block 320 that is being processed. For example, a selected block type may be a four-color or a three-color plus transparency block type, where the colors within the particular block type have equidistant spacing in a color space. ’417 Patent, Col. 8, ll. 15-21. Owner further asserts that transparency is an important feature of the claimed invention, citing the ’417 Patent at column 11, lines 21-24, which states “the exemplary embodiment beneficially addresses transparency issues by allowing codewords to be used with a transparency identifier.” Id. at 16. Owner’s interpretation of “block type” is supported by the Declaration of Dr. Maja E. Bystrom who declares that “block type” has no plain and ordinary meaning, but may have any number of meanings “depending upon the given application.” Bystrom Decl. ¶17. Dr. Bystrom concludes that the proper meaning of “block type,” as described by the ’417 Patent, is “an indication of whether a block can include a transparent pixel or not.” Id. Dr. Bystrom notes the factual basis for her opinion is that the ’417 Patent explains that a problem with prior art compression is the inability to adequately account for color keying in which certain pixels are transparent. Id. at ¶21. The Examiner first finds that Owner’s assertion that “block type” requires an indication of whether or not the block contains a transparent pixel is Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 8 not expressly recited within claims 7, 12, or 13, noting that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims, citing In re Van Geuns, 988 F.2d 1181 (Fed Cir. 1993). Ans. 11-12. Secondly, the Examiner notes that the specification of the ’417 Patent describes different embodiments that each utilize different block types. The Examiner cites the ’417 Patent, at column 8, lines 18-27, which indicates the use of two image block types, a single block type, or any other block type (i.e. “. . . selecting a block type for each image is not intended to be limited in any way.”). Id. In light of the foregoing, the Examiner concludes that it would be improper to limit the term “block type” to the narrow definition proposed by Owner and finds that the broadest reasonable interpretation of that term is not limited to providing an indication of whether or not the block contains a transparent pixel. Although an inventor is free to define the specific terms used to describe the invention, “this must be done with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citations omitted). Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 9 Absent a clear definition in the disclosure that the claimed “block type” requires a distinction between blocks that include a transparent pixel and those that do not, and absent reference to or provision of sufficient evidence that indicates that one of ordinary skill in the art would have understood the term to inherently require such a distinction, we are not persuaded that the broadest reasonable interpretation of the term requires a distinction between blocks that include a transparent pixel and those that do not. We therefore agree with the Examiner that the presumption that the term “block type” is to be interpreted in accordance with its plain meaning has not been overcome in this case. Further, we note that the description of the embodiment within the specification of the ’417 Patent, which is relied upon by Owner, employs terminology that conversely indicates the meaning of “block type” should not be interpreted as narrownly as urged by Owner, i.e. “may be a four color,” “is not intended to be limited.” Consequently, we find the Examiner did not err in either basis of unpatentability by opting to interpret “block type” as broader than only meaning providing an indication of whether or not the block contains a transparent pixel. CLAIMS 1, 7, 8, 12, 13, 15, AND 23 Owner also asserts that the Examiner erred in the rejection of claims 1, 7, 8, 12, 13, 15, and 23 under 35 U.S.C. §103(a) as being unpatentable over Hoffert (U.S. Patent No. 5,046,119; issued Sep. 3, 1991) in view of the Knowledge of One of Ordinary Skill in the Art (“KOOSA”) as evidenced by Graphics Interchange Format, Version 89a (“GIF89a”) and CL550 JPEG Image Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 10 Compressor Processor, Preliminary Data Book (“JPEG”). Specifically, Owner asserts that Hoffert fails to describe or require “headers” and that the Examiner has failed to provide a rationale to modify Hoffert to add “headers.” PO App. Br. 23. The Examiner finds that the use of “headers,” separating a “header” from and image file, and modifying a “header” when a file is converted from one format to another was well known to those of ordinary skill in the art at the time of Owner’s invention. ACP 7-8, 10-11. Owner argues that the Examiner has engaged in “mere conclusory statements” and failed to provide a rational underpinning to support the legal conclusion of obviousness. Owner also points out that it does not claim to have “invented headers or converting headers when converting between standard file types.” PO App. Br. 34. We find Owner’s positions to be contradictory. On the one hand, Owner acknowledges that the use of headers, or the conversion of headers, when converting between standard file types, was well known at the time of the invention. On the other hand, Owner also urges that it is improper for the Examiner to conclude that the use of headers within Hoffert would have been well-known to those of ordinary skill in the art at the time of the invention. Regardless, we accept Owner’s acknowledgement, and agree with the finding that the use and conversion of headers was well known at the time of the invention. Moreover, Owner’s claims do not recite any particular function or special application for the claimed “header” or “modified header” within the appealed claims, further supporting a that the claimed “header” or “modified header” within the appealed claims was conventional use of a known technology. Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 11 Consequently, we find the Examiner did not err in rejecting claims 1, 7, 8, 12, 13, 15, and 23 under 35 U.S.C. §103(a) as being unpatentable over Hoffert in view of the Knowledge of One of Ordinary Skill in the Art as evidenced by GIF89a and JPEG. Owner urges similar arguments against the Examiner’s rejection of claims 1, 7, 8, 12, 13, 15, and 23 under 35 U.S.C. §103(a) as being unpatentable over Hoffert in view Normile. That is, Owner urges the Examiner failsed to express a proper motivation to combine the teaching of “headers” by Normile with the teachings of Hoffert. PO App. Br. 26-29. The Examiner incorporates within the ACP the reasoning set forth in the Request regarding the combination of Hoffert and Normille. This reasoning includes the finding that Normille teaches a method and apparatus for encoding and decoding compressed image blocks using indices into a table of colors, wherein the method utilizes headers attached to compressed image files. Request 93. As we note above, we are unpersuaded by Owner’s arguments that the Examiner has failed to provide a proper motivation to combine these references. Our conclusion concerning the existence of adequate motivation to combine is reinforced by Owner’s admission that the use of headers, or the conversion of headers, when converting between standard file types, was well known at the time of the invention, as well as the absence of any particular function or special application for the claimed “header” or “modified header” in the appealed claims. We therefore find that the Examiner did not err in failing to provide a proper motivation to combine these references in the rejection of claims 1, 7, 8, Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 12 12, 13, 15, and 23 under 35 U.S.C. §103(a) as being unpatentable over Hoffert in view Normile. SECONDARY CONSIDERATIONS Patent Owner argues that “secondary considerations” of satisfying a long-felt need and subsequent commercial success weigh in favor of nonobviousness. PO App. Br. 29-48. The Examiner disagrees. Answer 21-24. Secondary considerations, including satisfaction of a long-felt need and commercial success can have a significant impact on an obviousness analysis. See, e.g., The Barbed Wire Patent, 143 U.S. 275, 282 (1892); In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, 676 F.3d 1063, 1075-1080 (Fed. Cir. 2012) (long-felt need and commercial success should be considered before ultimate decision made on obviousness); In re Tiffin, 443 F.2d 394 (CCPA 1971), modified on reh’g, 448 F.2d 791 (CCPA 1971); Ex parte Artsana USA, Inc., 2014 WL 4090808 (PTAB Aug. 18, 2014) (finding commercial success to be entitled to considerable weight); Murata Mfg. Co., Ltd. v. Synqor, Inc., 2014 WL 1397381 *11-14 (PTAB Apr. 10, 2014) (same). In the case before us, the Examiner declined to give controlling weight to Owner’s evidence of long-felt want and commercial success. Answer 21-24. The nexus evidence submitted by Owner is based on the Declaration of Mr. Ken Weng (PO App. Br.. Ex. C) in which Mr. Weng describes various publications that review the texture compression scheme employed by Owner’s products. Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 13 One such publication, Texture Compression using Low-Frequency Signal Modulation, Graphics Hardware (2003), describes the S3 compression system: Their system, known in the industry as S3TCTM (or DXTCTM within Microsoft's DirectX 3D interface), also uses 4x4 pixel blocks. As with BTC, each block is completely independent of every other block. Each pixel in the 64-bit block is encoded with two bits which selects one of four colours. Two of these colours are stored in the block as 16-bit RGB values while the remaining pair are derived directly from the stored colours. These additional colours are usually 1:2 and 2:1 linear blends of the main representatives but, in some blocks, one of the indices can be used to indicate a fully transparent, black pixel for so called ‘punch-through’ textures. PO App. Br., Ex. C, ¶ 5. Similarly, White Paper: S3TC Compression Technology (October 25, 1999) explains that [t]he order of the two explicitly encoded colours determines whether the block is completely opaque or whether it has transparent pixels. When the block is determined to be one that has transparent pixels, the fourth bit encoding (11) indicates a transparent pixel, while the other derived value is just the average of the two encoded colour values. Id. The Examiner finds that Mr. Weng’s Declaration fails to provide evidence that directly links the claims of the ’417 Patent to the commercial success. The Examiner finds that the S3 compression technology based on at least two different types of blocks—a four-color block and a three color plus transparency block—is not commensurate with the scope of the rejected claims in view of the broad, but reasonable interpretation of “block type” within Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 14 claims 7, 12, and 13. As described above, the claimed invention also processes image blocks of a single type. Ans. 22-23. As noted by the Examiner, MPEP 716.03(a)(I) requires that [o]bjective evidence of nonobviousness including commercial success must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791, 171 USPQ 294 (CCPA 1971) (evidence showing commercial success of thermoplastic foam “cups” used in vending machines was not commensurate in scope with claims directed to thermoplastic foam “containers” broadly). In order to be commensurate in scope with the claims, the commercial success must be due to claimed features, and not due to unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229, 17 USPQ2d 1257, 1260 (D.D.C. 1990), aff'd, 959 F.2d 226, 228, 22 USPQ2d 1153, 1156 (Fed. Cir. 1992) (Features responsible for commercial success were recited only in allowed dependent claims, and therefore the evidence of commercial success was not commensurate in scope with the broad claims at issue.). An affidavit or declaration attributing commercial success to a product or process “constructed according to the disclosure and claims of [the] patent application” or other equivalent language does not establish a nexus between the claimed invention and the commercial success because there is no evidence that the product or process which has been sold corresponds to the claimed invention, or that whatever commercial success may have occurred is attributable to the product or process defined by the claims. Ex parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. App. & Inter. 1988). Id. Owner also argues industry acceptance, commercial success, long-felt need, initial skepticism in order to demonstrate nonobviousness. However, the Examiner finds the lack of demonstrated nexus discussed above is fatal to such allegations. Id. Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 15 Evidence pertaining to secondary considerations must be taken into account whenever present. However, it does not necessarily control the obviousness conclusion. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“the record establish[ed] such a strong case of obviousness” that allegedly unexpectedly superior results were ultimately insufficient to overcome obviousness conclusion); Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007) (“given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion” of obviousness); and Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757 (Fed. Cir. 1988). We concur with the Examiner. Although there is some evidence of Owner’s commercial products having commercial success, we are unable to link them adequately to the claimed subject matter. In view of the broad, but reasonable interpretation of “block type” discussed above, we agree with the Examiner that Owner has failed to demonstrate the required nexus between the claimed invention and the allegations of commercial success, long-felt need and industry acceptance. DECISION The Examiner’s decision adverse to the patentability of claims 1, 7, 8, 12, 13, 15, and 23 is affirmed. Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§ 1.956 and 41.79(e). Appeal 2014-007751 Reexamination Control 95/000,585 Patent US 6,775,417 B2 16 AFFIRMED ak Patent Owner: Oblon, Spivak, McClelland, Maier & Neustadt, LLP 1940 Duke Street Alexandria, VA 22314 Third Party Requester: Novak Druce & Quigg (NDQ Reexamination Group) 1000 Louisiana Street 53 rd Floor Houston, TX 77002 Copy with citationCopy as parenthetical citation